Ex Parte WREN

Board of Patent Appeals and Interferences

Mar 30, 2009

08650834 (B.P.A.I. Mar. 30, 2009)

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____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEPHEN C. WREN
____________________

Appeal 2008-2765
Application 08/650,834
Technology Center 3600
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Decided: 1March 31, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

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Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 30-36, 38-45, 47-54, 57-64, 67-116, and 121-143. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellant invented a system and means for establishing a
communicating link between remote facilities (Specification 1:12-13).
Independent claim 30 under appeal read as follows:
30. An apparatus to market and/or sell goods
and/or services over an electronic network
comprising:
a first computerized central communications
facility adapted to be linked to a computerized
remote facility and to a plurality of other
computerized central communications facilities,
each of said first or other computerized central
communications facilities having information
relating to goods or services stored in a database,
and each of said first or other computerized central
communications facilities having a processor
programmed to:
receive from a customer located at said
computerized remote facility a request to at least
one of search, browse and access in said database
at said first or other computerized central
communications facility for information of
interest;
enable said customer to at least one of
search, browse and access said database for
information of interest; and
transmit said information of interest from
the database at said computerized central
communications facility to said computerized
remote communications facility;
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wherein at least one of said computerized
central communications facilities is adapted to
provide to said customer at said computerized
remote facility a list of computerized central
communications facilities permitting said customer
to select and contact at least one other
computerized central communications facility to
request additional information relating to said
goods or services.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dworkin US 4,992,940 February 12, 1991
McCalley et al. US 5,191,410 March 2, 1993
Filepp US 5,347,632 September 13, 1994
Lockwood US 5,576,951 November 19, 1996
Gifford US 5,724,424 March 3, 1998
Saigh et al. US 5,734,823 March 31, 1998
Ferguson et al. US 5,819,092 October 6, 1998
Wren US 6,055,514 April 25, 2000

ATT Services: AT&T provides compass, Communications
International, London, July 1993, Vol. 20, Iss. 7, p. 6, 2 pages (hereinafter
“AT&T”).
InTouch Internet Shopping Network (ISN) launches Interactive Home
Music Shopping Service with intouch group, inc. for Internet Users
Worldwide; online service features more than 40,000 music titles in 21
genres. Business Wire, 11 April 1995 (hereinafter “InTouch”).
The Examiner rejected claims 115, 116, 121, 122 and 140-143 under
35 U.S.C. § 102(e) as being anticipated by Saigh; claim 123 under 35 U.S.C.
§ 102(e) as being anticipated by Gifford; claims 30-33, 36, 39-45, 47, 49, 51,
54, 57-64, 67, 79-85, 87-90, 92 and 100 under 35 U.S.C. § 103(a) as being
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unpatentable over AT&T in view of Dworkin; claims 50, 72, 77, 78 and 86
under 35 U.S.C. § 103(a) as being unpatentable over AT&T in view of
Dworkin and McCalley; claims 34, 35, 38, 48, 52, 53, 68, 69, 94, 95, 103
and 107 under 35 U.S.C. § 103(a) as being unpatentable over AT&T in view
of Dworkin and Filepp; claims 70-76 under 35 U.S.C. § 103(a) as being
unpatentable over AT&T in view of Dworkin and McCalley; claims 93, 96-
98, 101 and 104-106 under 35 U.S.C. § 103(a) as being unpatentable over
AT&T in view of Dworkin and Examiner’s Official Notice; claims 108,
110-114 and 139 under 35 U.S.C. § 103(a) as being unpatentable over
Saigh in view of Lockwood; claim 109 under 35 U.S.C. § 103(a) as being
unpatentable over Saigh in view of Lockwood and Ferguson; claim 139
under 35 U.S.C. § 103(a) as being unpatentable over Saigh in view of
Lockwood; claim 124 under 35 U.S.C. § 103(a) as being unpatentable over
Saigh; claim 125 under 35 U.S.C. § 103(a) as being unpatentable over
Gifford in view of Ferguson; claims 126 under 35 U.S.C. § 103(a) as being
unpatentable over Gifford in view of Lockwood; claims 127-129 under
35 U.S.C. § 103(a) as being unpatentable over Gifford in view of Saigh;
claims 130-132 and 135-137 under 35 U.S.C. § 103(a) as being unpatentable
over Saigh in view of Kaplan/InTouch; claim 133 under 35 U.S.C. § 103(a)
as being unpatentable over Saigh in view of InTouch and Ferguson; claim
134 under 35 U.S.C. § 103(a) as being unpatentable over Saigh in view of
Lockwood; claim 138 under 35 U.S.C. § 103(a) as being unpatentable over
Saigh in view of Ferguson; claim 30 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over Wren in
view of AT&T and Dworkin; and claims 108-114 and 130-143 under the
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judicially created doctrine of obviousness-type double patenting as being
unpatentable over Wren in view of Saigh, Ferguson, InTouch, and
Lockwood.

SUMMARY OF THE DECISION
We affirm the rejections of claims 30, 31, 33-36, 38, 40, 42-45, 47-52,
57, 59-68, 70-94, 96-102, 104-107, 123 and 126.
We reverse the rejections of claims 32, 39, 41, 53, 54, 58, 69, 95, 103,
108-116, 121, 122, 124, 125, and 127-143.
We also use our authority under 37 C.F.R. § 41.50(b) to enter two
new grounds of rejection: (1) claims 53, 95 and 103 are rejected under
35 U.S.C. § 103(a) as being unpatentable over AT&T, Dworkin and Filepp;
and (2) claims 93 and 101 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over AT&T and Dworkin.

PRINCIPLES OF LAW
Filing Date
The applicant for a United States patent bears the burden of
establishing its entitlement to the filing date of a previously filed application.
Wagoner v. Barger, 463 F.2d 1377, 1380 (CCPA 1972).
In order for a reference to claim an effective filing date of an
application to which it claims priority under 35 U.S.C. § 102(e), the
application must disclose, pursuant to §§120/112, the invention claimed in
the reference. In re Wertheim and Mishkin, 209 USPQ 554, 565-566
(C.C.P.A. 1981).
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Written Description
The written description requirement of 35 U.S.C. § 112, ¶ 1, is
straightforward: The specification shall contain a written description of the
invention …. To satisfy this requirement, the specification must describe
the invention in sufficient detail so that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
date sought. In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008).

Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
While the specification can be examined for proper context of a claim
term, limitations from the specification will not be imported into the claims.
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005).
A preamble is not limiting where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
purpose or intended use for the invention. Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).

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Obviousness
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Once a prima facie case of obviousness is established, the burden
shifts to Appellant to rebut it. Id.
One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
Id.

Analogous Art
A reference is analogous art if it is either in the field of the applicant's
endeavor or reasonably pertinent to the particular problem with which the
inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
1992). In addition, when a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. For the same reason, if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007).

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Related Applications
Examiners are not bound to follow other examiners’ interpretations.
Dayco Products Inc. v. Total Containment Inc., 329 F.3d 1358, 1368 (Fed.
Cir. 2003).

Official Notice
To adequately traverse a finding of Official Notice, the Appellant
must specifically point out the supposed errors in the Examiner's action,
which would include stating why the noticed fact is not considered to be
common knowledge or well-known in the art. A general allegation that the
claims define a patentable invention without any reference to the Examiner's
assertion of Official Notice is inadequate. In the absence of any demand
by Appellant for the Examiner to produce authority for his statement, the
traversal shall not be considered. In re Chevenard, 139 F.2d 711, 713
(CCPA 1943).

Printed Matter
Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
terms of patentability. In re Gulack, 703 F.2d 1381, 1386-86 (Fed Cir.
1983).

Citing References
Where a reference is relied on to support a rejection, whether or not in
a “minor capacity,” there would appear to be no excuse for not positively
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including the reference in the statement of rejection. In re Hoch, 428 F.2d
1341, 1342 n. 3 (CCPA 1970).

OPINION
Rejection of claims 115, 116, 121, 122, and 140-143 under
35 U.S.C. § 102(e) as being anticipated by Saigh.
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The sole issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claims 115, 116, 121, 122, and 140-143 because parent
Application No. 08/268,309 filed June 29, 1994 (hereinafter the “’309
application”) does not provide written description support for multiple
central communications facilities.
Findings of Fact13
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The ‘309 application discloses an array of central facilities that
communicate with each other and a remote facility. A user accesses the
central facility via the remote facility (p. 5, ll. 8-10; p. 6, l. 31 through p. 7, l.
3; p. 7, ll. 30-35; p. 9, l. 33 through p. 10, l. 7).
Saigh has a filing date of July 25, 1996 and is a continuation-in-part of
U.S. Patent Application No. 07/787,536 filed November 4, 1991 (hereinafter
“‘536 application”).
The ‘536 application does not disclose information regarding rentals.
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Claims 115, 116, 121, 122, and 140-143 have been rejected under
35 U.S.C. § 102(e) as being anticipated by Saigh. This application was filed
on March 29, 1996, and is a continuation-in-part application of the ‘309
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application which was filed on June 29, 1994. As an initial matter, we must
determine whether the Appellant has shown that the ‘309 application
adequately supports the subject matter of the aforementioned claims. See
Wagoner, 463 F.2d at 1380.
The Appellant asserts that the ‘309 application, to which this
application claim priority, does provide support for multiple central
communications facilities (Appeal Brief 33-34; Reply Brief 1-2). We agree
with the Appellant.
The ‘309 application does provide written description support for
multiple central communications facilities, for example, at p. 5, ll. 8-10; p. 6,
l. 31 through p. 7, l. 3; p. 7, ll. 30-35; p. 9, l. 33 through p. 10, l. 7 of the
‘309 application. While the Examiner is correct that Fig. 1 filed with the
‘309 application does not show multiple central communications facilities,
all 35 U.S.C. § 112, ¶ 1, requires is that the specification describe the
invention in sufficient detail so that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
date sought. In re Alonso, 545 F.3d at 1019. See also, Pandrol USA LP v.
Airboss Railway Products Inc., 424 F.3d 1161, 1165-1166 (Fed Cir. 2005)
(specification supported modification of drawing to include adhesive layer
12 between plate 10 and tie 1 to comply with 37 C.F.R. § 1.83(a)). The ‘309
application, even without the drawing, provides adequate written description
support for multiple central communications facilities.
Moreover, pages 9-30 of the Appeal Brief identifies extensive support
in the ‘309 application for the subject matter of the aforementioned claims.
Accordingly, absent an indication by the Examiner that the ‘309 application
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does not provide specific support for any particular aspect of the
aforementioned claims, the effective filing date for the aforementioned
claims is the June 29, 1994 filing date of the ‘309 application.
Saigh has a filing date of July 25, 1996 and is a continuation of an
application filed December 30, 1994. Saigh is a continuation-in-part of the
‘536 application, filed November 4, 1991. The ‘536 application does not
disclose information regarding rentals as recited in the aforementioned
claims, and as such is not relevant to the effective filing date of Saigh as it
relates to the subject application. See In re Wertheim and Mishkin, 209
USPQ at 565-566. However, the June 29, 1994 effective filing date of the
aforementioned claims antedates the December 30, 1994 effective date of
Saigh.
Accordingly, we will not sustain this rejection of claims 115, 116,
121, 122, and 140-143.

Rejection of claim 123 under 35 U.S.C. § 102(e) as being 16
anticipated by Gifford 17
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that Gifford discloses using
downloaded software to display or reproduce “information contained in a
transmitted hypermedia document” as recited in claim 123.
Findings of fact 22
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Gifford discloses that the software architecture underlying the
particular preferred embodiment is based upon the conventions of the World
Wide Web including HTML, and that there are many techniques for
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representing programs as data for purchase request 24 and purchase message
25 (col. 5, l. 63 through col. 6, l. 2; col. 4, l. 61 through col. 5, l. 6).
Analysis 3
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The Appellant asserts that Gifford only discloses that the downloaded
program is only used to generate a “user purchase request and message,” and
not to “translate information contained in a transmitted hypermedia
document” as recited in claim 123 (Appeal Brief 35; Reply Brief 2). We
disagree with the Appellant.
Gifford discloses that “there are many techniques for representing
programs as data” for purchase request 24 and purchase message 25 at col.
5, l. 63 through col. 6, l. 2, and that “[t]he software architecture underlying
the particular preferred embodiment is based upon the conventions of the
World Wide Web” including HTML (col. 4, l. 61 through col. 5, l. 6).
Accordingly, Gifford discloses that the user purchase request 24 and user
purchase message 25 could be in HTML.
We will sustain this rejection of claim 123.

Rejection of claims 30-33, 36, 39-45, 47, 49, 51, 54, 57-64, 67, 79-18
85, 87-90, 92, and 100 under 35 U.S.C. § 103(a) as being unpatentable 19
over AT&T in view of Dworkin 20
Findings of Fact 21
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AT&T’s online service is a directory of directories (p. 1, Abstract).
AT&T discloses that before the introduction of CIX, 99% of CerfNet users
were researchers and academics, however, now 90% of users are
commercial. Users of the AT&T directory want know how to contact
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businesses and how to sell and use services that are available on it (p. 2, ¶
12-14).
A user of AT&T’s word search may perform a word search on AT&T
to find out where information is located (p. 2, ¶ 1-5).
Dworkin discloses an automated system for locating and purchasing
goods or services sold by a plurality of vendors (Abstract).
Managers or suppliers may use a virtual bulletin board contained on
the system disclosed in Dworkin to inform users of new products and special
promotions (col. 9, ll. 36-46).
A user navigates the database 3 of Dworkin via multiple screen menus
(Figs. 3-4).
The specification discloses that a shopper may establish contact with
the central facility’s equipment by helping themselves through a self-service
mode of a database which they can browse through for the goods and
services which interest them (p. 20, ll. 20-23).

Analysis 17
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Market and/or Sell Goods and/or Services
The first issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that AT&T discloses an
apparatus to market and/or sell goods and/or services as recited in claims 30
and 44. We sustain the rejection of claim 30 and 44 for the reasons below.
The Appellant asserts that AT&T does not disclose a system used to
market and/or sell goods and/or services as recited in claims 30 and 44
because (1) the AT&T directory is a part of InterNIC which is about
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scientific research and not commerce and (2) the directory itself is not used
to market and/or sells goods and/or services (Appeal Brief 36, 39; Reply
Brief 3, 5, 7). We disagree with the Appellant on this issue. Regardless of
whether AT&T is part of InterNIC, AT&T discloses that users of the AT&T
directory want to know how to contact businesses and how to sell and use
services that are available on it. Under a broadest reasonable interpretation,
using the AT&T directory to sell services meets the recitation of “market
and/or sell goods and/or services.” See In re Am. Acad. Of Sci. Tech Ctr.,
367 F.3d at 1364.
The Appellant also asserts that AT&T has users while the present
invention has customers (Appeal Brief 36). We once more disagree with
the Appellant on this issue. Under a broadest reasonable interpretation,
“users” can correspond to “customers” absent a specific definition of
customers set forth in the claim. See Id.; CollegeNet, Inc., 418 F.3d at 1231.
The Appellant further asserts that the Examiner erred because some of
CerfNet users were researchers and academics (Reply Brief 3, 5, 7). We
disagree with the Appellant. The fact that some of CerfNet users were
researchers or academics is irrelevant. Claims 30 and 44 do not disclose that
the system must be used exclusively to market and/or sell goods and/or
services. See Id. As long as some of CerfNet’s users were commercial
users, the recitation of “market and/or sell goods and/or services” is met.
Moreover, we note that a preamble, such as the ones set forth in
claims 30 and 44 reciting apparatuses to market and/or sell goods and/or
services, is not limiting where a patentee defines a structurally complete
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invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention. Catalina Mktg. Int’l, Inc., 289 F.3d at 808.

Select and Contact
The second issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that AT&T discloses at least
one of said computerized central communications facilities is adapted to
provide to said customer at said computerized remote facility a list of
computerized central communications facilities permitting said customer to
select and contact at least one other computerized central communications
facility as recited in claims 30 and 44.
The Appellant asserts that AT&T does not disclose permitting a
customer to select and contact at least one other computerized central
communications facility as recited in claims 30 and 44 (Appeal Brief 37, 39;
Reply Brief 3). We disagree with the Appellant.
The claim only recites permitting a customer to select and contact at
least one other computerized central communications facility. The claim
does not require the customer to select and contact at least one other
computerized central communications facility, through AT&T’s software
architecture or otherwise, in order to meet the claim recitation. See
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231.
AT&T discloses a directory of directories, and a user performs a
word search on AT&T to find out where information is located, for example,
which directory. Once these results are returned, the user may use the
information to contact that directory so as to contact businesses listed in that
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directory. Accordingly, once the word search results are returned, the user is
permitted to select and contact this directory using any suitable means, and
the claim recitation is satisfied under a broadest reasonable interpretation.
See In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d at 1364. The fact that
AT&T may or may not actually disclose the user selecting and contacting
the directory, whether through the software architecture of AT&T or other
means, is irrelevant, as those recitations are not set forth in the claims.
CollegeNet, Inc., 418 F.3d at 1231,

Motivation
The third issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in combining the single central facility of
Dworkin with the multiple central facilities of AT&T because there is no
motivation to combine the references.
The Appellant asserts that there is no motivation to combine the single
central facility of Dworkin with the multiple central facilities of AT&T
because the systems are fundamentally different (Appeal Brief 37, 39). We
disagree with the Appellant.
The test is not whether Dworkin and AT&T can or cannot be merged
wholesale, but whether one or ordinary skill in the art could combine certain
features from each reference with a proper motivation. In re Keller, 642
F.2d at 425. Both Dworkin and AT&T disclose buying and selling goods
and services over networks. Accordingly, Dworkin and AT&T appear to be
directed to the same technology that is amenable to substituting features
across references. Absent a showing by Appellant as to what specific
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technical aspects of the single central facility of Dworkin and the multiple
central facilities of AT&T prevents the teachings of the references from
being combined in the manner suggested by the Examiner, this line or
reasoning is unconvincing.
Moreover, the Examiner has set forth a motivation on pages 9-10 of
the Office Action that “[i]t would have been obvious… to include the [the
information of interest stored in a database of Dworkin] within [the system
of AT&T] for the motivation of providing a system for locating and
purchasing products of interest to a customer (col. 1, lines 8-12 and lines 63-
65).” Absent any specific technical arguments as to why one or ordinary
skill in the art could not place the information of interest of Dworkin within
the system of AT&T, the motivation set forth by the Examiner is proper. Id.

Non-Analogous Art
The fourth issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in combining the single central facility of
Dworkin with the multiple central facilities of AT&T because Dworkin and
AT&T are non-analogous art.
The Appellant asserts that Dworkin and AT&T are non-analogous
art (Appeal Brief 37, 39). We disagree with the Appellant on this issue. A
reference is analogous art if it is either in the field of the applicant's
endeavor or reasonably pertinent to the particular problem with which the
inventor was concerned. In re Oetiker, 977 F.2d at 1447. AT&T, Dworkin
and the present invention are all directed to buying and selling goods over
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networks. Accordingly, because they are all in the same field of endeavor,
they are all analogous art.

Contact the Customer
The fifth issue, however, in regard to this rejection is whether the
Appellant has shown that the Examiner erred in asserting that Dworkin
discloses “wherein at least one of said computerized central communications
facilities is further programmed to contact the customer and apprise said
customer of goods or services offered or any special offerings” as recited in
claim 32.
The Examiner asserts that Dworkin discloses a central facility
contacting a customer to apprise them of goods or services offered or special
offerings, as recited in claim 32, because Dworkin discloses a virtual bulletin
board on a computerized system where managers and suppliers can inform
users of new products and special promotions (Examiner’s Answer 5-6).
We disagree with the Examiner and agree with the Appellant’s arguments on
page 37 of the Appeal Brief and page 4 of the Reply Brief.
The virtual bulletin board in Dworkin can only provide information to
the customer if the customer accesses the virtual bulletin board, i.e., the
customer contacts the central facility. Even then, the customer is obtaining
the information from the virtual bulletin board, as no further action,
contacting or otherwise, is undertaken by any of the virtual bulletin board,
the managers or the suppliers.
For this reason, we will not sustain this rejection of claim 32.

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Competing Providers
The sixth issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that AT&T discloses “wherein
said computerized central communications facility and each of said other
computerized central communications facilities are associated with
competing providers of goods and services” as recited in claim 33.
The Appellant asserts that the Examiner has failed to cite a specific
passage of AT&T which discloses that the computerized central
communications facilities are associated with competing providers as recited
in claim 33 (Appeal Brief 38; Reply Brief 4). We disagree with the
Appellant. AT&T discloses that it is a directory of directories. Each
directory is associated with a competing provider under a broadest
reasonable interpretation. In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d at
1364.
We will sustain this rejection of claim 33.

Stopping Point in User Presentation
The seventh issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in taking Official Notice of providing a
stopping point in a user presentation as recited in claims 36 and 51.
The Appellant asserts that the Official Notice of the “presentation
stopping point” recited in claims 36 and 51 was improper because this
limitation was found to be novel and an inventive step in another related
application (Appeal Brief 38, 40; Reply Brief 4, 6). We disagree with the
Appellant.
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As an initial matter, Examiners are not bound to follow other
examiners’ interpretations. Dayco Products Inc. v. Total Containment Inc.,
329 F.3d at 1368. Accordingly, the finding in the related application is
given no weight.
Moreover, Appellant has not provided any factual or technical
arguments as to why the Official Notice is improper, i.e., why a
“presentation stopping point” is not capable of instant and unquestionable
demonstration as being well-known. Absent such arguments, Appellant
cannot prevail. In re Chevenard, 139 F.2d 711, 713.
We will sustain this rejection of claims 36 and 51.

Downloading Software
The eighth issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that AT&T discloses a
processor programmed to download software from a computerized central
communications facility to a remote communications facility as recited in
claims 39, 41 and 58.
The Examiner asserts that AT&T’s disclosure of downloading
information concerning the directory of directories to the user’s computer
corresponds to downloading software from the computerized central
communications facilities as recited in claims 39, 41 and 58 (Examiner’s
Answer 7, 9). We disagree with the Examiner and agree with the
Appellant’s arguments on pages 38-40 of the Appeal Brief and page 4 of the
Reply Brief. Downloading information or data, as set forth in AT&T, does
not correspond to downloading software.
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Accordingly, we will not sustain this rejection of claims 39, 41 and 58
under the Examiner’s current rationale.

Second Central Communications Facility
The ninth issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that Dworkin discloses “a second
central communications facility having a database of information relating to
a second set of information relating to goods or services to provide upon
request” as recited in claim 44.
The Appellant asserts that Dworkin only discloses one database which
cannot correspond to a second central communications facility having a
database as recited in claim 44 (Appeal Brief 39). However, AT&T
discloses a directory of directories, each of which is a central
communications facility having a database. One cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d at 425.
We will sustain this rejection of claim 44.

Downloading Contract
The tenth issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Dworkin discloses “a
software application for assisting the central communications facility to
download a contract to the computerized remote location” as recited in claim
54.
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The Examiner asserts that the sending of the transaction number of
an order to a user in Dworkin corresponds to a software application for
assisting the central communications facility to download a contract to a
computerized remote location as recited in claim 54 (Examiner’s Answer 9).
We disagree with the Examiner and agree with the Appellant’s arguments
on page 40 of the Appeal Brief and page 6 of the Reply Brief. A mere
transaction number, while an indication of the existence of a contract, is not
a contract in and of itself.
We will not sustain this rejection of claim 54.

Browsing
The eleventh issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Dworkin discloses
“wherein said first central communications facility further enables said
customer to browse said first set of information relating to goods and
services” as recited in claim 79.
The Appellant asserts that navigating the screen menus of Dworkin
does not correspond to browsing as recited in claim 79 because the browsing
is not done over the Internet (Appeal Brief 41; Reply Brief 6-7). We
disagree with the Appellant. The definitions of browsing set forth by
Appellant on page 23, lines 20-23 of the Specification and page 41 of the
Appeal Brief both include scanning and viewing files in a computer
database. Dworkin discloses such “scanning and viewing” of files in
database 3 via view screen menus.
We will sustain this rejection of claim 79.
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Search First and Second Database
The twelfth issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Dworkin discloses
“enabling the remote facility to search said first database or said second
database” as recited in claim 81.
The Appellant asserts that Dworkin does not disclose “enabling the
remote facility to search said first database or said second database” as
recited in claim 81 because Dworkin only discloses one database (Appeal
Brief 41; Reply Brief 7). Claim 81 recites “enabling the remote facility to
search said first database or said second database” (emphasis added). As
long as the remote facility can search at least one of the first database and
the second database, such as database 3 in Dworkin, the claim recitation is
met. Moreover, AT&T discloses a directory of directories with multiple
databases.
We will sustain this rejection of claim 81.

Other Claims
The thirteenth issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in rejecting claims 31, 40, 42, 43, 45, 47,
49, 51, 57-64, 67, 80, 82-85, 87-90, 92 and 100.
In addition to a lack of motivation for combining AT&T and
Dworkin, which has been addressed above, the Appellant asserts that claims
31, 40, 42, 43, 45, 47, 49, 51, 57, 59-64, 67, 80, 82-85, 87-90, 92 and 100
are also allowable because they either (1) depend from an allowable claim,
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or (2) are substantially similar to an allowable claim (Appeal Brief 39-42;
Reply Brief 5). We disagree with the Appellant. The rejection of the claims
from which these claims either depend or are substantially similar to has
been sustained. Accordingly, the rejection of these claims is also sustained.

Rejection of claims 50, 72, 77, 78, and 86 under 35 U.S.C. § 103(a) 6
as being unpatentable over AT&T in view of Dworkin and McCalley 7
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in rejecting claims 50, 72, 77, 78 and 86.
The Appellant asserts that claims 50, 72, 77, 78 and 86 are allowable
because they either (1) depend from an allowable claim, or (2) are
substantially similar to an allowable claim (Appeal Brief 42). We disagree
with the Appellant. The rejection of the claims from which these claims
either depend or are substantially similar to has been sustained.
Accordingly, the rejection of these claims is also sustained.

Rejection of claims 34, 35, 38, 48, 52, 53, 68, 69, 94, 95, 103, and 17
107 under 35 U.S.C. § 103(a) as being unpatentable over AT&T in view 18
of Dworkin and Filepp 19
Findings of Fact 20
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Filepp discloses an interactive computer system network that enables
a user to display desired information, such as news, financial, and cultural
information, and perform desired transactional services, such as banking
and shopping, through any of a plurality of types of personal computers
(Abstract).
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The applications on the interactive computer system network of
Filepp include text/graphic sessions, presentation data, videotext, sounds,
graphics data, pictorial codes and presentation media (col. 2, ll. 23-38; col.
18, ll. 40-55; col. 59, ll. 53-62; col. 65, ll. 50-64; col. 83, ll. 3-11; col. 90, l.
60 through col. 91, l. 13).

Analysis 7
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Motivation
The first issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in combining the single central facility of
Filepp with the multiple central facilities of AT&T because there is no
motivation to combine the references.
The Appellant asserts that there is no motivation to combine the
single central facility of Filepp with the multiple central facilities of AT&T
because the systems are fundamentally different (Appeal Brief 42-44; Reply
Brief 8-9). We disagree with the Appellant.
The test is not whether Filepp and AT&T can or cannot be merged
wholesale, but whether one of ordinary skill in the art could combine certain
features from each reference with a proper motivation. In re Keller, 642
F.2d at 425. Both Filepp and AT&T disclose buying and selling goods and
services over networks. Accordingly, Filepp and AT&T appear to be
directed to the same technology that is amenable to substituting features
across references. Absent a showing by Appellant as to what specific
technical aspects of the single central facility of Filepp and the multiple
central facilities of AT&T prevents the references from being combined
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in the manner suggested by the Examiner, this line or reasoning is
unconvincing.
Moreover, the Examiner has set forth a motivation on pages 19-20 of
the Office Action that “[i]t would have been obvious… to include [in at least
one computerized central communications facility] an audio communication
device for communication with said computerized remote communications
facility as disclosed by Filepp within AT&T and Dworkin for the motivation
of providing large numbers of users to applications containing interactive
text/audio/graphics (col. 2, lines 22-27).” Absent any specific technical
arguments as to why one or ordinary skill could not place the interactive
text/audio/graphics of Filepp within the systems of AT&T and Dworkin, the
motivation set forth by the Examiner is proper. Id.

Non-Analogous Art
The second issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in combining the single central facility
of Dworkin with the multiple central facilities of AT&T because Filepp and
AT&T are non-analogous art.
The Appellant asserts that Filepp and AT&T are non-analogous art
(Appeal Brief 42-44; Reply Brief 8-9). We disagree with the Appellant. A
reference is analogous art if it is either in the field of the applicant's
endeavor or reasonably pertinent to the particular problem with which the
inventor was concerned. In re Oetiker, 977 F.2d at 1447. AT&T, Filepp
and the present invention are all directed to buying and selling goods over
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networks. Accordingly, because they are all in the same field of endeavor,
they are all analogous art.

Audio or Video Presentations
The third issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Filepp discloses
computerized communications facilities adapted to provide information
relating to goods and services in the form of an audio or video presentation
as recited in claims 35, 48 and 68.
The Appellant asserts that Filepp’s disclosure of audio signals and
videotext cannot correspond to audio or video presentations as recited in
claims 35, 48 and 68 (Appeal Brief 43-44; Reply Brief 7, 9-10). We
disagree with the Appellant.
As an initial matter, Appellant has not set forth any definition of audio
or video presentation in the claims that would exclude audio signals of
videotext. See CollegeNet, Inc., 418 F.3d at 1231.
Moreover, Filepp additionally discloses applications on the interactive
computer system network that include text/graphic sessions, presentation
data, videotext, sounds, graphics data, pictorial codes and presentation media
(col. 2, ll. 23-38; col. 18, ll. 40-55; col. 59, ll. 53-62; col. 65, ll. 50-64; col.
83, ll. 3-11; col. 90, l. 60 through col. 91, l. 13). One or more of these
features constitute an audio or video presentation under a broadest
reasonable interpretation. See In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d at
1364.
We will sustain this rejection of claims 35, 48 and 68.
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Auctioning Services, Housing Information/New Rejection
The third issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that Filepp discloses auctioning
services as recited in claim 53, and information about the sale or financing
of housing as recited in claims 95 and 103.
The Appellant asserts that Filepp does not disclose wherein the
goods and services include auctioning services as recited in claim 53, and
providing information about the sale or financing of housing as recited in
claims 95 and 103 (Appeal Brief 44-45). Even assuming that we agree with
the Appellant, we nonetheless are of the opinion that claims 53, 95 and 103
merely constitute descriptive materials that are unrelated to the underlying
apparatus in any functional way. See In re Ngai, 36 7 F.3d at 1339.
Specifically, the underlying apparatus including central communications
facilities and remote communications facilities will not function differently
whether the information presented is for auctioning services or housing.
Therefore, we will sustain the rejection as it is directed to claims 53,
95 and 103. However, because our rationale differs from the rationale of
the Examiner, we denominate this a new rejection pursuant to 37 C.F.R.
§ 41.50(b).

Computerized Voice
The fourth issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that the computerized voice
as recited in claim 69 is similar to the subject matter of claim 36.
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The Examiner asserts that the computerized voice of claim 69 is
similar in scope to the subject matter of claim 36, and thus is rejected on the
same basis (Office Action 23). We disagree with the Examiner and agree
with the Appellant’s arguments on page 44 of the Appeal Brief. Claim 36
recites “means for recording a presentation stopping point for future
reference,” and is rejected as being obvious over a combination of AT&T,
Dworkin and Official Notice of a presentation stopping point. The
presentation stopping point of claim 36 is not similar in subject matter to the
computerized voice of claim 69.
We will not sustain this rejection of claim 69.

Other Claims
The fifth issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in rejecting claims 34, 38, 52, 94 and 107.
In addition to a lack of motivation for combining AT&T and Filepp,
which has been addressed above, the Appellant asserts that claims 34, 38,
52, 94 and 107 are also allowable because they either (1) depend from
an allowable claim, or (2) are substantially similar to an allowable claim
(Appeal Brief 42-44). We disagree with the Appellant. The rejection of the
claims from which these claims either depend or are substantially similar to
has been sustained. Accordingly, the rejection of these claims is also
sustained.

Rejection of claims 70-76 under 35 U.S.C. § 103(a) as being 24
unpatentable over AT&T in view of Dworkin and McCalley 25
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Select and Contact
The first issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that AT&T discloses “said
central communications facility adapted to enable said customer to select
and contact at least one other central communications facility providing
information relating to goods and services” as recited in claim 70.
The Appellant asserts that AT&T does not disclose enabling a
customer to select and contact at least one other computerized central
communications facility as recited in claim 70 (Appeal Brief 45-46; Reply
Brief 10). We disagree with the Appellant.
The claim only recites enabling a customer to select and contact at
least one other computerized central communications facility. The claim
does not require the customer to select and contact at least one other
computerized central communications facility, through AT&T’s software
architecture or otherwise, in order to meet the claim recitation. See
CollegeNet, Inc., 418 F.3d at 1231.
AT&T discloses a directory of directories, and a user performs a word
search on AT&T to find out where information is located, for example,
which directory. Once these results are returned, the user may use the
information to contact that directory so as to contact businesses listed in that
directory. Accordingly, once the word search results are returned, the user is
enabled to select and contact this directory using any suitable means, and the
claim recitation is satisfied under a broadest reasonable interpretation. See
In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d at 1364. The fact that AT&T
may or may not actually disclose the user selecting and contacting the
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directory, whether through the software architecture of AT&T or other
means, is irrelevant, as those recitations are not set forth in the claims. See
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231.
We will sustain this rejection of claim 70 and claims 71-76 which
depend therefrom.

Motivation
The second issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in combining the single central facility
of Dworkin with the multiple central facilities of AT&T because there is no
motivation to combine the references (Appeal Brief 45-46). We disagree
with the Appellant for the same reasons as set forth above.

Non-Analogous Art
The third issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in combining the single central facility of
Dworkin with the multiple central facilities of AT&T because Dworkin and
AT&T are non-analogous art (Appeal Brief 45-46). We disagree with the
Appellant for the same reasons as set forth above.

Rejection of claims 93, 96-98, 101, and 104-106 under 35 U.S.C.
§ 103(a) as being unpatentable over AT&T in view of Dworkin and
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24 Employee Recruiting Information/New Rejection
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The first issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in taking Official Notice of providing
employee recruiting information as recited in claims 93 and 101.
The Appellant asserts that the Official Notice of the providing
employee recruiting information recited in claims 93 and 101 was improper
because the use of Official Notice is generally improper (Appeal Brief 46).
We disagree with the Appellant.
At no point in the prosecution of this application has Appellant
properly challenged the Official Notice by providing any factual or technical
arguments as to why the Official Notice is improper, i.e., why a providing
employee recruiting information is not capable of instant and unquestionable
demonstration as being well-known2. Mere general assertions by the
Appellant that “the use of Official Notice itself is highly questionable” and
that because “this application is under final action such a use then of Official
Notice should be rare” do not constitute factual or technical arguments that
could properly challenge Official Notice (Appeal Brief 46). Factual or
technical arguments would address the substance of the Official Notice by
specifically referencing employee recruiting information. Absent such
factual or technical arguments, Appellant cannot prevail. In re Chevenard,
139 F.2d 711, 713.
Moreover, even assuming that we agree with the Appellant, we
nonetheless are of the opinion that claims 93 and 101 merely constitute
descriptive materials that are unrelated to the underlying apparatus in
any functional way. See In re Ngai, 36 7 F.3d at 1339. Specifically, the

2 No proper challenge of Official Notice is set forth on either page 46 of the Appeal Brief or pages 20-21 of
Supplemental Amendment filed July 6, 2004.
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underlying apparatus including central communications facilities and remote
communications facilities will not function differently whether or not the
information provided concerns employee recruiting information.
Therefore, we will sustain the rejection as it is directed to claims 93
and 101. However, because our rationale differs from the rationale of the
Examiner, we denominate this a new rejection pursuant to 37 C.F.R.
§ 41.50(b).

Coupons
The second issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in taking Official Notice of providing
coupons relating to goods and services as recited in claims 96, 97, 104 and
105.
The Appellant asserts that the Official Notice of the providing
coupons related to goods and services recited in claims 96, 97, 104 and 105
was improper because the use of Official Notice is generally improper
(Appeal Brief 46). We disagree with the Appellant.
At no point in the prosecution of this application has Appellant
properly challenged the Official Notice by providing any factual or technical
arguments as to why the Official Notice is improper, i.e., why a providing
coupons related to goods and services is not capable of instant and
unquestionable demonstration as being well-known3. Mere general
assertions by the Appellant that “the use of Official Notice itself is highly
questionable” and that because “this application is under final action such a

3 No proper challenge of Official Notice is set forth on either page 46 of the Appeal Brief or pages 20-21 of
Supplemental Amendment filed July 6, 2004.
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use then of Official Notice should be rare” do not constitute factual or
technical arguments that could properly challenge Official Notice (Appeal
Brief 46). Factual or technical arguments would address the substance of the
Official Notice by specifically referencing coupons related to goods and
services. Absent such factual or technical arguments, Appellant cannot
prevail. In re Chevenard, 139 F.2d 711, 713.
We will sustain this rejection of claims 96, 97, 104 and 105.

Charging Fees for Information
The third issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in taking Official Notice of charging
customers a fee for information as recited in claims 98 and 106.
The Appellant asserts that the Official Notice of charging customers a
fee for information recited in claims 98 and 106 was improper because the
use of Official Notice is generally improper (Appeal Brief 46). We disagree
with the Appellant.
At no point in the prosecution of this application has Appellant
properly challenged the Official Notice by providing any factual or technical
arguments as to why the Official Notice is improper, i.e., why charging
customers a fee for information is not capable of instant and unquestionable
demonstration as being well-known4. Mere general assertions by the
Appellant that “the use of Official Notice itself is highly questionable” and
that because “this application is under final action such a use then of Official
Notice should be rare” do not constitute factual or technical arguments that

4 No proper challenge of Official Notice is set forth on either page 46 of the Appeal Brief or pages 20-21 of
Supplemental Amendment filed July 6, 2004.
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could properly challenge Official Notice (Appeal Brief 46). Factual or
technical arguments would address the substance of the Official Notice by
specifically referencing charging customers a fee for information. Absent
such factual or technical arguments, Appellant cannot prevail. In re
Chevenard, 139 F.2d 711, 713.
We will sustain this rejection of claims 98 and 106.

Rejection of claims 108, 110-114 and 139 under 35 U.S.C. § 103(a) 8
as being unpatentable over Saigh in view of Lockwood 9
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The sole issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claims 108, 110-114 and 139 because parent Application
No. 08/268,309 filed June 29, 1994 does not provide written description
support for multiple central communications facilities (Appeal Brief 47-48;
Reply Brief 11-12). We agree with the Appellant for the same reasons as set
forth above.
We will not sustain this rejection of claims 108, 110-114 and 139.

Rejection of claim 109 under 35 U.S.C. § 103(a) as being 19
unpatentable over Saigh in view of Lockwood and Ferguson 20
Findings of Fact 21
22
23
The ‘309 application discloses auctioning services (p. 6, ll. 31-34).

Analysis 24
25 Saigh
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The first issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claim 109 because parent Application No. 08/268,309 filed
June 29, 1994 does not provide written description support for multiple
central communications facilities (Appeal Brief 48; Reply Brief 12). We
agree with the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 109.

Ferguson
Even though we have sustained the rejection of claim 109, we will
continue our analysis of the rejection, particularly with respect to Ferguson,
given that subsequent claims depend on the outcome of such analysis.
Accordingly, we determine whether the Appellant has shown that the
Examiner erred in asserting that Ferguson is prior art to the subject matter of
claim 109 because parent Application No. 08/268,309 filed June 29, 1994
does not provide written description support for auctioning services.
Claim 109 has been rejected under 35 U.S.C. § 103(a) using
Ferguson. This application was filed on March 29, 1996, and is a
continuation-in-part application of the ‘309 application which was filed
on June 29, 1994. As an initial matter, we must determine whether the
Appellant has shown that the ‘309 application adequately supports the
subject matter of the aforementioned claims. See Wagoner, 463 F.2d at
1380.
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The Appellant asserts that the ‘309 application, to which this
application claim priority, does provide support for auctioning services
(Appeal Brief 48; Reply Brief 12). We agree with the Appellant.
The ‘309 application does provide written description support for
auctioning services, for example, at p. 6, ll. 31-34 of the ‘309 application.
Accordingly, the effective filing date for claim 109 is the June 29, 1994
filing date of the ‘309 application.
Ferguson has a filing date of October 6, 1997, and is a continuation
of an application filed November 8, 1994. Accordingly, the June 29, 1994
effective filing date of the aforementioned claim antedates the November 8,
1994 effective date of Ferguson.
We will not sustain this rejection of claim 109.

Rejection of claim 139 under 35 U.S.C. § 103(a) as being 14
unpatentable over Saigh in view of Lockwood 15
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claim 139 because parent Application No. 08/268,309 filed
June 29, 1994 does not provide written description support for multiple
central communications facilities (Appeal Brief 49; Reply Brief 13). We
agree with the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 139.

Rejection of claim 124 under 35 U.S.C. § 103(a) as being 24
unpatentable over Saigh 25
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The sole issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claim 124 because parent Application No. 08/268,309 filed
June 29, 1994 does not provide written description support for multiple
central communications facilities (Appeal Brief 49; Reply Brief 13). We
agree with the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 124.

Rejection of claim 125 under 35 U.S.C. § 103(a) as being 9
unpatentable over Gifford in view of Ferguson 10
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that Ferguson is prior art to the
subject matter of claim 125 because parent Application No. 08/268,309 filed
June 29, 1994 does not provide written description support for auctioning
services (Appeal Brief 49; Reply Brief 13). We agree with the Appellant for
the same reasons as set forth above.
We will not sustain this rejection of claim 125.

Rejection of claim 126 under 35 U.S.C. § 103(a) as being 19
unpatentable over Gifford in view of Lockwood 20
21
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in rejecting claim 126.
The Appellant asserts that claim 126 is allowable because it depends
from allowable independent claim 123 (Appeal Brief 49-50). We disagree
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with the Appellant. The rejection of claim 123 has been sustained.
Accordingly, the rejection of claim 126 is also sustained.

Rejection of claims 127-129 under 35 U.S.C. § 103(a) as being 4
unpatentable over Gifford in view of Saigh 5
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The sole issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claims 127-129 because parent Application No. 08/268,309
filed June 29, 1994 does not provide written description support for multiple
central communications facilities (Appeal Brief 50-51; Reply Brief 14). We
agree with the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claims 127-129.

Rejection of claims 130-132 and 135-137 under 35 U.S.C. § 103(a) 14
as being unpatentable over Saigh in view of InTouch 15
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claims 130-132 and 135-137 because parent Application
No. 08/268,309 filed June 29, 1994 does not provide written description
support for multiple central communications facilities (Appeal Brief 51-53;
Reply Brief 15-16). We agree with the Appellant for the same reasons as set
forth above.
We will not sustain this rejection of claims 130-132 and 135-137.

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Rejection of claim 133 under 35 U.S.C. § 103(a) as being 1
unpatentable over Saigh in view of InTouch and Ferguson 2
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Saigh
The first issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claim 133 because parent Application No. 08/268,309 filed
June 29, 1994 does not provide written description support for multiple
central communications facilities (Appeal Brief 53-54; Reply Brief 16). We
agree with the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 133.

Ferguson
The second issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Ferguson is prior art to
the subject matter of claim 133 because parent Application No. 08/268,309
filed June 29, 1994 does not provide written description support for
auctioning services (Appeal Brief 53-54; Reply Brief 16). We agree with
the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 133.

Rejection of claim 134 under 35 U.S.C. § 103(a) as being 21
unpatentable over Saigh in view of InTouch and Lockwood 22
23
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The sole issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claim 134 because parent Application No. 08/268,309 filed
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June 29, 1994 does not provide written description support for multiple
central communications facilities (Appeal Brief 54; Reply Brief 16-17). We
agree with the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 134.

Rejection of claim 138 under 35 U.S.C. § 103(a) as being 6
unpatentable over Saigh in view of InTouch and Ferguson 7
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Saigh
The first issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Saigh is prior art to the
subject matter of claim 138 because parent Application No. 08/268,309 filed
June 29, 1994 does not provide written description support for multiple
central communications facilities (Appeal Brief 54; Reply Brief 17). We
agree with the Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 138.

Ferguson
The second issue in regard to this rejection is whether the Appellant
has shown that the Examiner erred in asserting that Ferguson is prior art to
the subject matter of claim 138 because parent Application No. 08/268,309
filed June 29, 1994 does not provide written description support for
auctioning services (Appeal Brief 54; Reply Brief 17). We agree with the
Appellant for the same reasons as set forth above.
We will not sustain this rejection of claim 138.

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Rejection of claim 30 under the judicially created doctrine of 1
obviousness-type double patenting as being unpatentable over Wren in 2
view of AT&T and Dworkin 3
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that claim 30 was unpatentable
for obviousness-type double patenting over claims 1-5 of Wren in view of
AT&T and Dworkin.
The Appellant asserts that the obviousness-type double patenting
rejection of claim 30 is improper because claim 30 includes aspects that are
not present in claims 1-5 of Wren (Appeal Brief 54-55; Reply Brief 17). We
disagree with the Appellant.
Appellant appears to be confusing statutory double patenting and
obviousness-type double patenting. Under statutory double patenting,
Appellant is correct that the only claims that may be rejected are claims that
are identical. Claim 30 of this application and claims 1-5 of Wren are not
identical. Under obviousness-type double patenting, however, the claims are
not identical because the application claim includes an aspect that is not
present in the patent claim. In that case, another reference including the
missing aspect is identified and combined with the patent claim to render the
application claim obvious. Such is the case here.
The Examiner is conceding that claim 1 of Wren does not include
certain aspects of claim 30. However, the Examiner is then asserting that
either AT&T or Dworkin discloses those aspects, and then is combining
claim 1 of Wren with those aspects of AT&T and Dworkin to render claim
30 obvious (Office Action 41-43). As the Examiner has established a proper
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prima facie case of obviousness, and Appellant has not set forth any
arguments as to why the combination is improper, we will sustain this
rejection. See In re Keller, 642 F.2d at 425.
We will sustain this rejection of claim 30.

Rejection of claims 108-114 and 130-143 under the judicially 6
created doctrine of obviousness-type double patenting as being 7
unpatentable over Wren in view of Saigh, Ferguson, InTouch, and 8
Lockwood 9
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The sole issue in regard to this rejection is whether the Appellant has
shown that the Examiner erred in asserting that claims 108-114 and 130-143
were unpatentable for obviousness-type double patenting over claims 1-5 of
Wren in view of Saigh, Ferguson, Intouch and Lockwood.
The Appellant asserts that the obviousness-type double patenting
rejection of claims 108-114 and 130-143 is improper because claims 108,
130, 138 and 140 include aspects that are not present in claims 1-5 of Wren
(Appeal Brief 55-56; Reply Brief 18). Again, Appellant appears to be
confusing statutory double patenting and obviousness-type double patenting.
Claims 108-114 and 130-143 have been rejected under obviousness-type
double patenting.
The Examiner concedes that claims 1-5 of Wren do not include
certain aspects of claims 108-114 and 130-143 (Office Action 43-44). The
Examiner then asserts that at least one of Saigh, Ferguson, InTouch and
Lockwood discloses those aspects. However, the Examiner only sets forth
a rationale for combining Saigh and claims 1-5 of Wren (Office Action 43-
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44). As Saigh is not prior art to claims 108-114 and 130-143 for the reasons
set forth above, this rejection is no longer effective.
The Examiner attempts to remedy this by citing Dworkin as allegedly
remedying the deficiencies of claims 1-5 of Wren (Examiner’s Answer 21-
22). However, Dworkin was not originally cited for this rejection and thus
we will not consider it. See In re Hoch, 428 F.2d at 1342 n. 3. Compare In
re Cowles, 156 F.2d at 551; In re Christensen et al., 166 F.2d at 825.
Moreover, the Examiner has not set forth a rationale as to how claims 1-5 of
Wren and Dworkin render obvious the aspects of claims 108, 130, 138 and
140 cited by Appellant at pages 55-56 of the Appeal Brief. See In re Keller,
642 F.2d at 425. Pages 21-22 of the Examiner’s Answer only assert that
Dworkin discloses periodically updating a database, which is not recited
in any of the aspects of claims 108, 130, 138 and 140 cited by Appellant.
We will not sustain this rejection of claims 108-114 and 130-143
under the Examiner’s current rationale.

CONCLUSIONS OF LAW
The Appellant has failed to show that the Examiner erred in rejecting
claims 30, 31, 33-36, 38, 40, 42-45, 47-53, 57, 59-68, 70-107, 123 and 126.
The Appellant has shown that the Examiner erred in rejecting claims
32, 39, 41, 54, 58, 69, 108-116, 121, 122, 124, 125 and 127-143.
Claims 117-120 are directed to non-elected species, were withdrawn
from consideration in the final Office Action mailed July 18, 2005, and thus
have not been considered in this opinion.
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The Appellant did show that the Examiner erred in asserting that
Saigh is prior art to the subject matter of claims 108-116, 121, 122, 124 and
127-143 because parent Application No. 08/268,309 filed June 29, 1994
does not provide written description support for multiple central
communications facilities.
The Appellant did not show that the Examiner erred in asserting
that Gifford discloses using downloaded software to display or reproduce
“information contained in a transmitted hypermedia document” as recited
in claim 123.
The Appellant did not show that the Examiner erred in asserting that
AT&T discloses an apparatus to market and/or sell goods and/or services as
recited in claims 30 and 44.
The Appellant did not show that the Examiner erred in asserting that
AT&T discloses at least one of said computerized central communications
facilities is adapted to provide to said customer at said computerized remote
facility a list of computerized central communications facilities permitting
said customer to select and contact at least one other computerized central
communications facility as recited in claims 30 and 44.
The Appellant did not show that the Examiner erred in combining the
single central facility of Dworkin with the multiple central facilities of
AT&T because (1) there is no motivation to combine the references and (2)
Dworkin and AT&T are non-analogous art.
The Appellant did show that the Examiner erred in asserting that
Dworkin discloses “wherein at least one of said computerized central
communications facilities is further programmed to contact the customer and
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apprise said customer of goods or services offered or any special offerings”
as recited in claim 32.
The Appellant did not show that the Examiner erred in asserting that
AT&T discloses “wherein said computerized central communications
facility and each of said other computerized central communications
facilities are associated with competing providers of goods and services” as
recited in claim 33.
The Appellant did not show that the Examiner erred in taking Official
Notice of providing a stopping point in a user presentation as recited in
claims 36 and 51.
The Appellant did show that the Examiner erred in asserting that
AT&T discloses a processor programmed to download software from a
computerized central communications facility to a remote communications
facility as recited in claims 39, 41 and 58.
The Appellant did not show that the Examiner erred in asserting that
Dworkin discloses “a second central communications facility having a
database of information relating to a second set of information relating to
goods or services to provide upon request” as recited in claim 44.
The Appellant did show that the Examiner erred in asserting that
Dworkin discloses “a software application for assisting the central
communications facility to download a contract to the computerized remote
location” as recited in claim 54.
The Appellant did not show that the Examiner erred in asserting that
Dworkin discloses “wherein said first central communications facility
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further enables said customer to browse said first set of information relating
to goods and services” as recited in claim 79.
The Appellant did not show that the Examiner erred in asserting that
Dworkin discloses “enabling the remote facility to search said first database
or said second database” as recited in claim 81.
The Appellant did not show that the Examiner erred in rejecting
claims 31, 40, 42, 43, 45, 47, 49, 51, 57-64, 67, 80, 82-85, 87-90, 92 and
100.
The Appellant did not show that the Examiner erred in rejecting
claims 50, 72, 77, 78 and 86.
The Appellant did not show that the Examiner erred in combining the
single central facility of Filepp with the multiple central facilities of AT&T
because (1) there is no motivation to combine the references and (2) Filepp
and AT&T are non-analogous art.
The Appellant did not show that the Examiner erred in asserting that
Filepp discloses that a computerized communications facility is adapted to
provide information relating to goods and services in the form of an audio or
video presentation as recited in claims 35, 48 and 68.
The Appellant did show that the Examiner erred in asserting that
Filepp discloses auctioning services as recited in claim 53 and information
about the sale or financing of housing as recited in claims 95 and 103?
The Appellant did show that the Examiner erred in asserting that the
computerized voice as recited in claim 69 is similar to the subject matter of
claim 36.
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The Appellant did not show that the Examiner erred in rejecting
claims 34, 38, 52, 94 and 107.
The Appellant did not show that the Examiner erred in asserting that
AT&T discloses “said central communications facility adapted to enable
said customer to select and contact at least one other central communications
facility providing information relating to goods and services” as recited in
claim 70.
The Appellant did show the Examiner erred in taking Official Notice
of providing employee recruiting information as recited in claims 93 and
101.
The Appellant did not show that the Examiner erred in taking Official
Notice of providing coupons relating to goods and services as recited in
claims 96, 97, 104 and 105.
The Appellant did not show that the Examiner erred in taking Official
Notice of charging customers a fee for information as recited in claims 98
and 106.
The Appellant did show that the Examiner erred in asserting that
Ferguson is prior art to the subject matter of claims 109, 125, 133, 134 and
138 because parent Application No. 08/268,309 filed June 29, 1994 does not
provide written description support for auctioning services.
The Appellant did not show that the Examiner erred in rejecting claim
126.
The Appellant did not show that the Examiner erred in asserting that
claim 30 was unpatentable for obviousness-type double patenting over
claims 1-5 of Wren in view of AT&T and Dworkin.
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The Appellant did show the Examiner erred in asserting that claims
108-114 and 130-143 were unpatentable for obviousness-type double
patenting over claims 1-5 of Wren in view of Saigh, Ferguson, Intouch and
Lockwood.

DECISION
The decision of the Examiner to reject claims 30, 31, 33-36, 38, 40,
42-45, 47-53, 57, 59-68, 70-107, 123 and 126 is affirmed. The decision of
the Examiner to reject claims 32, 39, 41, 54, 58, 69, 108-116, 121, 122, 124,
125 and 127-143 is reversed. Claims 117-120 are still withdrawn from
consideration.
We have entered new two new ground of rejection under 37 C.F.R.
§ 41.50(b): (1) claims 53, 95 and 103 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over AT&T, Dworkin and Filepp; and (2) claims 93
and 101 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
AT&T and Dworkin.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Regarding the new ground of rejection, Appellant must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of
the following options with respect to the new ground of rejection, in order to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . [; or]
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(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

JRG

STEPHEN WREN
POB 251
Waterloo, IL 62298
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