Ex Parte Xu et al

Patent Trial and Appeal Board

Aug 17, 2016

13319061 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/319,061 12/15/2011
49845 7590 08/19/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
BeiXu
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.740US 1 3018
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
08/19/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte BEI XU and CHAOOU HUANG
Appeal2014-004596 1
Application 13/319,061 2
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 Our decision references Appellants' Appeal Brief ("Br.," filed
November 21, 2013) and the Examiner's Answer ("Ans.," mailed
December 17, 2013) and Final Office Action ("Final Act.," mailed June 7,
2013).
2 Appellants identify eBay, Inc. as the real party in interest. Br. 2.
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Application 13/319,061
CLAIMED fNVENTION
Appellants' claimed invention "relates generally to the field of
computer technology and, in a specific exemplary embodiment, to a system
and method of searching a multitude of sources simultaneously for two or
more items" (Spec. 1 ).
Claims 1, 4, 8, 10, 14, and 16 are the independent claims on appeal.
Claims 1 and 4, reproduced below, are illustrative of the claimed subject
matter:
1. A system to perform a search for a plurality of items
in an electronic environment, the system comprising:
a keyword prompt engine to receive concurrently a
plurality of keywords from an end-user, the plurality of keywords
related to the plurality of items for which the end-user is
searching;
a price range prompt engine to receive a price range from
the end-user for each of the plurality of items; and
a search engine, having one or more hardware processors,
to locate, from an inventory within the electronic environment,
the plurality of items that match the plurality of keywords and
the price range, the search engine further to match concurrently
one or more sellers having more than one of the plurality of items
available for sale.
4. A method of performing a search for a plurality of
items in an electronic environment, the method comprising:
prompting an end-user for criteria related to the plurality
of items, the criteria selected to include a plurality of keywords
from the end-user, the plurality of keywords related to the
plurality of items for which the end-user is searching, the criteria
further to include a price range for each of the plurality of items;
and
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using the criteria to perform the search, the search using
one or more hardware processors, to locate the plurality of items
in an inventory within the electronic environment that match the
criteria, the search further to match concurrently one or more
sellers having the plurality of items available for sale.
REJECTIONS
Claims 16-18 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1-18 are rejected under 35 U.S.C. § 102(b) as anticipated by
Lunenfeld (US 2008/0021906 Al, pub. Jan. 24, 2008).
ANALYSIS
Enablement
The Examiner finds that Appellants' Specification fails to disclose
corresponding structure, material, or acts for the means-plus-function
elements, i.e., "keyword prompting means," "price range prompting means,"
and "searching means," recited in independent claim 16 (Final Act. 2-3).
And the Examiner rejects claim 16, and claims 17 and 18, which depend
therefrom, under 35 U.S.C. § 112, first paragraph, as failing to comply with
the enablement requirement (id.).
When a claim uses the term "means" to describe a limitation, the
inventor is presumed to have used the term to invoke treatment of the claim
under 35 U.S.C. § 112, i-f 6. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363,
1375 (Fed. Cir. 2003). "This presumption can be rebutted when the claim,
in addition to the functional language, recites structure sufficient to perform
the claimed function in its entirety." Id.
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Where, as here, the presumption is not rebutted, the means-plus-
function claim language is properly construed by "look[ing] to the
specification and interpret[ing] that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure." In re Donaldson Co.,
16 F.3d 1189, 1193 (Fed. Cir. 1994). "If there is no structure in the
specification corresponding to the means-plus-function limitation in the
claims, the claim will be found invalid as indefinite." Biomedino, LLC v.
Waters Technologies Corp., 490 F.3d 946, 950 (Fed. Cir. 2007); see also
Donaldson, 16 F.3d at 1195.
Appellants, in their Appeal Brief, variously identify Figures 1, 2, 3A,
3B, and 5 of the Specification as disclosing corresponding structure for the
means-plus-function elements (Br. 9--10). 3 Yet Figure 1 does not
specifically disclose any of the "means" elements. And although Figure 2
shows various software modules that allegedly correspond to the means-
plus-function elements, those modules are shown in the form of a "black
box" block diagram, only.
Figures 3A and 3B merely show exemplary web pages. And Figure 5
is a simplified diagram of a generic computing system, which, like the block
diagram in Figure 1, does not disclose any of the means-plus-function
elements.
3 The US PTO Rules of Practice require that for claims including "means
for" language, the Appeal Brief contain "[ fJor each rejected independent
claim, and for each dependent claim argued separately . . . [an identification
of] the structure, material, or acts described in the [S]pecification ... as
corresponding to each claimed function with reference to the [S]pecification
... and to the drawing, if any." See 37 C.F.R. § 41.37(c)(l)(iii).
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Appellants also cite paragraphs 27, 29, 31, 34, 37, 41, 43--45, 49, 51,
53, and 54 of the Specification as disclosing corresponding structure (id.
at 9--11 ). Yet, putting aside whether these paragraphs, in combination with
Figures 2, 3A, and 3B, disclose sufficient corresponding structure for a
software implementation of Appellants' claimed invention, we cannot agree
with Appellants that the Specification (specifically paragraphs 49, 51, 53,
and 54) provides "ample support for hardware-based versions" of the
disclosed modules (id. at 10) where the Specification merely states that the
invention "can be implemented in hardware" of the type known to a skilled
artisan (see Spec. i-f 54).
Appellants do not disclose sufficient corresponding structure in the
Specification for the means-plus-function limitations recited in claims 16-18
so as to render the claims definite. Therefore, independent claim 16, and
claims 17 and 18, which depend therefrom, are properly rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
We reverse the Examiner's enablement rejection of claims 16-18
under 35 U.S.C. § 112, first paragraph, because it was entered under an
inappropriate paragraph of§ 112. And we enter a new ground of rejection
of claims 16-18 under 35 U.S.C. § 112, second paragraph, as indefinite.
Anticipation
Appellants argue independent claims 1, 4, 8, 10, 14, and 16 as a group
with respect to the Examiner's rejection of the claims under 35 U.S.C.
§ 102(b) (Br. 11-15). Independent claims 1and16 are apparatus claims,
and are different in scope from method claims 4, 8, 10 and 14; therefore, we
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will address independent claims 1 and 16 and their respective dependent
claims separately.
Independent Claim 1 and Dependent Claims 2 and 3
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1under35 U.S.C. § 102(b) because Lunenfeld
does not disclose "a price range prompt engine to receive a price range from
the end-user for each of the plurality of items," as recited in claim 1 (Br. 14 ).
Lunenfeld discloses an e-commerce system that provides "item price
comparison shopping for multiple products from multiple suppliers,
simultaneously" (Lunenfeld i-f 881 ), and describes that its system enables
shoppers to comparison shop "on-the-fly" (id.). But we find nothing in
paragraph 881, on which the Examiner relies (see Final Act. 5), that
discloses "a price range prompt engine to receive a price range from the end-
user for each of the plurality of items," as called for in claim 1.
Responding to Appellants' argument that Lunenfeld does not disclose
receiving a price range from an end user for each of a plurality of items, the
Examiner takes the position that "performing price comparison shopping and
price sorting on the internet requires a user to provide price range data"
(Ans. 10). Yet we fail to see why, and the Examiner does not adequately
explain why, a user would be required to input price range data in order to
comparison shop when, as disclosed in paragraphs 805 and 806 of
Lunenfeld, the system performs keyword searching and returns product and
purchase information, e.g., item prices, according to the keyword phrases.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1under35 U.S.C. § 102(b). For the same reasons, we also do not
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sustain the Examiner's rejection of claims 2 and 3, which depend from
claim 1.
Independent Claim 16 and Dependent Claims 17 and 18
Claim 16 is directed to a system for performing a search for a plurality
of items, and includes language substantially similar to the language of
claim 1. Therefore, we do not sustain the rejection of under 35 U.S.C.
§ 102(b) of claim 16 and claims 1 7 and 18, which depend therefrom, for the
same reasons set forth above with respect to claim 1.
Independent Claims 4, 8, 10, and 14 and Dependent Claims 5-7, 9, 11-13,
and 15
As mentioned above, Appellants argue independent claims 4, 8, 10,
and 14 as a group (Br. 11-15). We select claim 4 as representative.
Claims 8, 10, and 14 stand or fall with claim 4. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 4 under 35 U.S.C. § 102(b) because Lunenfeld does
not disclose searching concurrently for each of a plurality of items and
concurrently matching sellers having the plurality of items for sale, i.e.,
"prompting an end-user for criteria related to the plurality of items" and
"using the criteria to perform the search ... the search further to match
concurrently one or more sellers having the plurality of items available for
sale," as recited in claim 4 (Br. 13). Instead, we agree with the Examiner
that Lunenfeld discloses the argued limitations (Ans. 9-10).
Lunenfeld is directed to a method and system for meta-searching by
sending a plurality of queries to a plurality of servers (Lunenfeld, Abstract).
Appellants argue that Lunenfeld does not disclose searching for multiple
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items concurrently and that ft/he only disclosure within Lunen(eld is that a
user may search using multiple keywords, not searching for multiple
items" (Br. 13). Yet, as the Examiner observes, Lunenfeld expressly
discloses that multiple keywords can be searched simultaneously (Ans. 9
(citing Lunenfeld i-f 805)), and that product information relating to multiple
products can be returned, and multiple products purchased simultaneously
(id. (citing Lunenfeld i-f 806) ). Lunenfeld also explicitly discloses "making a
single query or keyword search or multiple queries and/or multiple keyword
searches of multiple sites, search engines, servers, databases, clients,
information sources, applications, software applications, programs, and/or
software programs substantially simultaneously" (Lunenfeld i-f 807).
We also are not persuaded by Appellants' further argument that
Lunenfeld fails to disclose "match[ing] concurrently one or more sellers
having the plurality of items available for sale" (Br. 13-14 ). Appellants
assert that "Lunenfeld only discloses purchasing multiple items
simultaneously" (id. at 14). And Appellants argue that "merely purchasing
items simultaneously, as discussed within Lunenfeld, is not the same as
being able to search concurrently for a plurality of items and concurrently
match sellers having more than one of the plurality of items for sale" (id.).
Appellants' argument is not persuasive at least because, as described
above, Lunenfeld expressly discloses that multiple keywords can be
searched simultaneously (Lunenfeld i-f 805), and that product information
relating to multiple products can be returned, and multiple products can be
purchased simultaneously (id. i-f 806)). We agree with the Examiner that the
fact that a user searched for and purchased multiple items establishes that
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one or more sellers had more than one of the plurality of items available for
sale (Ans. 10).
Finally, we are not persuaded of Examiner error by Appellants'
argument that Lunenfeld does not disclose receiving a "price range for each
of the plurality of items" (Br. 14), i.e., "prompting an end-user for criteria
related to the plurality of items, the criteria selected to include ... a price
range for each of the plurality of items," as recited in claim 4, at least
because the nature of the criteria, i.e., that it includes a price range for each
of the plurality of items, does not functionally affect how the method is
performed. As such, it constitutes non-functional descriptive material that
may not be relied on to distinguish over Lunenfeld for purposes of
patentability.
The Federal Circuit has long held that where a limitation claims
printed matter that is not functionally or structurally related to its physical
substrate, the printed matter may not be relied on to distinguish over the
prior art for purposes ofpatentability. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). In applying the printed matter doctrine,
the first step is to determine whether the limitation is, in fact, directed to
printed matter, i.e., whether the limitation claims the content of information.
See In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). If so, "one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is 'no' is the printed
matter owed no patentable weight." Id. at 851. See also King Pharms. Inc.
v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir. 2010) (applying the
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"printed matter" reasoning to method claims containing an "informing" step
that could be either printed or verbal instructions).
Here, claim 4 claims the informational content of the criteria, and as
such, is directed to printed matter. The relevant inquiry then is whether the
recitation that the criteria include "a price range for each of the plurality of
items," i.e., the claimed informational content, has a "new and unobvious
functional relationship" with the method. Id. at 1279.
There is no objective evidence of record that there is a functional
distinction in prompting a user for criteria "includ[ing] a price range for each
of the plurality of items," as opposed to prompting the user for another
criterion. Regardless of the particular nature of the criteria, the underlying
method is the same. The nature of the criteria does not depend on the
method, and the method does not depend on the nature of the criteria. As
such, it constitutes non-functional descriptive material that may not be relied
on for patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 102(b) of independent claim 4 and independent claims 8, 10,
and 14, which fall with claim 4. We also sustain the Examiner's rejection of
dependent claims 9, 11-13, 15, 17, and 18, which are not argued separately.
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DECISION
The Examiner's rejection of claims 16-18 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner's rejection of claims 1-3 and 16-18 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejection of claims 4--15 under 35 U.S.C. § 102(b) is
affirmed.
We enter a new ground of rejection of claims 16-18 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection 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. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214. 01.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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