Ex Parte Zett

Patent Trial and Appeal Board

Apr 3, 2013

11758521 (P.T.A.B. Apr. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONNA R. ZETT
____________________

Appeal 2011-005564
Application 11/758,521
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3, 5, 9, 10, 18, 19, and 23-36. We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

BACKGROUND
Appellant’s invention is directed to an order management system for
products that are custom made or manufactured just in time (Spec. para.
[0002]).
Claims 1 and 26 are illustrative:
1. A method of rendering a progress, through a plurality
of separate entities each linked by a network to a display and a
data repository, of an order of a user for a custom made product
not carried in inventory, the method comprising:
electronically receiving, via said network, purchase order
information:
associated with the order that is generated by a
first said entity of the plurality of separate entities; and
including:
a specification of the user for the custom
made product; and
a delivery address of the user;
electronically receiving, via said network, order status
information associated with the order that is generated by a
second said entity of the plurality of separate entities;
electronically receiving, via said network, manufacturing
status information associated with the order that is generated by
a third said entity of the plurality of separate entities;
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electronically receiving, via said network, shipper status
information associated with the delivery of the custom made
product to the delivery address, wherein the shipper status
information is generated by a fourth said entity of the
plurality of separate entities;
electronically storing in the data repository the received
purchase order information, the order status information, the
manufacturing status information, and the shipper status
information; and
in response to an input of the user, forming a first
transmission for delivery via the network, wherein the first
transmission includes data sufficient to electronically rendering,
on the display, a current status of at least one of the purchase
order information, the order status information, the
manufacturing status information, and the shipper status
information.

26. A system comprising:
a server:
in communication with each of:
a first Internet network communicatively
connected to a corresponding browser enabled
device of each respective entity of a plurality of
separate entities, wherein the plurality of separate
entities includes an end customer; and
a second network communicatively
connected to a corresponding entity system for
each respective said entity of the plurality of
separate entities; and
hosting a web page accessible through the first
Internet network;
a server readable medium including a stored server
readable code executable by the server to allow access, via the
first Internet network, to the web page thereby rendering a
progress, through the plurality of separate entities, of an order
for a custom made product that is not manufactured until
ordered by an end customer;
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a first database in communication with the server and the
first Internet network via the web page;
and
a second database in communication with the server, the
first database, and the second network, wherein:
the first database receives, via the web page, and
stores respective information associated with the order
from each said entity of the plurality of separate entities;
the second database receives, via the second
network, and stores respective data associated with the
order from at least one said respective entity system of
one said corresponding said entity;
and
the server further executes the server readable code
to:
change the information stored in the first
database based on at least determining a difference
between the information stored in the first database
and the data stored in the second database; and
providing access to the web page sufficient
to render the changed information stored in the
first database upon one said browser enabled
device.

Appellant appeals the following rejections:
Claims 1-3, 5, 23, and 25 are rejected under 35 U.S.C. § 101 as
reciting ineligible subject matter.
Claims 18 and 19 are rejected under 35 U.S.C. § 112, second
paragraph, for lack of antecedent basis.
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Claims 1-3, 5, 18, 19, 25, 33, and 341 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Orshansky (US 7,218,980 B1, iss. May 15, 2007).
Claims 9, 10, and 26-32 are rejected under 35 U.S.C. § 102(e) as
anticipated by Franco (US 7,257,552 B1, iss. Aug. 14, 2007).
Claims 23, 24, 35, and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Orshansky and Official Notice.

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. The Specification describes a repository in one embodiment, stating, the
“server has a data repository, such as a database, associated with it ....”
(Spec. para. [0015]).
2. The ordinary and customary definition of the term repository, as defined
by Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
http://dictionary.reference.com/browse/repository (accessed: March 27,
2013), is “a receptacle or place where things are deposited, stored, or
offered for sale.”
3. The Specification describes a network in one embodiment as a network
of computers, stating, “FIG. 1 is a schematic diagram of one
implementation of an embodiment of the invention. FIG. 1 shows a
plurality of entities connected via a computer network, such as the
Internet ....” (Spec. para. [0015]).

1 Although the Examiner rejects claim 36 under 35 U.S.C. § 102(e) at page 7
of the Answer, claim 36 depends from claim 35, which is rejected under 35
U.S.C. § 103(a) at page 20 of the Answer. Therefore claim 36 is rejected
under 35 U.S.C. § 103(a). We take this to be an inadvertent typographical
error.
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4. The ordinary and customary definition of the term customer, as defined
by Merriam Webster’s Collegiate Dictionary (10th ed.), is “one that
purchases a commodity or service.”
5. Orshansky discloses an end customer, in that “customer 105 is a design
house which has designed an IC chip and now desires to have it
manufactured, either for subsequent sale to the general market or for
internal use.” (Col. 5, ll. 13-16).
6. The Examiner cites to Franco column 43, lines 60-63, as disclosing a
server to allow access, via the first Internet network, to the web page.
Ans. 13.
7. Franco discloses a server that allows Internet access to a web page to
check order status, stating, “a web interface 2005 through which
customers, retailers, shippers, etc., can log into the VIMS 200 to track the
status of an order or query aspects of the product distribution process.”
(Col. 43, ll. 60-63).

ANALYSIS
Patentable subject matter
We are not persuaded by Appellant’s argument that claims 1-3, 5, 23,
and 25 are not abstract ideas because they recite “a network that links a
plurality of separate entities to a display and a data repository.” App. Br. 16.
Claim 1 recites several steps of “electronically receiving, via a network” a
variety of items of information, storing the received information, and
forming a transmission “sufficient to electronically render[ ], on the display”
at least some of the received and stored information. The claim does not
recite actually transmitting or displaying the information.
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Each of the receiving steps recites mere data gathering steps, which
therefore represent insignificant extra-solution activity. These steps do not
qualify the claim as eligible subject matter. See Bilski v. Kappos, 545 F.3d
943, 963 (Fed. Cir. 2008) (en banc), aff'd sub nom Bilski v. Kappos, 130
S.Ct. 3218 (2010) (characterizing data gathering steps as insignificant extra-
solution activity).
The storing step recites “storing in the data repository.” A
“repository” is not defined in the Specification, but is described by example
in one embodiment as being database software on a computer server. FF 1.
However, since this is merely an example in one embodiment, we do not
import this limitation into the claim. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into a claim limitations
that are not part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment.”). Instead, we rely on the
ordinary and customary definition of repository, which is “a receptacle or
place where things are deposited, stored, or offered for sale.” FF 2. And
when repository is combined with its preceding term, data, a data repository
is memory, and storing something in memory is insignificant extra-solution
activity. Indeed, under a broadest reasonable construction, a person
mentally storing data could be considered a data repository.
Finally, claim 1 recites “forming a first transmission for delivery via
the network, wherein the first transmission includes data ....” This is merely
preparing an output step, assembling information for communication, and
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does not transform the claim into eligible subject matter. See Parker v.
Flook, 437 U.S. 584, 590 (1978) (“The notion that post-solution activity, no
matter how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance.”).
Claim 1’s steps could be performed through a purely mental
remembering step, along with several steps considered insignificant extra-
solution activity, and therefore recites an abstract idea in the form of a
mental process. The remainder of the rejected claims do not alter the
outcome. Claims 2 and 3 recite the identity of the parties from whom
information is received. Claims 23 and 25 recite the type of information
received as either a request to cancel, or a second purchase order. Even
claim 5, which requires the use of the “Internet,” only affects the steps
already considered insignificant extra-solution data gathering steps, and thus
does not recite eligible subject matter.
We are also not persuaded by Appellant’s argument that the recited
network is a “particular machine” that meets the “machine or transformation
test.” App. Br. 16-17. The term “network” is not specifically defined, but is
described, along with the “repository,” as being a computer network in one
embodiment. FF 3. We decline to read this limitation into the claim, as
above. In addition, a network is not a “particular machine” in the context of
the machine or transformation test, because it is not “specially programmed”
to perform a task, and could represent a telephone network or informal
human network. Given that the body of the claim provides no further insight
into the workings of the “network”, the term “network” suggests, at best, a
nominal use of a general purpose computer. See Gottschalk v. Benson, 409
U.S. 63, 65 (1972) (“The general purpose computer is designed to perform
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operations under many different programs.”). A nominal recitation of a
general purpose computer is not an express recitation to a particular
machine. Thus, we do not conclude that the claimed process is tied to a
particular machine.
Finally, the mere recitation of the components of a computer network
in the preamble is a field-of-use limitation that is insufficient to render an
otherwise patent-ineligible process patent-eligible. See Diamond v. Diehr,
450 U.S. 175, 191 (1981). Cf. SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1333 (Fed. Cir. 2010). In Bilski, the Supreme Court approvingly
cited Flook for “the proposition that the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.’” See 130 S.Ct. at 3230.
Accordingly, attempting to limit the abstract ideas and mental steps of the
claims to a computer environment, as Appellant attempts to do here, is
insufficient to render it statutory.
For these reasons, we sustain the rejection under 35 U.S.C. § 101 of
claims 1-3, 5, 23, and 25.
Rejection under 35 U.S.C. § 112 Second Paragraph
The Appellant argues that the claims are intended to depend from
claim 33, instead of claim 32, and that amending the claims would eliminate
the antecedent problem cited by the Examiner. App. Br. 18-19. Even
though the error may be typographical, an appropriate amendment is still
required to render this rejection moot. We therefore sustain the rejection of
the claims in their current form, for the reasons set forth by the Examiner.
Ans. 6.
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Rejection of Claims 1, 3, and 5 under 35 U.S.C. § 102(e) over
Orshansky
We are not persuaded by Appellant’s argument that Orshansky fails to
suggest the claimed “custom made product.” App. Br. 19-20. Claim 1
recites receiving information “including: a specification of the user for the
custom made product” and receiving “shipper status information associated
with the delivery of the custom made product.” The first instance of the
undefined term “custom made product” describes the type of information
received in the “specification.” However, the nature of that specification
information does not alter the method of the claim, which is to receive
information, store the information, and form the information for
transmission. The content of the specification, then, is mere printed matter,
and thus non-functional descriptive material, undeserving of patentable
weight. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Dependent
claims 3 and 5 were not separately argued. App. Br. 23.
Rejection of Claim 2 under 35 U.S.C. § 102(e) over Orshansky
Dependent claim 2 recites, in pertinent part, “wherein the user is an
end customer purchasing the custom made product.”
We are not persuaded by Appellant’s argument that Orshansky does
not disclose “the end customer.” App. Br. 21-22. The term “end customer”
is not defined, so we use the ordinary and customary meaning of “customer”
which is “one that purchases a commodity or service.” FF 4. Orshansky
discloses an end customer at “customer 105” that purchases a product for
“internal use,” which meets the claim language. FF 5.
We are not persuaded by Appellant’s argument that “the Orshansky
WIP tracking system does not include a shipper that ‘deliver[s]... the custom
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made product to the delivery address of the end customer’ as recited in claim
2.” App. Br. 22 (alteration in original). The claim, including independent
claim 1’s recitation, does not require a particular shipper, but only receiving
“shipper status information.” The information “associated with the delivery
of the customer made product to the delivery address” does not affect the
function of the claim, which receives, stores, and forms information, and is
therefore non-functional descriptive material undeserving of patentable
weight. Id.
Rejection of Claim 25 under 35 U.S.C. § 102(e) over Orshansky
Claim 25 recites, in pertinent part, receiving “a second said purchase
order information associated with a second said order for a replacement of
the custom made product under warranty ....”
We are not persuaded by Appellant’s argument that Orshansky
“nowhere teaches processing of a second purchase order for an exact
replacement of the custom made product,” or is “under warranty.” App. Br.
23, 24. We first note that claim 25 does not recite the word “exact,” which
is found instead in claim 24. We next find that the contents of the purchase
order, as to it being a second order, or whether it refers to a warranty on
another order, is merely non-functional descriptive material that does not
affect the function of the claim, which is to receive the order information
and perform2 receiving, storing, and forming steps. Id.

2 The claim recites “repeating” steps that have not been performed for this
order, so we construe this to mean performing the steps that were instead
performed on another order. The “repeating” steps appear to refer to the
steps in claim 1, so we construe the “repeating” as a shorthand reference to
those fully-recited receiving steps in claim 1, performed on a different order.
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Rejection of Claims 18, 19, 33, and 34 under 35 U.S.C. § 102(e) over
Orshansky
Appellant’s argument directed to claims 18, 19, 33, and 34 is that
Orshansky does not disclose the “current status of an order for a custom
made product of an end customer.” App. Br. 25. We find this argument
unpersuasive for the same reasons set forth above at claims 1 and 2, where
essentially identical arguments were presented.
Rejection of Claims 9, 10, and 26-32 under 35 U.S.C. § 102(e) over
Franco
We are not persuaded by Appellant’s argument that Franco does not
disclose “progress, through a plurality of separate entities, of an order for a
customer made product,” because Franco instead “warehouses multiple
products for connivance of delivery to the customer.” App. Br. 26. Claim
26 requires a “server to allow access, via the first Internet network, to the
web page....” The remainder of that clause is merely a function of that
server. As functional language, we are required to give this language weight
to the extent that the prior art is or is not capable of meeting the limitation.
In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). It is undisputed
that Franco discloses a server allowing access over the Internet to a web
page. FF 6, 7. The Appellant has not articulated any reason why Franco’s
server would not be capable of “rendering a progress” of an order containing
the particular information of it being custom made. Instead, we agree with
the Examiner that Franco’s server would be capable of this because it does
not discriminate against communicating any particular order-type
information.
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We are also not persuaded by Appellant’s argument that the “custom
made product” of claim 26 should be given patentable weight on the basis of
it not being non-functional descriptive material, because “manufacturing and
delivering custom made product [has] its challenges....” App. Br. 26-27. In
the context of claim 26, the “custom made product” refers to a function of
the server, not descriptive material. As described above, the server is
capable of performing the function of “rendering a progress ... of an order
for a custom made product....” Therefore, the limitation has been considered
and given appropriate weight.
For these reasons, we sustain the rejection of claim 26 under 35
U.S.C. § 102(e) over Franco, as well as dependent claims 9, 10, and 27-32
that were not separately argued. App. Br. 27.
Rejection of Claims 23, 24, 35, and 36 under 35 U.S.C. § 103(a)
Dependent claim 23 recites, in pertinent part:
electronically receiving, via said network, a request to cancel
the order from the first said entity of the plurality of separate
entities; and electronically forming a second transmission for
delivery to one or more said entities via said network, wherein
the second transmission includes an instruction to cancel the
order based on said received request, whereby the custom made
product is not delivered to the delivery address.
Dependent claim 35 recites substantially similar language.
We are not persuaded by Appellant’s argument that the combination
of Orshansky and Official Notice (that “it is old and well known to cancel
orders, notify vendors of the cancelled orders, and no longer deliver the
order that is now cancelled”) does not provide “support [] for cancellation of
a custom made product.” App. Br. 28. We find that the content of a request
does not affect the function of the claim, which is to receive a request and
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form a transmission containing the request. That the request concerns a
custom-made product is non-functional descriptive material undeserving
patentable weight. Ngai, 367 F.3d at 1338. The remainder of the disputed
claim language is met by the Official Notice, which has not been adequately
traversed as to why the Official Notice is in error. For these reasons, we
sustain the rejection under 35 U.S.C. § 103(a) of claims 23 and 35, as well as
dependent claims 24 and 36 that were not separately argued.

DECISION
We AFFIRM the rejection of claims 1-3, 5, 23, and 25 under 35
U.S.C. § 101.
We AFFIRM the rejection of claims 18 and 19 under 35 U.S.C. § 112,
second paragraph, for lack of antecedent basis.
We AFFIRM the rejection of claims 1-3, 5, 9, 10, 18, 19, and 25-34
under 35 U.S.C. § 102(e).
We AFFIRM the rejection of claims 23, 24, 35, and 36 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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