Ex Parte Zhang

Board of Patent Appeals and Interferences

Mar 16, 2011

10684125 (B.P.A.I. Mar. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/684,125 10/10/2003 Xiao Zhang ROC920030245US1 2745
46797 7590 03/16/2011
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
03/16/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte XIAO ZHANG 8
___________ 9
10
Appeal 2010-004080 11
Application 10/684,125 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 17
ANTON W. FETTING, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL1 20
21

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/684,125

2
STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 14, 2009) and Reply Brief (“Reply Br.,” filed December
22, 2009), and the Examiner’s Answer (“Ans.,” mailed November 12, 2009),
and Final Rejection (“Final Rej.,” mailed April 16, 2009).
Xiao Zhang (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2
final rejection of claims 1-15 and 33-43, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a method and system for identifying products 6
available for sale based on a configured order. Specification ¶ 0001. 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A computer-implemented method of cross-selling products 11
based on a system for sale to a customer, comprising: 12
[1] for each selection by a user of a product from a product 13
information source, receiving an order representing a state of a 14
system based on the user selections; and 15
[2] in response to receiving each order configuring one or 16
more computer processors of an analyzer with instructions that 17
transform the one or more computer processors into cross-sell 18
logic configured to perform an operation comprising: 19
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[a] determining whether the order qualifies for one or 1
more cross-sell products; and 2
[b] if so, presenting the one or more cross-sell 3
products to the user, wherein each of the one or more cross-sell 4
products presented to the user is offered at a discount based on 5
the state of the system, and wherein each of the one or more 6
cross-sell products presented to the user is determined to be 7
compatible with the state of the system. 8
9
The Examiner relies upon the following prior art: 10
Henson US 6,167,383 Dec. 26, 2000
11
Claims 1-15 and 33-36 stand rejected under 35 U.S.C. § 102(b) as being 12
anticipated by Henson. 13
Claims 37-43 stand rejected under 35 U.S.C. § 103(a) as unpatentable 14
over Henson. 15
16
ISSUES 17
The issue of whether the Examiner erred in rejecting claims 1-15 and 33-18
36 under 35 U.S.C. § 102(b) as being anticipated by Henson turns on 19
whether Henson describes the features of limitation [2][b] of claim 1 and as 20
they are recited in claim 33. 21
The issue of whether the Examiner erred in rejecting claims 37-43 under 22
35 U.S.C. § 103(a) as unpatentable over Henson turns on whether a person 23
with ordinary skill in the art would have been motivated to modify Henson. 24
25
Appeal 2010-004080
Application 10/684,125

4
FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Henson 5
01. Henson is directed to an online store user interface for enabling 6
custom configuration, pricing, and ordering of a computer system 7
via the Internet. Henson 1:18-21. Henson is concerned with the 8
improved accuracy, reliability, and overall quality of an online 9
store and the buying experience for customers. Henson 2:55-58. 10
02. Henson describes that the online store includes a welcome page, 11
a configurator page, a cart, a checkout, and a thank you page. 12
Henson 5:6-7. A customer can build a configured machine by 13
selecting options listed on the configuration screen. Henson 6:18-14
21. Merchandising recommendations are provided to the 15
customer during the customer’s custom building of a particular 16
system. Henson 7:22-25. Merchandising recommendations are 17
provided in response to particular choices being made by the 18
customer during the configuring of a custom computer system. 19
Henson 7:31-36. The shopping cart further includes space for 20
displaying merchandising messages to a customer in order to take 21
advantage of up-sell and cross-sell opportunities. Henson 9:40-22
44. The entry of a text message in the store database triggers the 23
presentation of the merchandising or information content on the 24
shopping cart web page. Henson 9:44-47. Merchandising 25
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recommendations in the shopping cart can be provided based upon 1
the contents of the shopping cart, where there is something that 2
could be recommended as an upgrade or a cross-sell. Henson 3
9:56-60. Passive messaging can also be used, where passive 4
messages are displayed during a particular time or any other 5
information not directly connected to the contents of the shopping 6
cart. Henson 10:1-8. During checkout, a customer is asked 7
whether the customer is a previous customer and what that 8
customer’s customer number is. Henson Fig. 7. 9
03. The system configuration page includes McAfee VirusScan 3.1 10
at no additional charge. Henson Fig. 3A. McAfee VirusScan 3.1 11
is specific to the operation system, such as Microsoft Windows 95 12
or 98. Henson Fig. 3A. A view all system options view lists the 13
price of the corresponding products in relation to each other. 14
Henson Fig. 5. For example, the cost of SDRAM is organized by 15
quantity and price in relation to the cost of 96MB. Henson Fig. 5. 16
04. The system further includes both passive and active validation, 17
where passive validation is the validation module knowing that 18
specific options don’t work together whereas active validation 19
cross-checks the options of the configuration and indicates the 20
occurrence of a problem when a problem is detected. Henson 21
10:56-65. Validation includes a cross-checking of a combination 22
of options and determines whether a particular combination of 23
options can be physically built. Henson 8:34-37. 24
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ANALYSIS 1
Claims 1-15 and 33-36 rejected under 35 U.S.C. § 102(b) as being 2
anticipated by Henson 3
The Appellant first contends that Henson fails to describe presenting one 4
or more cross-sell products to a user, wherein each of the one or more cross-5
sell products presented to the user is offered at a discount based on the state 6
of the system, as required by limitation [2][b] of claim 1 and as recited in 7
claim 33. App. Br. 12-13 and 15. The Appellant argues that the Examiner is 8
relying on inherency in rejecting this claim limitation. App. Br. 13. The 9
Appellant also argues that the Examiner’s definition of “discount price” is 10
flawed. Reply Br. 3. We disagree with the Appellant. Limitation [2][b] 11
only requires presenting a cross-sell product to the user based on the system 12
and offering that cross-sell product at a discount. The plain and ordinary 13
meaning of a “discount” encompasses any price or value that is less than the 14
originally offered price. There is no requirement in the claim language that 15
precludes a construction of a discount from being free or at no cost. Henson 16
describes that McAfee VirusScan is offered to a user when the user has 17
selected a system with the corresponding operating system, such as 18
Microsoft Windows 95 or 98. FF 03. In this example, McAfee VirusScan is 19
a cross product to the configured computer system. Henson also describes 20
that McAfee is offered for no additional charge to the user. FF 03. As such, 21
Henson describes that this software program is offered at a discount within 22
the plain and ordinary meaning of the term discount. As such, Henson 23
explicitly describes this limitation and the Examiner is not relying on 24
inherency. The Appellant also argues that the Examiner mistakenly equates 25
a discount price with being entirely free because a free item has no price. 26
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However, claims do not require any specific price to be associated with the 1
discount. Since Henson describes software that is offered at no additional 2
cost, the Examiner’s construction of a discount to encompass no additional 3
charge to a user is both reasonable and consistent with the claimed 4
invention. 5
The Appellant also contends that Henson fail to describe that each of the 6
one or more cross-sell products presented to the user is determined to be 7
compatible with the state of the system, as also required by limitation [2][b] 8
of claim 1. The Appellant argues that since Henson does not describe this 9
feature, the Examiner is relying on inherency in rejecting this claim 10
limitation. App. Br. 14. We disagree with the Appellant. Henson describes 11
that the system uses both passive and active validation. FF 04. Active 12
validation cross-checks the options of the configuration and indicates the 13
occurrence of a problem when a problem is detected. FF 04. Henson further 14
describes a validation that cross-checks the combination of options and 15
determines whether a particular combination is structurally compatible with 16
the system. FF 04. As such, Henson describes validating that cross-sell 17
products are determined to be compatible or incompatible with the state of 18
the system. 19
The Appellant further contends that the Examiner has failed to address 20
the limitation determining a discount value “based on the user selections of 21
one or more component products” and therefore has failed to properly 22
establish the rejection of claim 33. App. Br. 14. We disagree with the 23
Appellant. Claim 1 is distinguished from claim 33 on this limitation because 24
claim 1 requires the discount is “based on the state of the system.” 25
However, the Specification consistently uses the term “state of the system” 26
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to encompass the configuration of the system based on product selections. 1
Specification ¶ 0009. As such, the scope of the limitations “based on the 2
user selections of one or more component products” and “based on the state 3
of the system” is functionally the same. As discussed supra, Henson 4
describes determining a discount based on the state of the system or a user’s 5
selection of components. As such, the Examiner’s rejection of this claim 6
limitation is sustained. 7
The Appellant additionally contends that Henson fails to describe “one 8
or more software wizards to assist the user in configuring the configured 9
system” as required by claim 33. App. Br. 15. The Appellant specifically 10
argues that the term “software wizard” refers to a user interface configured 11
to aid a user in performing a defined task. App. Br. 15. We disagree with 12
the Appellant. The Specification does not to provide a specific definition for 13
the term “software wizard” and the claims fail narrow the definition of a 14
“software wizard.” The Examiner construed this term to encompass the 15
functional steps performed by software modules to configure, price, validate, 16
and cross-sell merchandizing. Ans. 6. This construction of the term 17
“software wizard” is both reasonable and consistent with the Specification. 18
Henson explicitly describes assisting a user in product selections by enabling 19
a user to select or configure a product, provides the price of each of the 20
components, validates whether the selected components are compatible, and 21
sends messages to user for cross-sell and up-sell options. FF 02-04. As 22
such, the Appellant’s argument is not found to be persuasive. 23
24
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Claims 37-43 rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Henson 2
The Appellant contends that there is no motivation to modify Henson to 3
include a feature to receive a second configured system based on a previous 4
order from the same user. App. Br. 16-17. We disagree with the Appellant. 5
Henson describes maintaining a customer set list and assigning previous 6
customers to a specific customer number. FF 02. As such, Henson 7
implicitly describes associating orders to the customer and maintaining the 8
customer’s information in a database. Henson is concerned with the overall 9
buying experience for a customer and a feature to allow a customer to repeat 10
a previously submitted order or base a new order on a previously submitted 11
order enhances the customer’s buying experience. As such, a person with 12
ordinary skill in the art would have been motivated to modify Henson to 13
include this feature in order to enhance the buying experience. Therefore, a 14
person with ordinary skill in the art would have found it obvious to modify 15
Henson. 16
17
CONCLUSIONS OF LAW 18
The Examiner did not err in rejecting claims 1-15 and 33-36 under 35 19
U.S.C. § 102(b) as being anticipated by Henson. 20
The Examiner did not err in rejecting claims 37-43 under 35 U.S.C. 21
§ 103(a) as unpatentable over Henson. 22
23
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DECISION 1
To summarize, our decision is as follows. 2
• The rejection of claims 1-15 and 33-36 under 35 U.S.C. § 102(b) as 3
being anticipated by Henson is sustained. 4
• The rejection of claims 37-43 under 35 U.S.C. § 103(a) as 5
unpatentable over Henson is sustained. 6
7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2007). 10
11
AFFIRMED 12
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18
MP 19
Address 20
IBM CORPORATION, INTELLECTUAL PROPERTY LAW 21
DEPT 917, BLDG. 006-1 22
3605 HIGHWAY 52 NORTH 23
ROCHESTER MN 55901-7829 24