Ex Parte Acharya et al

Patent Trial and Appeal BoardOct 17, 2016

09975831 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 09/975,831 10/11/2001 11788 7590 10/19/2016 Schwabe, Williamson & Wyatt/SFC-FC 1211 SW Fifth Ave. Suite 1900 Portland, OR 97204 FIRST NAMED INVENTOR Kamal Acharya 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. 8941-0002 3000 EXAMINER ZUKANOVICH, BRANDY A ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 10/19/2016 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): IPDocketing@SCHWABE.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAMAL ACHARYA, VINCENT TONG, PETER GREMETT, MATTHEW CRAMPTON, SRINIVAS LINGUTLA, and ELLEN F. BUTLER Appeal2014-004842 Application 09/975,831 Technology Center 3600 Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and ROBERT J. SILVERMAN, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-004842 Application 09/975,831 STATEMENT OF THE CASE 1 Kamal Acharya, Vincent Tong, Peter Gremett, Matthew Crampton, Srinivas Lingutla, and Ellen F. Butler (Appellants) seek review under 35 U.S.C. Â§ 134 of a final rejection of claims 1, 3, 8, 10, 11, 18-20, 22, and 27-36, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b ). The Appellants invented a way of online shopping from both online and offline providers. Specification 1:7-9. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method, comprising: [ 1] determining, by a computer system, identities of at least one online provider of an item; [2] determining, by the computer system, identities of at least one brick and mortar provider of the item, wherein the at least one brick and mortar provider has a physical retail outlet but no online storefront; [3] determining, by the computer system, 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed December 3, 2013) and Reply Brief ("Reply Br.," filed February 28, 2014), and the Examiner's Answer ("Ans.," mailed January 8, 2014), and Final Action ("Final Act.," mailed March 14, 2013). 2 Appeal2014-004842 Application 09/975,831 comparison information associated with the at least one online provider and the at least one brick and mortar provider, wherein the comparison information includes a price comparison of the item; [ 4] integrating, and by the computer system, the identities of the at least one online provider with the identities of the at least one brick and mortar provider into an integrated list of providers of the item, wherein the integrated list of providers comprises the comparison information; [ 5] transmitting the integrated list of providers from the computer system to a user device, wherein the identities of the at least one online provider are distinguished from the identities of the at least one brick and mortar provider in the integrated list of providers. The Examiner relies upon the following prior art: Porat Sussman Marolda US 2002/0026353 Al US 2002/0161658 Al US 2003/0009766 Al Feb.28,2002 Oct. 31, 2002 Jan.9,2003 Claims 1, 3, 8, 10, 11, 18-20, 22, 27-34, and 36 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Porat and Sussman. 3 Appeal2014-004842 Application 09/975,831 Claim 35 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Porat, Sussman, and Marolda. ISSUES The issues of obviousness tum primarily on whether the art describes identifying brick and mortar stores that do not have online storefronts. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to Appellants' Disclosure 01. The sole support for the limitation of "determining ... identities of at least one brick and mortar provider of the item, wherein the at least one brick and mortar provider has a physical retail outlet but no online storefront" is "[t]he offline providers may include the offline 'brick-&-mortar' providers, which have physical retail outlets but no Web storefront, such as local mom-&- pop stores." Spec. 4:26-5:2. 02. The Specification also describes: "The offline providers may also include the offline 'click-&-mortar' providers, which have physical retail outlets as well as Web storefront. These offline providers may allow the shoppers to trade with them either online or offline." Spec. 5:2-5. 4 Appeal2014-004842 Application 09/975,831 Facts Related to the Prior Art Porat 03. Porat is directed to providing network-based purchase information based on advertisements displaying the product. Porat, para. 1. 04. Porat describes determining product availability at online and brick and mortar merchants, but does not describe determining which brick and mortar merchants do not have an online storefront. Sussman 05. Sussman is directed to maintaining a shopping list. Sussman, para. 26. 06. Sussman describes sending a shopping list to online and brick and mortar merchants, but does not describe determining which brick and mortar merchants do not have an online storefront. ANALYSIS We are persuaded by Appellants' argument that neither reference describes limitation [ 4] of integrating, by the computer system, the identities of the at least one online provider with the identities of the at least one brick and mortar provider. App. Br. 32-34. Although both references refer to brick and mortar providers, neither describes identifying those that do not have an online storefront. Claim 1 explicitly narrows the scope of a brick and mortar provider to those vendors that have physical locations but no online storefront. The remaining independent claims have similar limitations. The Specification explicitly acknowledges that some physical 5 Appeal2014-004842 Application 09/975,831 location merchants do have such online storefronts and refers to them as click and mortar stores. As Appellants explicitly acknowledge their existence, but explicitly exclude them from claim scope, Appellants have explicitly excluded brick and mortar stores that also have online storefronts from claim scope. Simply identifying brick and mortar merchants as such is not within the scope of the claims. Accordingly, the recited identification of brick and mortar provider must be those that do not also have online storefronts. None of the references describe making such an identification. The Examiner only finds the description of a brick and mortar store and an online store, not a description of a brick and mortar store that does not have an online store. Although Examiner cites Sussman, Figure 1 and Tables 2 and 3 for describing a brick and mortar store without an online storefront, we find no such distinction by Sussman. Final Act. 5-6. CONCLUSIONS OF LAW The rejection of claims 1, 3, 8, 10, 11, 18-20, 22, 27-34, and 36 under 35 U.S.C. Â§ 103(a) as unpatentable over Porat and Sussman is improper. The rejection of claim 35 under 35 U.S.C. Â§ 103(a) as unpatentable over Porat, Sussman, and Marolda is improper. DECISION The rejection of claims 1, 3, 8, 10, 11, 18-20, 22, and 27-36 is reversed. REVERSED 6