Ex Parte Bayne

Patent Trial and Appeal Board

Jun 12, 2014

11868594 (P.T.A.B. Jun. 12, 2014)

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.
11/868,594 10/08/2007 Anthony Jeremiah Bayne RIN594 1391
64359 7590 06/13/2014
ANTHONY JEREMIAH BAYNE
25315 ANDREO AVENUE
LOMITA, CA 90717
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
06/13/2014 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
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY JEREMIAH BAYNE
____________

Appeal 2012-006474
Application 11/868,594
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Anthony Jeremiah Bayne (Appellant) seeks our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 10–20. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2012-006474
Application 11/868,594

2
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).1

THE INVENTION
Claims 10 and 17, reproduced below, are illustrative of the subject
matter on appeal.
10. A computer implemented method of recommending a
part of an item in a digital format to an online customer,
comprising:
identifying an item selected by an online customer for
purchase,
determining if the item selected is to be delivered via the
internet;
determining if a part of the item is available for delivery
via the internet, when the item is not to be delivered via the
internet; and
recommending to the online customer that the online
customer pay to access a part of the item selected on a website,
when the item selected is not to be delivered via the internet,
and a part of the item is available for delivery via the internet.

17. A system for providing a recommendation to an online
customer, comprising:
means for identifying an item selected by an online
customer for purchase;
means for identifying whether the item is to be delivered
via the internet; and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sep. 9, 2011) and Reply Brief (“Reply Br.,” filed Mar. 13, 2012),
and the Examiner’s Answer (“Ans.,” mailed Feb. 16, 2012).
Appeal 2012-006474
Application 11/868,594

3
means for making a recommendation to the online
customer to purchase a lesser included part of the item selected,
when the item selected is not to be delivered via the internet.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ginter US 2002/0048369 A1 Apr. 25, 2002
Combs US 2004/0194056 A1 Sep. 30, 2004
Bryar US 7,801,824 B1 Sep. 21, 2010
The following Examiner’s rejections are before us for review.
1. Claims 10–18 and 20 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Bryar.
2. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bryar, Ginter, and Combs.

ISSUE
The first issue is whether claims 10-16 are anticipated by Bryar under
35 U.S.C. § 102(e).
The second issue whether claims 17-20 meet the definiteness
requirement of 35 U.S.C. § 112, second paragraph.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Appeal 2012-006474
Application 11/868,594

4

ANALYSIS
Claims 10–16
We are not persuaded by Appellant’s arguments (App. Br. 6–14,
Reply Br. 7–15) that Bryar fails to anticipate claim 10 under 35 U.S.C.
§ 102(e).
First, we turn to the claimed identifying step. We find that Bryar
meets this step. Bryar describes that a user selects a portion of content (i.e.,
the claimed item) they will purchase with credits. Bryar, col. 7, ll. 1–6.
Further, we note that the Specification describes this step as identifying what
items are placed in shopping cart 105 (Spec. ¶ 23) and admits that
“[p]urchasing an time on-line, search engines, associated databases, ordering
process modules for accepting and processing modules, as well as online
shopping cart processes are well known to those skilled in the art”
(Spec. ¶ 17).
Next, we turn to the claimed first recited determining step. We find
that Bryar describes this step. Bryar describes an access rules database that
is used to determine whether the items can be displayed over the internet in
response to the user’s request. Bryar, col. 9, ll. 23–56. The access rules
include a limit on the amount of content that can be displayed to the user.
Id. Further, we note that the Specification admits that it is known that
books, movies, and music may be purchased in a digital format, which
means that it is capable of being delivered via the internet, and that e-books
can be delivered over the internet immediately after purchase. See Spec.
¶ 4–5.
Appeal 2012-006474
Application 11/868,594

5
Finally, we turn to the second recited determining step and the
recommending step. These steps, as employed in claim 10, are conditional.
The second recited determining step is conditioned upon a previous
determination that the item will not be delivered via the internet. The
second recited determining step is conditioned upon: 1) the previous
determination that the item will not be delivered via the internet and 2) a
previous determination that a part of the item is available for delivery via the
internet.
During examination, claims are given their broadest reasonable
interpretation. See In re Am. Acad. Of Sci. Tech. Ctr., 368 F.3d 1359, 1364
(Fed. Cir. 2004). Under the broadest reasonable scenario, these conditional
steps would not be invoked and, therefore, it is not necessary for the prior art
to describe these limitations in order to anticipate claim 10. In other words,
the broadest reasonable interpretation of the method of claim 10
encompasses a method where the item is determined to be deliverable via
the internet in the first determining step. In which case, the second recited
determining step and the recommending step are not invoked. This is
consistent with the Specification which describes such a method in
paragraph 23.
Therefore, because Bryar describes the claimed method when it is
determined that the item will be delivered via the internet, Bryar anticipates
claim 10.
We designate our affirmance as a NEW GROUND OF REJECTION
as our rationale differs from that Examiner’s rationale. Appellant did not
provide separate arguments for dependent claims 2–16, and therefore, these
claims will stand of fall with independent claim 1. See 37 C.F.R.
Appeal 2012-006474
Application 11/868,594

6
§ 41.37(c)(1)(vii). Accordingly, the rejection of claims 10–16 under 35
U.S.C. § 102(e) as being anticipated by Bryar is affirmed.

Claims 17–19
As discussed below, independent claim 17 is indefinite under 35
U.S.C. § 112, second paragraph. We, therefore, pro forma reverse the
Examiner’s rejections of claims 17–19. The claims on appeal must be
reasonably understood without resort to speculation. Presently, speculation
and conjecture must be utilized as the claims on appeal do not adequately
reflect what the disclosed invention is. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.)
Accordingly, the rejections of claims 17, 18, and 20 under 35 U.S.C.
§ 102(e) as being anticipated by Bryar and claim 19 under 35 U.S.C.
§ 103(a) as being obvious over Bryar, Ginter, and Combs are reversed pro
forma.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claim 17. Although we exercise our discretion in entering a new ground
of rejection for independent claim 17, no inference should be drawn from
our failure to exercise that discretion with respect to the remaining claims.
Upon any further prosecution, we leave it up to the Examiner to evaluate the
remaining claims.
Appeal 2012-006474
Application 11/868,594

7
Independent claim 17 recites limitations in means-plus-function
format. Specifically, claim 17 recites “means for identifying whether the
item is to be delivered via the internet.” 35 U.S.C. § 112, sixth paragraph,
governs the scope and meaning of means-plus-function claim limitations. 35
U.S.C. § 112, sixth paragraph, provides:
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
shall be construed to cover the corresponding
structure, material, or acts described in the
specification and equivalents thereof.
(emphasis added). For a computer-implemented means-plus-function claim
limitation under 35 U.S.C. § 112, sixth paragraph, the specification must
disclose a specific algorithm used by the computer to perform the recited
function. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Techs., Inc., 521
F.3d 1328, 1333 (Fed. Cir. 2008). “[T]he corresponding structure for a
§ 112 [paragraph] 6 claim for a computer-implemented function is the
algorithm disclosed in the specification.” Id. (citing Harris' Corp. v.
Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)).
In the Appeal Brief, Appellant points to items 107 and 108 of Figure 1
and page 5, line 24 thru page 6, line 22 as describing the corresponding
structure. App. Br. 5. Item 107 depicts “external components” and item 108
depicts “recommendation service components.” See Spec. ¶ 21; Fig. 1.
Neither these cited portions nor the remainder of the Specification, however,
describe an algorithm for identifying whether the item is to be delivered via

2 Page 5, line 24 thru page 6, line 2 of the Specification is paragraph 21 of
the Specification.
Appeal 2012-006474
Application 11/868,594

8
the internet. “[I]n the absence of structure disclosed in the specification to
perform those functions, the claim limitation would lack specificity,
rendering the claim as a whole invalid for indefiniteness under 35 U.S.C.
§112 ¶ 2.” Aristocrat Techs. at 1231 (citing In re Donaldson, 16 F.3d 1189,
1195 (Fed. Cir. 1994) (en banc)).
Accordingly, we reject claim 17 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim

DECISION
The Examiner’s decision to reject claims 10–16 is affirmed. We
designate our affirmance as a NEW GROUND OF REJECTION. The
Examiner’s decision to reject claims 17–20 is reversed. We enter a NEW
GROUND OF REJECTION of claims 10–20 pursuant to 37 C.F.R.
§ 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 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.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS 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
Appeal 2012-006474
Application 11/868,594

9
examiner, in which event the prosecution will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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

mls