Ex Parte BayneDownload PDFPatent Trial and Appeal BoardJun 12, 201411868594 (P.T.A.B. Jun. 12, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation