Ex Parte Chauvin et al

Patent Trial and Appeal BoardOct 3, 2012

09944549 (P.T.A.B. Oct. 3, 2012)

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. 09/944,549 08/31/2001 Lou Chauvin 83304BF-P 3066 1333 7590 10/03/2012 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER VYAS, ABHISHEK ART UNIT PAPER NUMBER 3691 MAIL DATE DELIVERY MODE 10/03/2012 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 PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte LOU CHAUVIN, HOWARD E. BUSSEY, 7 PHILIP GERSKOVICH, MARK S. COOK, 8 CHRISTOPHER M. DOBBS, DALE F. McINTYRE, 9 and THOMAS N. BERARDUCCI 10 ___________ 11 12 Appeal 2011-007999 13 Application 09/944,549 14 Technology Center 3600 15 ___________ 16 17 18 Before ANTON W. FETTING, BIBHU R. MOHANTY, and 19 MEREDITH C. PETRAVICK, Administrative Patent Judges. 20 FETTING, Administrative Patent Judge. 21 DECISION ON APPEAL 22 Appeal 2011-007999 Application 09/944,549 2 STATEMENT OF THE CASE1 1 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed July 21, 2009) and the Examiner’s Answer (“Ans.,” mailed October 7, 2010). Lou Chauvin, Howard E. Bussey, Philip Gerskovich, Mark S. Cook, 2 Christopher M. Dobbs, Dale F. McIntyre, and Thomas N. Berarducci 3 (Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection of 4 claims 1-22, the only claims pending in the application on appeal. We have 5 jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 6 The Appellants invented a way of organizing, sharing, managing and 7 ordering of digital images and/or image products over a communication 8 network from a plurality of different providers that offer the same and/or 9 different goods and/or services (Specification 1. Field of the Invention). 10 An understanding of the invention can be derived from a reading of 11 exemplary claim 1, which is reproduced below [bracketed matter and some 12 paragraphing added]. 13 1. A method of 14 selecting a digital photographic service provider 15 from a plurality of different service providers 16 and 17 providing a photographic image service 18 with respect to at least one digital image 19 located at a user location 20 remote from said selected 21 photographic service provider, 22 comprising: 23 a) providing a services directory 24 on a server 25 accessible over a communication network 26 which includes entries 27 Appeal 2011-007999 Application 09/944,549 3 for a plurality of different unrelated service 1 providers; 2 b) said user providing 3 a criterion 4 to said server over said communication 5 network 6 for selection of a service provider; 7 c) automatically providing the user with a list 8 of one or more of said plurality of unrelated different 9 service providers 10 based on said criterion 11 for display on a user display device; 12 d) said user selecting 13 one of said plurality of different service providers 14 from said list; 15 e) providing a request for a desired service 16 by said user 17 to the selected service provider; 18 and 19 f) providing of said desired service 20 by said selected service provider. 21 The Examiner relies upon the following prior art: 22 Jury US 5,918,054 Jun. 29, 1999 Shiota US 6,324,521 Bl Nov. 27, 2001 Takemoto US 2002/0036696 Al Mar. 28, 2002 Nguyen US 2003/0005132 Al Jan. 2, 2003 Claims 1-5, 10, 11, 13, and 17-22 stand rejected under 35 U.S.C. 23 § 103(a) as unpatentable over Shiota and Nguyen. 24 Claims 6-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable 25 over Shiota, Nguyen, and Jury. 26 Claims 12 and 15 stand rejected under 35 U.S.C. § 103(a) as 27 unpatentable over Shiota, Nguyen, and Takemoto. 28 Appeal 2011-007999 Application 09/944,549 4 Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as 1 unpatentable over Shiota, Nguyen, and Official Notice. 2 ISSUES 3 The issues of obviousness turn primarily on whether the references 4 describe some criterion for selecting a provider. 5 FACTS PERTINENT TO THE ISSUES 6 The following enumerated Findings of Fact (FF) are believed to be 7 supported by a preponderance of the evidence. 8 Facts Related to the Prior Art 9 Shiota 10 01. Shiota is directed to a network photograph service system 11 which can provide a prompt service to a customer without losing 12 the advantage of a network photograph service system. Shiota 13 1:56-61. 14 02. Shiota’s laboratory server has a communication ability via a 15 network and is installed in a laboratory having a picture printer, 16 and a center server is installed in a service center which receives a 17 printing service order via the network. The center server carries 18 out processing comprising the steps of storing a picture recorded 19 by a customer of each laboratory as digital image data, making the 20 digital image data accessible on the network, selecting one 21 laboratory to output a print among the laboratories in response to 22 order information transferred from the customer via the network, 23 and providing a printing service requested by the order to the 24 Appeal 2011-007999 Application 09/944,549 5 customer by transmitting instructing information to the laboratory 1 server installed in the selected laboratory. Shiota 1:62 – 2:9. 2 03. If a customer creates an order by inputting information in a 3 predetermined screen, the order may be converted automatically 4 into the predetermined format of the order information and 5 transmitted to the center server. Shiota 2:29-33. 6 04. "Selecting one laboratory to output a print among the 7 laboratories in response to order information" means to select a 8 laboratory having special equipment as the print outputting 9 laboratory, when the printing service requested by the order needs 10 special equipment to provide the service, such as generation of a 11 picture postcard or a creative calendar. Shiota 3:5-10. 12 Nguyen 13 05. Nguyen is directed to creation and distribution of services over 14 data networks and coordinating access to these services and 15 accessing these services. Nguyen ¶ 0001. 16 06. From the point of view of a user (i.e., a consumer of a data 17 network service), obtaining a particular service, either from a local 18 service provider or a remote service provider, is simply a matter of 19 instructing the user's network-connected device to send a query to 20 a local directory service utility for the particular service. Nguyen 21 ¶ 0040. 22 Appeal 2011-007999 Application 09/944,549 6 ANALYSIS 1 Initially we note that claim 1 reads on performing an online query for 2 digital photo kiosks and going to one to use it. We are not persuaded by the 3 Appellants’ argument that neither reference describes: (1) that the user 4 provide a criterion to the service directory for obtaining a list of different 5 service providers; (2) that the output list is provided in response to a 6 criterion supplied by the user; or (3) providing of a list of service providers 7 in response to the criterion provided by the user. Appeal Br. 5-8. As the 8 Examiner found at Answer 3-5 and 9-10, the user provides an order number 9 as a criterion for obtaining a list on a single service provider. While this is a 10 somewhat degenerate list, limitation (c) recites “one or more” entries. A 11 single entry is clearly within this scope. The nature of the criterion and how 12 it is applied are not further narrowed in the claim. The remaining claims are 13 argued on the basis of claim 1’s patentability. 14 CONCLUSIONS OF LAW 15 The rejection of claims 1-5, 10, 11, 13, and 17-22 under 35 U.S.C. 16 § 103(a) as unpatentable over Shiota and Nguyen is proper. 17 The rejection of claims 6-9 under 35 U.S.C. § 103(a) as unpatentable 18 over Shiota, Nguyen, and Jury is proper. 19 The rejection of claims 12 and 15 under 35 U.S.C. § 103(a) as 20 unpatentable over Shiota, Nguyen, and Takemoto is proper. 21 The rejection of claims 14 and 16 under 35 U.S.C. § 103(a) as 22 unpatentable over Shiota, Nguyen, and Official Notice is proper. 23 DECISION 24 The rejection of claims 1-22 is affirmed. 25 Appeal 2011-007999 Application 09/944,549 7 No time period for taking any subsequent action in connection with 1 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2 § 1.136(a)(1)(iv) (2011). 3 AFFIRMED 4 5 6 Klh 7