Ex Parte Childress et al

Patent Trial and Appeal BoardSep 24, 2012

12119226 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RHONDA L. CHILDRESS, PAMELA ANN NESBITT, and ORI POMERANTZ 1 ____________________ Appeal 2011-005204 Application 12/119,226 Technology Center 3600 ____________________ Before, JOSEPH A. FISCHETTI, KEVIN F. TURNER, and MICHAEL W. KIM, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE2 Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 2, 4, 7-10, and 12-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 International Business Machines Corp., is the real party in interest. 2 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed August 16, 2010) and Reply Br. (“Reply Br.,” filed December 15, 2010), and the Examiner’s Answer (“Ans.,” mailed November 22, 2010). Appeal 2011-005204 Application No. 12/119,226 2 THE INVENTION Appellants’ disclosure relates to a method and system for selecting items of clothing for particular weather conditions and for particular cultural settings. (Spec. 1, ll. 5-7.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for selecting articles of clothing comprising the steps of: storing a created user profile in a database; storing cultural rules in a database these rules describing articles of clothing that are acceptable to wear and articles of clothing that are not acceptable to wear in an identified culture; receiving a query at a computing device from a user requesting a search of the requesting user’s profile, the search of the user profile comprising identifying a specific culture related to the user request, applying rules from the specified culture to clothing items in the user profile, identifying clothing items that match the search criteria and comply with specified cultural rules; storing clothing article matches in a temporary storage medium; generating a response to the query based on search results; and displaying the generated response on the computing device. (App. Br., Claims Appendix 8.) Appeal 2011-005204 Application No. 12/119,226 3 PRIOR ART REJECTION The prior art references relied upon by the Examiner in rejecting the claims are: Devitt 7,346,561 B1 Mar. 18, 2008 Van Overveld 2002/0045959 A1 Apr. 18, 2002 Kolesnychenko 2007/0225859 A1 Sep. 27, 2007 The Examiner rejected claims 1, 2, 4, 7-9, 10, 12-14, and 15-17 under 35 U.S.C. § 103(a) as unpatentable over Devitt, Kolesnychenko, and Van Overveld3. Additionally, the Examiner rejected claims 18-20 under 35 U.S.C. § 103(a) as unpatentable over Devitt and Kolesnychenko. (Ans. 3.) ISSUE4 Does the combination of Devitt, Kolesnychenko, and Van Overveld teach or suggest a “ temporary storage medium,” as generally recited by independent claims 1, 10, and 15, such that, it renders obvious the subject matter of claims 1, 2, 4, 7-9, 10, 12-14, and 15-17 under 35 U.S.C. § 103(a)? Does the combination of Devitt and Kolesnychenko teach or suggest the subject matter of claims 18-20 under 35 U.S.C. § 103(a)? 3 We note that claims 10 and 12-17 were included in this rejection, per the Examiner’s Answer, and the modified rejection was asserted to not be a new grounds of rejection (Ans. 3), where Appellants appear to acknowledge the same. (Reply Br. 2.) 4 We have considered in this decision only those arguments that Appellants actually raised in the Briefs. Arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-005204 Application No. 12/119,226 4 FINDINGS OF FACT 1. Appellants identify that “[i]f in step 720, there are clothing items that match the search criteria, step 724 can temporarily store these matches” provides support for a “ temporary storage medium.” (Spec. 13, ll. 10-11.) 2. Appellants’ Specification describes that its system is implemented on a “PDA type device or other electronic device,” or computer terminal capable of accessing a communication network (e.g., Internet). (P. 7, l. 19 – p. 8, l. 2; See also Fig. 4.) 3. Van Overveld is directed to a method and system for generating a recommendation for a selection of a piece of clothing. (¶¶ [0001] - [0002].) 4. Van Overveld describes a computer system 120 with memory 121 and a read/write smart card 320. (¶¶ [0014], [0071].) 5. Van Overveld states: clothes are then combined into matching sets, for example by combining garments with matching colors and selecting for each set at least a pair of trousers and a shirt. While combining clothes, the recommendation unit 303 can apply rules that provide constraints on combinations, such as the rule on combining blue jeans with flannel shirts. The matching sets are then fed to the rendering system 200, which presents them to the user. (¶ [0097]; See also (¶¶ [0074] - [0075].) Appeal 2011-005204 Application No. 12/119,226 5 ANALYSIS Claims 1, 2, 4, 7-9, 10, 12-14, and 15-17 rejected under 35 U.S.C. § 103(a) as unpatentable over Devitt, Kolesnychenko, and Van Overveld. Independent claims 1, 10, and 15 Appellants argue that the combination of Devitt, Kolesnychenko, and Van Overveld fails to teach or suggest “a temporary storage,” as generally recited by independent claim 1. (App. Br. 6; Reply Br. 3.) Independent claims 10 and 15 recite a similar limitation. To support this argument, Appellants assert that the smart card described in Van Overveld is not used as a temporary storage medium. (Reply Br. 4.) We cannot agree. While Appellants may be correct that Van Overveld does not explicitly disclose that its optional smart card is used as a temporary storage medium, we nevertheless find that Van Overveld’s read/write smart card (FF 4) addresses the “temporary storage medium” recited by claims 1, 10, and 15. Appellants’ Specification is silent as to any special definition for a “temporary storage medium,” and as such, we find that a “temporary storage medium,” as presently claimed, reads on any non-permanent storage medium, including the read/write smart card 320 and memory 121 disclosed by Van Overveld. (FF 1, 4.) See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“[d]uring examination [of a patent application, a pending claim is] given [the] broadest reasonable [construction] consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art”) (internal citation and quotations omitted). Appeal 2011-005204 Application No. 12/119,226 6 Furthermore, Van Overveld describes that its recommendation unit applies rules that provide constraints on clothing combinations in order to generate a matching set of clothes. (FF 3, 5.) These generated results are then rendered to a user’s display (FF 5), which one of ordinary skill in the art would appreciate requiring a temporary storage medium for processing. An invention is not patentable under 35 U.S.C. § 103 if it is obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Accordingly, we are not persuaded by Appellants’ argument, and as such, we sustain the Examiner’s rejection of claims 1, 10, and 15 under 35 U.S.C. § 103(a) as unpatentable over Devitt, Kolesnychenko, and Van Overveld. Dependent claims 2, 4, 7-9, 12-14, 16, and 17 Appellants do not separately argue claims 2, 4, 7-9, 12-14, 16, and 17, which depend from independent claims 1, 10, and 15, respectively, and so we sustain the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over Devitt, Kolesnychenko, and Van Overveld for the same reasons we found as to claims 1, 10, and 15 supra. Claims 18-20 rejected under 35 U.S.C. § 103(a) as unpatentable over Devitt and Kolesnychenko. Appellants do not substantively argue claims 18-20 (Reply Br. 2), and so we sustain the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over Devitt and Kolesnychenko for the same reasons we found as to claims 1, 2, 4, 7-9, 10, 12-14, and 15-17 rejected under 35 U.S.C. Appeal 2011-005204 Application No. 12/119,226 7 § 103(a) as unpatentable over Devitt, Kolesnychenko, and Van Overveld supra. CONCLUSION We conclude the combination of Devitt, Kolesnychenko, and Van Overveld teaches or suggests a “ temporary storage medium,” as generally recited by independent claims 1, 10, and 15, and as such, renders obvious the subject matter of claims 1, 2, 4, 7-9, 10, 12-14, and 15-17 under 35 U.S.C. § 103(a). We conclude the combination of Devitt and Kolesnychenko teaches or suggests the subject matter of claims 18-20 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejection of claims 1, 2, 4, 7-10, and 12-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1). AFFIRMED