Ex Parte Connors et alDownload PDFPatent Trial and Appeal BoardAug 19, 201611553164 (P.T.A.B. Aug. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111553, 164 10/26/2006 Christopher M. Connors 33438 7590 08/23/2016 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 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. T00025-1C 3321 EXAMINER FADOK,MARKA ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 08/23/2016 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): tmunoz@tcchlaw.com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER M. CONNORS, ANDREW F. MILLER, JOSHUAP. WALSKY, JAMES SINGH, ANDREW LEAMON, and JEFFREY R. VANDYKE Appeal2014-003739 Application 11/553, 164 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed March 15, 2013) and Reply Brief ("Reply Br.," filed February 10, 2014), and the Examiner's Answer ("Ans.," mailed December 9, 2013), and Final Action ("Final Act.," mailed February 15, 2012). Appeal2014-003739 Application 11/553, 164 Christopher M. Connors, Andrew F. Miller, Joshua P. Walsky, James Singh, Andrew Leamon, and Jeffrey R. VanDyke (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 29, 30, 32, 33, 34, 36, 37, 39, 40, 41, and 45, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a way of facilitating commercial transactions over a wide area data network. Specification 1: 13-15. An understanding of the invention can be derived from a reading of exemplary claim 29, which is reproduced below (bracketed matter and some paragraphing added). 29. A method comprising: performing using a processor of a first computer system: [1] receiving base-product model data from a memory, wherein the base-product model data represents a configuration by a manufacturer of a base-product model; [2] receiving first data from a second computer system, wherein the first data indicates a configuration, and by a user, of a second product having at least one or more attributes the first data represents a configuration of the second product that was previously stored by the user in a memory; 2 Appeal2014-003739 Application 11/553, 164 [3] processing and the base-product model data and first data for concurrently displaying on a display of the second computer system an identification of the base product model, an identification of the second product, and one or more of attributes of each of the base- product model and the second product; [ 4] providing to the second computer system the data for concurrently displaying on the display of the second computer system identification of the base product model, identification of the second product, and one or more of the attributes of each of the base- product model and the second product. The Examiner relies upon the following prior art: Ellis US 7,353,192 Bl Apr. 1, 2008 Claims 29, 30, 32, 33, 34, 36, 37, 39, 40, 41, and 45 stand rejected under 35 U.S.C. § 102(e) as anticipated by Ellis. 3 Appeal2014-003739 Application 11/553, 164 ISSUES The issues of anticipation tum primarily on the weight to be afforded labels attached to data that are received and displayed and to the extent weight is afforded, whether Ellis describes data within the scope of the labels recited in the claims. 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 Claim Construction 01. The disclosure contains no lexicographic definition of "base- product." Facts Related to Appellants' Disclosure 02. The Specification contains no recitation of a base-product. The drawings similarly contain no recitation of a base-product, although the phrase "base model" occurs in Figs. 19, 21, and 22A. Facts Related to the Prior Art Ellis 03. Ellis is directed to permitting a purchaser to view a product over a network before making a purchase decision. Ellis 1 :35-38. 04. Ellis describes a product configuration display system to display a three-dimensional representation of a first and second product, the representation of the first product capable of being 4 Appeal2014-003739 Application 11/553, 164 modified by a representation of the second product to create a three-dimensional representation of a combination product. The product display module is configured to receive a request to change a product configuration by modifying the representation of the first product by the representation of the second product. In one aspect, the first product is a vehicle and the second product is an aftermarket product. In another aspect, the first product is a vehicle including at least one aftermarket product and the second product is an aftermarket product. The product display screen includes a manufacturer suggested retail price and an adjusted price. Ellis 3:46-4:6. 05. Ellis describes clicking on a vehicle selection box to display a second web page that includes a product display area, a configuration panel, and a product description area. Ellis 16:5-12. 06. Ellis describes a product description area displaying the Manufacturer's Suggested Retail Price ("MSRP") and the Adjusted Price of a vehicle. The MSRP is the base price of the vehicle as delivered from the factory without any aftermarket options. The Adjusted Price is the price of the vehicle as currently configured by the potential buyer. Ellis 16: 61---6 7. 07. Ellis describes viewing the vehicle configured according to the buyer's desires. The configuration panel displays a list of selectable options for the displayed vehicle. The potential buyer can request to configure a Toyota 4Runner by installing a grille guard by selecting the grille guard option in the configuration 5 Appeal2014-003739 Application 11/553, 164 panel as illustrated in FIG. 9. The product display module displays a Toyota 4Runner with the grille guard installed in the product display area. Ellis 20:35-50. 08. Ellis describes configuring another vehicle. The potential buyer can select the start over option, after which the product display module displays the first web page as illustrated in FIG. 2. The potential buyer can then select the Corvette vehicle selection box 202 to request the product display module to display a perspective view of the Corvette as generally illustrated in FIG. 10. The potential buyer may then proceed with configuring the Corvette. Ellis 21:57-22: 1. 09. Ellis describes selecting one or more vehicles to display in a virtual showroom 1202 in order to perform a side-by-side vehicle comparison. For example; the potential buyer can request the product display module to display the second 4Runner and the Corvette in the virtual showroom 1202. FIG. 14 generally illustrates a web page illustrating product perspective views of the first 4Runner, second 4Runner, and the Corvette as requested by the potential buyer. Ellis 22:66-23:7. ANALYSIS Claims 36, 37, 39, 40, 41, and 45 are directed to an apparatus, whereas claims 29, 30, 32, 33, and 34 are directed to a method. 6 Appeal2014-003739 Application 11/553, 164 As to structural inventions, such claims must be distinguished from the prior art in terms of structure rather than function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus as disclosed must be capable of performing the claimed function. Id. at 1478. When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). In some circumstances, generic structural disclosures may be sufficient to meet the functional requirements, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376- 77 (Fed. Cir. 2010)). Also, a structural invention is not distinguished by the work product it operates upon, such as data in a computer. "[E]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of []material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 940 (CCPA 1963). Claim 36 recites two structural components, viz. a processor and memory. As every general purpose computer has those components, Ellis 7 Appeal2014-003739 Application 11/553, 164 anticipates at least to that degree. Claim 36 further recites code for receiving two sets of data, viz. something representing a base-model configuration and something that represents another configuration, and processing these data for display. As Ellis shows such a display in its Fig. 14, the processing and data acquisition necessary for such a display are inherent. In a structural claim, how the data are mentally perceived, such as being of a base model as contrasted with some other model, does not alter the structure. Ellis shows the capacity for performing the steps the processor is recited as performing in claim 36, and so Ellis anticipates the structural claims. Claim 29 recites the four steps the processor of claim 3 6 is to perform, viz., receiving X and Y, processing X and Y along with Z for display, and performing the display. Xis labeled as base-product model data representing a configuration by a manufacturer of a base-product model, Y is labeled as first data indicating a configuration of a second product having at least one or more attributes, and Z is labeled as an identification of the base product model, an identification of the second product, and one or more of attributes of each of the base-product model and the second product. Thus the claim is really directed to receiving and concurrently displaying data. Nothing in the claim depends on or enforces the perceptual labels the claim suggests. Mental perceptions of what data represent are non- functional and given no weight. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any new and unobvious functional relationship between the printed matter and the substrate.'") (citation omitted). See also In re Lowry, 32 F .3d 1579, 1583 (Fed.Cir.1994) (Describing printed matter as "useful and 8 Appeal2014-003739 Application 11/553, 164 intelligible only to the human mind.") (quoting In re Bernhart, 417 F .2d 1395, 1399 (CCPA 1969)). Data labels are just examples of such mental perceptions. Data, being a succession of binary digits, are just those digits, not perceptual labels of those digits. The binary digits may impose some functional consequence, but absent some recitation of how so, such consequence is not an issue. As Ellis again shows simultaneous display of two sets of received data, claim 29 is also anticipated. But even granting weight to such labels, the Examiner finds Ellis anticipates still. Final Act. 3--4. This is because Ellis describes simultaneously displaying an automobile that has not yet had changes made and an automobile that has had changes made. As no definition for base-model is in the originally filed disclosure, an automobile as configured before making changes is within the scope of the plain meaning of base-model, as a base is something prior to change. We are not persuaded by Appellants' argument that in Ellis, the autos are all user configured. App. Br. 8. Ellis begins with an auto without user changes to configuration. As we find supra, this is within the plain meaning of a base product. We are not persuaded by Appellants' argument that Ellis only saves user configured models. Id. Even if true, a user saved configuration devoid of any changes from the original configuration is still within the scope of a base model. To the extent Appellants are arguing that the Examiner is making an obviousness conclusion in an anticipation rejection in selecting a model 9 Appeal2014-003739 Application 11/553, 164 without modification for display, the universe of potential combinations with the side by side comparison described by Ellis is not that large, and one of ordinary skill would immediately envisage a combination including a model prior to any changes, if only as a point of reference. After all, Ellis' s equivalent of a base model is simply an auto with no change boxes checked. Thus, the equivalent of a base model is within the scope of the limited number of combinations one of ordinary skill would find in reading Ellis. CONCLUSION OF LAW The rejection of claims 29, 30, 32, 33, 34, 36, 37, 39, 40, 41, and 45 under 35 U.S.C. § 102(e) as anticipated by Ellis is proper. DECISION The rejection of claims 29, 30, 32, 33, 34, 36, 37, 39, 40, 41, and 45 is affirmed. 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)(l)(iv) (2011). AFFIRMED 10 Copy with citationCopy as parenthetical citation