Details:
Ex parte Byers et al.
Appeal 2010004416; Appl. No. 09/892,800; Tech. Center 3600
Decided March 25, 2011
In this appeal of an electronic commerce application, the issue was claim construction of the limitation emphasized below:
1. A method for selling products over an electronic network ... said method comprising the steps of:
[1] identifying a user;
[2] transmitting a user specific order entry form to the buyer computer, said order entry form comprising at least one user specific product, a user specific price for said at least one product, and a quantity entry field, wherein said user specific order entry form comprises a user specific purchase history form comprising all products that were purchased during a specified time period ...
(Emphasis added.)
The Examiner rejected claim 1 as obvious, relying on the primary reference for the limitation at issue. As explained in a Final Office Action:
Barnes discloses making a purchase and using a repeat from an old requisition request. The requisition request is used as a purchase order to suppliers, where the order includes products and service that the user wants to purchase. The repeat from an old requisition request can be edited to include the quantity. Such repeat from an old requisition request is considered "a user specific purchase history form comprising all products that were purchased during a specified time period."
(Internal citations omitted.)
The Applicant appealed, arguing that the "during a specified time period" limitation was not taught. Specifically, the Applicant argued that the primary reference disclosed:
an old requisition request [which] would include only those items purchased on that particular requisition request, which would require the buyer to search for and add products that were not included on the old requisition request ... Conversely, the [claimed] user specific purchase history form includes all products purchased within the time period, which allows the buyer to place an order for any combination of previously ordered products ...
The Board affirmed, and explained how the reference taught the limitation as follows:
Barnes describes that a user can repeat a previous purchase request. FF 01. The system then pre-populates a request form including all of the items from the previous request. FF 01. The repeat request provides a list of all of the items purchased during the last purchase, which is a specified time. Although the Declaration states that this is not a specified time period (Declaration ¶ 5), the claims do not narrow the scope of a specified time period, or how it is specified, and as such Barnes’ requisition is within the scope of this broadly recited feature.
(Emphasis added.)
My two cents: The Board got this one right. The claim isn't precise enough to distinguish over the reference.
I see this sort of imprecision a lot, and I call it the "mere existence" problem. As drafted, all the Examiner has to show is the mere existence of a time period for the purchase history. The claim requires nothing more.
I say this despite the presence of the qualifier "specified." Perhaps what the drafter had in mind is that the user specifies a time period, and the software generates a purchase history form for that time period. But the claim doesn't say "user specified" and I don't think "specified" alone gets you there.
The Board didn't perform explicit claim construction. But you can read the implicit construction between the lines, and I think it goes something like this. A purchase history is a list of products purchased during a particular time period – that's simply what "purchase history" means. This particular time period is also a "specified time period" in that retrieval of a purchase history requires (somebody, somehow) specifying a time period.
Therefore, the reference teaches the limitation because "the repeat request [in the reference] provides a list of all of the items purchased during the last purchase, which is a specified time."
I might rewrite the claim as:
receiving from a user a specified time period;
transmitting ... a purchase history form including all products purchased during the specified time period.
As an aside, the Examiner didn't do a great job of explaining how the "specified time period" limitation was mapped to the teachings of the reference. I spend a lot of time thinking about what the Examiner could possibly be thinking, so maybe I would have figured this one out eventually. But the process would be so much more efficient if both sides clearly explained their positions. If this Applicant had understood, perhaps he would have readily amended rather than go to appeal.
"As an aside, the Examiner didn't do a great job of explaining how the "specified time period" limitation was mapped to the teachings of the reference."
ReplyDeleteIf it's not clear from the explanation (i.e., the record), the BPAI should not be affirming the rejection. If it's not clear, the BPAI is engaging in speculation as to what the Examiner meant. If the BPAI is going to do that, they should be going with what the Applicant says what they meant by that term in the appeal brief and let prosecution history estoppel hold them to that claim construction.
>If it's not clear from the explanation
ReplyDelete>i.e., the record), the BPAI should not be
>affirming the rejection
The BPAI routinely makes findings fact that go far beyond what the Examiner has done.
I find this to be fundamentally unfair to the Applicant, but that just seems to be the way it goes.
I'll leave it to an administrative law expert to say whether or not the Board's behavior complies with the law.
No inference should be made from the facts of record in favor of the party bearing the burden of proof (in this case, the Examiner) when other reasonable conclusions are possible. In re Carreira, 189 USPQ 461, 463 (CCPA 1976).
ReplyDeleteCarreira may have touched on an issue other than claim interpretation but the general principle remains the same.
"If it's not clear from the explanation (i.e., the record), the BPAI should not be affirming the rejection."
ReplyDeleteI lulzed. Remember, failure to be clear is a petitionable matter brosensky. See In re Lovin (as in I'm lovin' it) where the CAFC declined to interpret a failure to be clear as being a challenge to a failure to have put the applicant on notice.
"I find this to be fundamentally unfair to the Applicant, but that just seems to be the way it goes. "
Whereas myself and the PTO also find this to do nothing more than give the applicant a modicum of responsibility.
"No inference should be made from the facts of record in favor of the party bearing the burden of proof (in this case, the Examiner) when other reasonable conclusions are possible."
Good thing that didn't happen in this case!
"I'll leave it to an administrative law expert to say whether or not the Board's behavior complies with the law."
ReplyDeleteI no expert, but I am a lawyer that reads the law.
Allowing the Board unfettered discretion to designate a new ground of rejection—when it relies upon facts or legal argument not advanced by the examiner—would frustrate the notice requirements of the APA. See Dickinson v. Zurko, 527 U.S. 150, 154 (1999) (stating that the PTO is an agency subject to the APA).
That was from In re Stepan Co ... decided by the Federal Circuit about 5 weeks ago. If the BPAI is bolstering a poorly-explained rejection, a new grounds should be designated.
FYI -- In re Lovin was about the sufficiency of the argument needed to meet 37 CFR 41.37 -- not relevant to the points raised here.
"find this to do nothing more than give the applicant a modicum of responsibility"
Next time, read what you have written to see if it makes sense before you hit "Post Comment."
"If the BPAI is bolstering a poorly-explained rejection, a new grounds should be designated."
ReplyDeleteNah bro. Only if they're making additional findings of fact, not if they're simply explaining the facts already utilized in a more simplified manner for the children in the room.
I'm aware of what In re Lovin' was about, and I'm also aware of what their petition for rehearing is trying to make it about.
"Nah bro. Only if they're making additional findings of fact, not if they're simply explaining the facts already utilized in a more simplified manner for the children in the room."
ReplyDeleteAdd new grounds of rejection to the list of things you don't understand, like evidence and facts, etc.
"Add new grounds of rejection to the list of things you don't understand, like evidence and facts, etc. "
ReplyDeleteLulz, I understand them better than you do apparently.
Ya worthless fop.
This seemed pretty clear to me. The examiner cited the history as a specified time period. Now I know this is revolutionary but if you don't understand what the examiner means try giving him a call. It's a lot cheaper than an appeal.
ReplyDelete"It's a lot cheaper than an appeal."
ReplyDeleteSo is a Petition to Invoke Supervisory Review. Still more expensive than a call but a lot more likely to get some action.
"So is a Petition to Invoke Supervisory Review. Still more expensive than a call but a lot more likely to get some action."
ReplyDeleteWaste of time.
"Lulz, I understand them better than you do apparently."
This from the examinertard who thinks that every brain fart he types into an office action is substantial evidence.