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:
 identifying a user;
 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 ...
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.
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.