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`UNITED STATES PATENT AND TRADEMARK OEETCE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Atillrck‘a': COMMISSIONER l'UR l’A'l'ILNI'S
`P.(). But: I450
`Alexmidria. Virginia 223! 3- ”50
`\\-\\-\\-.ilsplo.gov
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`FIRST NAME!) INVIENIOR
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`A'l’l‘ORNIiY DOCKlii'l‘ N0.
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`('ONI'TRMJYI'ION N0.
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`9W008.3?5
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`FILING DA'I'Ii
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`I 2!] M2006
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` APPLICATION NO.
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`(>629 I '35
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`23
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`.1229
`
`7590
`36163
`1
`,
`‘
`‘
`LOUIS; J. IlOFl-MAN. l’.(,.
`”8] 1 North Tatum Boulevard, Suite 2100
`Phoenix, AZ 85028
`
`U-‘h’ I 61’10 I it
`
`_
`..
`}:XJ\MINILR
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`KOSOWSKL ALEXANDERJ
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` 3:992
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`DELIVERY MODE
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`MAIL DATE
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`04!]69010
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—QUA (Rev. 04:0?)
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`Shopify Exhibit 1019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`
`AND INTERFERENCES
`
`Ex par-re DDR HOLDINGS, LLC,
`Appellant and Patent Owner
`
`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`Patent 6,629,] 35
`Technology Center 3900
`
`Decided: April 16, 2010
`
`Before SCOTT R. BOALICK, ST. JOHN COURTENAY III, and KEVIN F.
`
`TURNER, Administrative Parent Judges.
`
`TURNER, Administrative Parent Judge
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`DECISION ON APPEAL
`
`
`
`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,] 35
`
`DDR HOLDINGS, LLCl appeals under 35 U.S.C. §§ l34(b) and 306
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`from a final rejection of claims 8, 13, and 14. We have jurisdiction under 35
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`U.S.C. §§ 134(b) and 306.
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`We heard oral arguments on October 2], 2009, a written transcript of
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`which is included in the record.
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`We REVERSE.
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`STATEMENT OF THE CASE
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`This proceeding arose from a request for ex pane reexamination filed
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`by the Patent Owner on December 13, 2006 of United States Patent
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`6,629,135 (issued September 30, 2003) to D. Delano Ross, Jr., et al.
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`[hereinafter the ’135 Patent] based on United States Patent Application
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`09/398,268 (filed September 17, 1999).
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`A related patent, United States Patent 6,993,572 (issued January 31,
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`2006), based on United States Patent Application 10/461,997 (filed June 1 1,
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`2003), is a continuation of the application for the '135 Patent, is also the
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`subject of a request for ex pane reexamination (Reexamination Control
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`90/008,374), and is also presently being appealed (Appeal 2009-013987).
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`That appeal is being concurrently decided with the instant appeal.
`
`' DDR Holdings, LLC is the real party in interest and the current owner of
`the patent under reexamination.
`
`2
`
`
`
`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,] 35
`
`Patentee’s invention relates to commerce syndication where
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`computer-based information providers receive outsourced electronic
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`commerce facilities in a context sensitive, transparent manner (Spec. col. 1,
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`ll. 15-18).
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`In the process, the host's look and feel is captured by selecting an
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`example page of the host, retrieving the sample page from the host,
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`identifying the look and feel elements from the sample page and saving the
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`identified look and feel elements. “Look and feel elements” include logos,
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`colors, page layout, navigation systems, frames, “mouse—over” effects, or
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`other elements that are consistent through some or all of a host’s website (id.
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`at col. 12, 11. 41-50).
`
`Claims 1—18 are listed in the issued patent, with only claims 8, l3, and
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`14 being subject to reexamination (Final Office Action 2). Claim 8, which
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`we deem to be representative, reads as follows:
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`8. An e-commerce outsourcing process providing
`a host website in communication with a visitor computer
`with context sensitive, transparent e—commerce support
`pages, comprising the steps of:
`(a) capturing a look and feel description associated
`with a host website;
`
`(b) providing the host website with a link for
`inclusion within a page on the host website for serving to
`a visitor computer, wherein the provided link correlates
`the host website with a selected commerce object; and
`
`
`
`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,] 35
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`(c) upon receiving an activation of the provided
`link from the visitor computer, serving to the visitor
`computer an e—commerce supported page with a look
`and feel corresponding to the captured look and feel
`description of the host website associated with the
`provided link and with content based on the commerce
`object associated with the provided link.
`
`The prior art reference relied upon by the Examiner in rejecting the
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`claims is:
`
`Arnold
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`6,016,504
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`Jan. 18, 2000
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`The Examiner rejected claims 8, l3, and 14 under 35 U.S.C. § 102(e)
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`as being anticipated by Arnold (Ans. 3-7).
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`ISSUE
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`Appellant contends that the Examiner’s rejection is in error because
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`Arnold does not disclose “capturing a look and feel description associated
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`with a host website,” as recited in claim 8 (App. Br. 10). Appellant
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`acknowledges that Arnold allows for customization to reflect the specific
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`virtual outlet (V0), but that does not amount to “capturing” as disclosed and
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`claimed in the instant patent, even under the broadest reasonable
`
`interpretation standard (App. Br. 1 1-12). The Examiner finds that the
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`“capturing” step only requires “that the data be obtained for use,” and that
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`the claim limitations do not specifically require a party other than the host
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`itself to do the capturing (Ans. 9).
`
`
`
`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,135
`
`Only those arguments actually made by Appellant have been
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`considered in this decision. Arguments which Appellant could have made
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`but chose not to make in the Brief have not been considered and are deemed
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`to be waived. See 37 C.F.R. § 41.37(c)(l)(vii).
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`Thus, the issue arising from the respective positions of Appellant and
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`the Examiner is:
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`Did the Examiner err in determining that Arnold discloses capturing
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`the look and feel description associated with a host website under 35 U.S.C.
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`§ 102(e) within the meaning of claims 8, l3, and 14?
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`FINDINGS OF FACT
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`1.
`
`The Specification of the ’135 Patent defines “merchants” as
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`“producers, distributors, or resellers of the goods to be sold
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`through the outsource provider” (Spec. col. 2], II. 50-51).
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`2.
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`The Specification of the ’135 Patent defines “hosts” as “the
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`operator of a website that engages in Internet commerce by
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`incorporating one or more link [sic] to the e-commerce outsource
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`provider into its web content” (Spec. col. 22, II. 12-14).
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`3.
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`The Specification of the ’135 Patent discloses that the role of the
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`“outsource provider” is to “[d]evelop and maintain the outsource
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`provider service bureau -— the systems and software which provide
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`the platform for e—commerce support services[, i]dentify and
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`recruit target Host websites and monitor/manage these
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`
`
`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,] 35
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`relationships[, and c]reate customer-transparent Host processing
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`‘pages’ on a secure server to receive order and payment
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`information” (Spec. col. 23, 11. 29—36).
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`4.
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`According to the Specification of the '135 Patent, the host's look
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`and feel is captured by selecting an example page of the host,
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`retrieving the sample page from the 110st, identifying the look and
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`feel elements from the sample page and saving the identified look
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`and feel elements. “Look and feel elements” include logos, colors,
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`page layout, navigation systems, frames, ‘mouse—over’ effects, or
`
`other elements that are consistent through some or all of a host's
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`website (Spec. col. 12, ll. 41-50).
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`5.
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`A link generator allows host to create and maintain the shopping
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`opportunities that they can then place 011 their site, where each link
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`is assigned a unique link ID, with the link ID identifying who the
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`host is, who the merchant is, and what commerce object (catalog,
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`category, product, or dynamic selection) is linked to (Spec. col. [3,
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`1]. 45-51).
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`6.
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`Arnold discloses a method for establishing and maintaining a
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`virtual outlet (V0) between an entity that controls and manages a
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`web site and a merchant that controls and manages a different web
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`site. To the customer using the V0, it appears that the entire
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`process of ordering from the merchant is conducted entirely within
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`the V0 web pages (Arnold Abs; Fig. 1A).
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`6
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`
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`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,] 35
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`7.
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`A web page allows a person signing up for the V0 to input
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`information concerning the appearance that the V0 expects for a
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`merchant order web page that will be displayed when a customer
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`hot links through the V0 to the merchant site, where this
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`“information includes a URL for a graphics file that contains the
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`V05 logo, the desired background color, and other such
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`information” (Arnold, col. 9, ll. 14—20; Fig. 6).
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`A Catalog_Browser routine allows a V0 representative to browse
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`through catalog web pages supplied by the merchant, where items
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`for sale are described and listed along with URLs corresponding to
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`the order web page that the merchant will supply to a customer
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`linking through a V0 web page to the merchant site in order to
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`purchase the item (Amold col. [0, 11. 41—47).
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`Arnold fithher discloses that when a customer selects a merchant’s
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`hotlink on the V0 website, the customer’s computer is served a
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`page from the merchant’s computer with the look and feel
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`corresponding to that entered by the person who signed up for the
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`V0 (Arnold col. 14, ll. 15—27).
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`PRINCIPLES OF LAW
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`Anticipation is established when a single prior art reference discloses,
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`expressly or under the principles of inherency, each and every limitation of
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`the claimed invention. Atlas Powder Co. v. IRECO, Inc, 190 F.3d 1342,
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`
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`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,] 35
`
`1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478—79
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`(Fed. Cir. 1994).
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`During examination of a patent application, a claim is given its
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`broadest reasonable construction consistent with the Specification.
`
`In re
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`Prater, 415 F.2d 1393, 1404—05 (CCPA 1969). “[T]he words of a claim ‘are
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`generally given their ordinary and customary meaning.”’ Phillips 12. AWH
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`Corp, 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
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`omitted). The "ordinary and customary meaning of a claim term is the
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`meaning that the term would have to a person of ordinary skill in the art in
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`question at the time of the invention, i.e., as of the effective filing date of the
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`patent application." Id. at 1313.
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`ANALYSIS
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`Appellant argues that the Examiner’s rejection is in error because
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`Arnold does not disclose “capturing a look and feel description associated
`
`with a host website,” as recited in claim 8 (App. Br. 10). Appellant
`
`acknowledges that Arnold allows for customization to reflect the specific
`
`VO, but that does not amount to “capturing“ as disclosed and claimed in the
`
`instant patent, even under the broadest reasonable interpretation standard
`
`(App. Br.
`
`1 1-12). The Examiner finds that the “capturing” step only
`
`requires “that the data be obtained for use,” and that the claim limitations do
`
`not specifically require a party other than the host itself to do the capturing
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`(Ans. 9). Thus, the issue before us turns on claim construction.
`
`
`
`Appeal 2009—013988
`Reexamination Control 90/0083 75
`
`United States Patent 6,629,] 35
`
`We begin our analysis by broadly but reasonably construing the
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`disputed claim term “capturing.” During prosecution, “the PTO gives
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`claims their ‘broadest reasonable interpretation.” In re Big:'(), 38] F.3d
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`1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 21 1 F.3d 1367, 1372 (Fed.
`
`Cir. 2000)). Claims are to be given their broadest reasonable interpretation
`
`consistent with the specification, and the language should be read in light of
`
`the specification as it would be interpreted by one of ordinary skill in the art.
`
`In re Amer. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
`
`(citations omitted).
`
`When we look to Appellant’s Specification for context, we note that
`
`the instant Specification makes clear that the host's look and feel is captured
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`by selecting an example page of the host, retrieving the sample pagefrom
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`the host (FF 4). The Specification also makes clear the “host” is a separate
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`entity from the party that does the capturing (FF 1-3).
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`Consistent with Appellant’s Specification, we broadly but reasonably
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`construe “capturing” as requiring a party taking possession of something
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`that was not previously in their possession (cf. FF 1-3; see also Oral Hearing
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`Transcript p. 20). Given our claim construction, we find Arnold does not
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`disclose or describe capturing as claimed.
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`Thus, while the Examiner is correct that claim 8 does not specifically
`
`require a party other than the host itself to do the capturing (Ans. 9), we
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`conclude that such a requirement is required by the claim by applying the
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`proper claim interpretation to the elements therein. Similarly, while the
`
`9
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`
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`Appeal 2009—013988
`Reexamination Control 90/008,375
`
`United States Patent 6,629,] 35
`
`Examiner is also correct that claim 8 does not require any sort of automatic
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`retrieval of data (id), we do not find that Arnold discloses such “capturing”
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`through the disclosed data entry (FF 7). While the overall result achieved by
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`Appellant’s claimed method may be obtained by the methodology disclosed
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`in Arnold, we do not find Arnold discloses the steps of method claim 8. As
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`such, we find that Arnold does not anticipate claim 8, or claims dependent
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`thereon, and thus we find that the rejection of claims 8, l3, and 14 was made
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`in error.
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`CONCLUSION
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`Appellant has shown that the Examiner erred in determining that
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`Arnold discloses capturing the look and feel description associated with a
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`host website under 35 U.S.C. § 102(e).
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`DECISION
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`The decision of the Examiner to reject claims 8, l3, and 14 is
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`REVERSED.
`
`KMF
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`cc:
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`REVERSED
`
`LOUIS J. HOFFMAN, RC.
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`1 181 1 North Tatum Boulevard, Suite 2100
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`Phoenix, AZ 85028
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`10
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