`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENTOF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS.
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`WWWUISplo.gov
`
`APPLICATION NO,
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATION NO.
`
`90/008.375
`
`12/13/2006
`
`6629135
`
`23
`
`3229
`
`7590
`26362
`“
`=
`~
`‘
`LOUIS J. HOFFMAN, P.C.
`11811 North Tatum Boulevard, Suite 2100
`Phoenix, AZ 85028
`
`0416/2010
`
`
`
`2
`.
`EXAMINER
`
`KOSOWSKI, ALEXANDERJ
`
`
`
`3992
`
`
`
`DELIVERY MODE
`
`PAPER
`
`MAIL DATE
`
`04/16/2010
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period forreply, if any, is set in the attached communication,
`
`PTOL-90A (Rev. 04/07)
`
`Shopify Exhibit 1019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`Ex parte DDR HOLDINGS, LLC,
`Appellant and Patent Owner
`
`Appeal 2009-013988
`Reexamination Control 90/008,375
`Patent 6,629,135
`Technology Center 3900
`
`Decided: April 16, 2010
`
`Before SCOTT R. BOALICK, ST. JOHN COURTENAYIII, and KEVIN F.
`TURNER, Administrative Patent Judges.
`
`TURNER,Administrative Patent Judge
`
`DECISION ON APPEAL
`
`
`
`Appeal 2009-013988
`Reexamination Control 90/008,375
`United States Patent 6,629,135
`
`DDR HOLDINGs, LLC! appeals under 35 U.S.C. §§ 134(b) and 306
`
`from a final rejection of claims 8, 13, and 14. We havejurisdiction under 35
`
`U.S.C. §§ 134(b) and 306.
`
`Weheard oral arguments on October 21, 2009, a written transcript of
`
`whichis included in the record.
`
`We REVERSE.
`
`STATEMENT OF THE CASE
`
`This proceeding arose from a request for ex parte reexaminationfiled
`
`by the Patent Owner on December 13, 2006 of United States Patent
`
`6,629,135 (issued September 30, 2003) to D. Delano Ross, Jr., et al.
`
`[hereinafter the ‘135 Patent] based on United States Patent Application
`
`09/398,268 (filed September 17, 1999).
`
`A related patent, United States Patent 6,993,572 (issued January 31,
`
`2006), based on United States Patent Application 10/461,997 (filed June 11,
`
`2003), is a continuation of the application for the ‘135 Patent, is also the
`
`subject of a request for ex parte reexamination (Reexamination Control
`
`90/008,374), and is also presently being appealed (Appeal 2009-013987).
`
`That appeal is being concurrently decided with the instant appeal.
`
`' DDR Holdings, LLCis 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 6,629,135
`
`Patentee’s invention relates to commerce syndication where
`
`computer-based information providers receive outsourced electronic
`
`commercefacilities in a context sensitive, transparent manner(Spec. col. 1,
`
`Il. 15-18).
`
`In the process, the host's look and feel is captured by selecting an
`
`example page of the host, retrieving the sample page from the host,
`
`identifying the look and feel elements from the sample page and saving the
`
`identified look and feel elements. “Look and feel elements” include logos,
`
`colors, page layout, navigation systems, frames, “mouse-over” effects, or
`
`other elements that are consistent through someorall of a host's website (id.
`
`at col. 12, ll. 41-50).
`
`Claims 1-18 are listed in the issued patent, with only claims 8, 13, and
`
`14 being subject to reexamination(Final Office Action 2). Claim 8, which
`
`we deem to be representative, reads as follows:
`
`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 stepsof:
`(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 6,629,135
`
`(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 Examinerin rejecting the
`
`claimsis:
`
`Arnold
`
`6,016,504
`
`Jan. 18, 2000
`
`The Examinerrejected claims 8, 13, and 14 under 35 U.S.C. § 102(e)
`
`as being anticipated by Arnold (Ans. 3-7).
`
`ISSUE
`
`Appellant contends that the Examiner’s rejectionis in error because
`
`Arnold does not disclose “capturing a look and feel description associated
`
`with a host website,” as recited in claim 8 (App. Br. 10). Appellant
`
`acknowledgesthat Arnold allows for customizationto reflect the specific
`
`virtual outlet (VO), but that does not amount to “capturing” as disclosed and
`
`claimed in the instant patent, even underthe broadest reasonable
`
`interpretation standard (App. Br. 11-12). The Examinerfinds 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 (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
`
`considered in this decision. Arguments which Appellant could have made
`
`but chose not to make in the Brief have not been considered and are deemed
`
`to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
`
`Thus, the issue arising from the respective positions of Appellant and
`
`the Examineris:
`
`Did the Examinererr in determining that Arnold discloses capturing
`
`the look and feel description associated with a host website under 35 U.S.C.
`
`§ 102(e) within the meaning of claims 8, 13, and 14?
`
`FINDINGS OF FACT
`
`I,
`
`The Specification of the '135 Patent defines “merchants” as
`
`“producers, distributors, or resellers of the goods to be sold
`
`through the outsource provider” (Spec. col. 21, Il. 50-51).
`
`2
`
`The Specification of the '135 Patent defines “hosts” as “the
`
`operator of a website that engages in Internet commerce by
`
`incorporating one or more link [sic] to the e-commerce outsource
`
`providerinto its web content” (Spec. col. 22, Il. 12-14).
`
`3:
`
`The Specification of the '135 Patent discloses that the role of the
`
`“outsource provider”is to “[d]evelop and maintain the outsource
`
`provider service bureau -- the systems and software which provide
`
`the platform for e-commerce supportservices|, ijdentify and
`
`recruit target Host websites and monitor/manage these
`
`
`
`Appeal 2009-013988
`Reexamination Control 90/008,375
`United States Patent 6,629,135
`
`relationships|, and c]reate customer-transparent Host processing
`
`‘pages’ on a secure serverto receive order and payment
`
`information” (Spec. col. 23, IL. 29-36).
`
`4.
`
`According to the Specification of the ‘135 Patent, the host's look
`
`and feel is captured by selecting an example page ofthe host,
`
`retrieving the sample page from the host, identifying the look and
`
`feel elements from the sample page and saving the identified look
`
`and feel elements. “Look and feel elements” include logos, colors,
`
`page layout, navigation systems, frames, ‘mouse-over’ effects, or
`
`other elements that are consistent through someorall of a host's
`
`website (Spec. col. 12, Il. 41-50).
`
`5:
`
`A link generator allows host to create and maintain the shopping
`
`opportunities that they can then place ontheir site, where each link
`
`is assigned a unique link ID, with the link ID identifying whothe
`
`host is, who the merchant is, and what commerce object(catalog,
`
`category, product, or dynamic selection) is linked to (Spec. col. 13,
`
`Il. 45-51).
`
`6.
`
`Arnold discloses a method for establishing and maintaining a
`
`virtual outlet (VO) betweenanentity that controls and managesa
`
`website and a merchant that controls and managesa different web
`
`site. To the customer using the VO,it appears that the entire
`
`process of ordering from the merchant is conducted entirely within
`
`the VO web pages (Arnold Abs.; Fig. 1A).
`
`6
`
`
`
`Appeal 2009-013988
`Reexamination Control 90/008,375
`United States Patent 6,629,135
`
`a
`
`A webpageallows a person signing up for the VO to input
`
`information concerning the appearance that the VO expects for a
`
`merchant order web pagethat will be displayed when a customer
`
`hot links through the VO to the merchantsite, where this
`
`“information includes a URL for a graphicsfile that contains the
`
`VO's logo, the desired background color, and other such
`
`information” (Arnold,col. 9, Il. 14-20; Fig. 6).
`
`A CatalogBrowserroutine allows a VO representative to browse
`
`through catalog web pages supplied by the merchant, where items
`
`for sale are described andlisted along with URLs corresponding to
`
`the order web pagethat the merchant will supply to a customer
`
`linking through a VO web pageto the merchantsite in order to
`
`purchase the item (Arnold col. 10, Il. 41-47).
`
`Arnold further discloses that when a customerselects a merchant’s
`
`hotlink on the VO website, the customer’s computeris served a
`
`page from the merchant’s computer with the look and feel
`
`corresponding to that entered by the person whosigned up for the
`
`VO (Arnold col. 14, Il. 15-27).
`
`PRINCIPLES OF LAW
`
`Anticipation is established whena single prior art reference discloses,
`
`expressly or underthe principles of inherency, each and every limitation of
`
`the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
`
`
`
`Appeal 2009-013988
`Reexamination Control 90/008,375
`United States Patent 6,629,135
`
`1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
`
`(Fed. Cir. 1994).
`
`During examination of a patent application, a claim is givenits
`
`broadest reasonable construction consistent with the specification. Jn re
`
`Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “[T]he words of a claim ‘are
`
`generally given their ordinary and customary meaning.’” Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
`
`omitted). The "ordinary and customary meaning of a claim term is the
`
`meaning that the term would have to a person of ordinary skill in the art in
`
`questionat the time of the invention,i.e., as of the effective filing date of the
`
`patent application." /d. at 1313.
`
`ANALYSIS
`
`Appellant argues that the Examiner’s rejection is in error because
`
`Arnold does not disclose “capturing a look and feel description associated
`
`with a host website,” as recited in claim 8 (App. Br. 10). Appellant
`
`acknowledgesthat Arnold allows for customizationto 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. 11-12). The Examinerfinds 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 thanthe host itself to do the capturing
`
`(Ans. 9). Thus, the issue before us turns on claim construction.
`
`
`
`Appeal 2009-013988
`Reexamination Control 90/008,375
`United States Patent 6,629,135
`
`Webegin our analysis by broadly but reasonably construing the
`
`disputed claim term “capturing.” During prosecution, “the PTO gives
`
`claims their ‘broadest reasonable interpretation.’” Jn re Bigio, 381 F.3d
`
`1320, 1324 (Fed. Cir. 2004) (quoting Jn re Hyatt, 211 F.3d 1367, 1372 (Fed.
`
`Cir. 2000)). Claims are to be giventheir broadest reasonable interpretation
`
`consistent with the specification, and the language should be readinlight of
`
`the specification as it would be interpreted by one of ordinary skill in theart.
`
`In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
`
`(citations omitted).
`
`Whenwelook to Appellant’s Specification for context, we note that
`
`the instant Specification makesclear that the host's look and feel is captured
`
`by selecting an example page of the host, retrieving the sample page from
`
`the host (FF 4). The Specification also makesclear the “host” is a separate
`
`entity from the party that does the capturing (FF 1-3).
`
`Consistent with Appellant’s Specification, we broadly but reasonably
`
`construe “capturing” as requiring a party taking possession of something
`
`that was not previously in their possession (cf. FF 1-3; see also Oral Hearing
`
`Transcript p. 20). Given our claim construction, we find Arnold does not
`
`disclose or describe capturing as claimed.
`
`Thus, while the Examineris correct that claim 8 does not specifically
`
`require a party other thanthe hostitself to do the capturing (Ans. 9), we
`
`conclude that such a requirement is required by the claim by applying the
`
`proper claim interpretation to the elements therein. Similarly, while the
`
`
`
`Appeal 2009-013988
`Reexamination Control 90/008,375
`United States Patent 6,629,135
`
`Examineris also correct that claim 8 does not require any sort of automatic
`
`retrieval of data (id.), we do notfind that Arnold discloses such “capturing”
`
`throughthe disclosed data entry (FF 7). While the overall result achieved by
`
`Appellant’s claimed method may be obtained by the methodology disclosed
`
`in Arnold, we do not find Arnold discloses the steps of method claim 8. As
`
`such, we find that Arnold does not anticipate claim 8, or claims dependent
`
`thereon, and thus wefind that the rejection of claims 8, 13, and 14 was made
`
`in error.
`
`CONCLUSION
`
`Appellant has shownthat the Examiner erred in determining that
`
`Arnold discloses capturing the look and feel description associated with a
`
`host website under 35 U.S.C. § 102(e).
`
`DECISION
`
`The decision of the Examinerto reject claims 8, 13, and 14 is
`
`REVERSED.
`
`KMF
`
`REVERSED
`
`ce:
`LOUIS J. HOFFMAN, P.C.
`11811 North Tatum Boulevard, Suite 2100
`Phoenix, AZ 85028
`
`10
`
`
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