`
`UNITED STATES PATENT AND TRADEMARK OEETCE
`
`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
`
`FIRST NAME!) INVIENIOR
`
`A'l’l‘ORNIiY DOCKlii'l‘ N0.
`
`('ONI'TRMJYI'ION N0.
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`9W008.3?4
`
`FILING DA'I'Ii
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`IZH M2006
`
` APPLICATION NO.
`
`6.993.5T2
`
`23
`
`2315
`
`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
`
`KOSOWSKL M‘FXANDERJ
`
` 3:992
`
`DELIVERY MODE
`
`MAIL DATE
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`04!]69010
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`PAPER
`
`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.
`
`PTOL—QUA (Rev. 04:0?)
`
`Shopify Exhibit 1018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`
`AND INTERFERENCES
`
`Ex parte DDR HOLDINGS, LLC,
`Appellant and Patent Owner
`
`Appeal 2009-0013987
`Reexamination Control 90/008,374
`
`Patent 6,993,572
`Technology Center 3900
`
`Decided: April 16, 2010
`
`Before SCOTT R. BOALICK, ST. JOHN COURTENAY, III and KEVIN F.
`
`TURNER, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge
`
`DECISION ON APPEAL
`
`
`
`Appeal 2009—013987
`Reexamination Control 90/008,374
`
`United States Patent 6,993,572
`
`DDR HOLDINGS, LLC' appeals under 35 U.S.C. §§ 134(b) and 306
`
`from a final rejection of claims 1, 4, 5, 13, 17—22, and 24—26. We have
`
`jurisdiction under 35 U.S.C. §§ 134(b) and 306.
`
`We heard oral arguments on October 2], 2009, a written transcript of
`
`which is included in the record.
`
`We REVERSE.
`
`STATEMENT OF THE CASE
`
`This proceeding arose from a request for ex pane reexamination filed
`
`by the Patent Owner on December 13, 2006 of United States Patent
`
`6,993,572 (issued January 31, 2006) to D. Delano Ross, Jr., et a].
`
`[hereinafter the ’572 Patent] based on United States Patent Application
`
`10/461,997 (filed June 11, 2003).
`
`A related patent, United States Patent 6,629,135 (issued September
`
`30, 2003), based United States Patent Application 09/398,268 (filed
`
`September 17, 1999), is the parent application of the '572 Patent, is also the
`
`subject of a request for ex pane reexamination (Reexamination Control
`
`90/008,375), and is also presently being appealed (Appeal 2009-013988).
`
`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
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`
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
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`Patentee’s invention relates to commerce syndication where
`
`computer-based information providers receive outsourced electronic
`
`commerce facilities in a context sensitive, transparent manner (Spec. col. 1,
`
`ll. 18—21).
`
`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
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`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 some or all of a host’s website (id.
`
`at col. 14, 11. 6—17).
`
`Claims 1—27 are listed in the issued patent, where claims 2, 3, 6—12,
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`and 14—16 are not subject to reexamination (Final Office Action 2), and
`
`claims 23 and 27 have been confirmed (Final Office Action 3). Claims 1,
`
`l3, and 17, which we deem to be representative, read as follows:
`
`1. An e-commerce outsourcing process
`comprising:
`a) capturing a look and feel description associated
`with a host website and storing HTML code
`corresponding to the look and feel description at a
`second 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—013987
`Reexamination Control 90/0083 74
`
`United States Patent 6,993,572
`
`c) upon receiving an activation of the provided
`link from the visitor computer, serving to the visitor
`computer from the second website 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;
`whereby the visitor receiving the served page at
`the visitor computer perceives the page as associated
`with the host website even though it is served from the
`second website.
`
`13. An e—commerce outsourcing system
`comprising:
`a) a data store including a look and feel
`descfiption associated with a host web page having a
`link correlated with a commerce object; and
`b) a computer processor coupled to the data store
`and in communication through the lntemet with the 110st
`web page and programmed, upon receiving an indication
`that the link has been activated by a visitor computer in
`Intemet communication with the host web page, to serve
`a composite web page to the visitor computer wit a look
`and feel based on the look and feel description in the
`data store and with content based on the commerce
`
`object associated wit the link.
`
`17. An e—commerce outsourcing process
`comprising the steps of:
`a) storing a look and feel description associated
`with a first website in a data store associated with a
`
`second website;
`
`
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
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`b) including within a web page of the first
`website, which web page has a look and feel
`substantially corresponding to the stored look and feel
`description, a link correlating the web page with a
`commerce object; and
`0) upon receiving an activation of the link from a
`visitor computer to which the web page has been served,
`sewing to the visitor computer from the second website a
`composite web page having a look and feel
`corresponding to the stored look and feel description of
`the first website and having content based 011 the
`commerce object associated with the link..
`
`The prior art reference relied upon by the Examiner in rejecting the
`
`claims is:
`
`Arnold
`
`6,016,504
`
`Jan. 18, 2000
`
`The Examiner rejected claims 1, 4, 5, 13, 17, 20—22, and 24—26 under
`
`35 U.S.C. § 102(e) as being anticipated by Arnold (Ans. 3—21), and rejected
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`claims 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable over
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`Arnold (Ans. 21—23).
`
`ISSUE
`
`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
`
`with a host website,” as recited in claim 1 (App. Br. 12). Appellant
`
`acknowledges that Arnold allows for customization to reflect the specific
`
`virtual outlet (“V0”), but that does not amount to “capturing” as disclosed
`
`5
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`
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
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`and claimed in the instant patent, even under the broadest reasonable
`
`interpretation standard (App. Br. 13-14). 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
`
`itself to do the capturing (Ans. 24-25).
`
`Appellant also contends that the Examiner’s rejection is in error
`
`because Arnold does not disclose the use of a “commerce object [] as the
`
`language of claims 1, l3, and I7 variously require” (App. Br. 17). Appellant
`
`argues that “Arnold’s link from the host website to the merchant directly
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`does not correlate/correspond with a (selected) commerce object .
`
`.
`
`. because
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`[a commerce object] is defined as a product of a third-party merchant, not a
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`product sold by the owner of the linked page” (App. Br. 17—18). Appellant
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`also argues that the Examiner has ignored the explicit definition of
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`“commerce object” found in the Specification and which serves to
`
`distinguish the claims from Arnold (App. Br. 19). The Examiner finds that
`
`the term “commerce object” “in light of general e—commerce” does not
`
`require the specifics argued by the Patent Owner (Ans. 26), and that the
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`merchant’s product web pages, in Arnold, “can be considered the
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`‘commerce object” which is linked from the Host” (Ans. 27).
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`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)(1 )(vii).
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`6
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
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`Thus, the issues arising from the respective positions of Appellant and
`
`the Examiner are:
`
`Did the Examiner err in determining that Arnold discloses capturing
`
`the look and feel description associated with a host website under 35 U.S.C.
`
`§ 102(e) per claim I?
`
`Did the Examiner err in determining that Arnold discloses a link
`
`correlated with a commerce object under 35 U.S.C. § 102(e) per claims 1,
`
`l3, and 17?
`
`Did the Examiner err in determining that Arnold teaches or suggests
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`all of the elements of claims 18 and 19 under 35 U.S.C. § 103(a)?
`
`FINDINGS OF FACT
`
`1.
`
`The Specification of the ’572 Patent defines “merchants” as
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`“producers, distributors, or resellers of the goods to be sold
`
`through the outsource provider” (Spec. col. 23, 11. 18—19).
`
`2.
`
`The Specification of the ’572 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 to the e—commerce outsource
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`provider into its web content” (Spec. col. 23, 11. 46-48).
`
`3.
`
`The Specification of the ’572 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
`
`the platform for e—commerce support services[, i]dentify and
`
`7
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
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`recruit target Host websites and monitor/manage these
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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
`
`information” (Spec. col. 23, l. 62 — col. 24, l. 3).
`
`4.
`
`According to the Specification of the ’572 Patent, 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 some or all of a host's
`
`website (Spec. col. 14, 11. 6-17).
`
`5.
`
`A link generator allows host to create and maintain the shopping
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`opportunities that they can then place on their site, where each link
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`is assigned a unique link 1D, with the link 1D 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. 15,
`
`ll. 10-16).
`
`6.
`
`Arnold discloses a method for establishing and maintaining a
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`virtual outlet (V0) between an entity that controls and manages a
`
`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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`
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
`
`process of ordering from the merchant is conducted entirely within
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`the V0 web pages (Arnold, Abs.; Fig. 1A).
`
`7.
`
`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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`VO's logo, the desired background color, and other such
`
`information” (Arnold, col. 9, 11. 14—20; Fig. 6).
`
`8.
`
`A Catalog_Browser routine allows a V0 representative to browse
`
`through catalog Web pages supplied by the merchant, where items
`
`for sale are described and listed along with URLs corresponding to
`
`the order web page that the merchant will supply to a customer
`
`linking through a V0 web page to the merchant site in order to
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`purchase the item. (Arnold, col. 10, 11. 41-47).
`
`9.
`
`Arnold further 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, I]. 15-27).
`
`
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`Appeal 2009—013987
`Reexamination Control 90/008,374
`
`United States Patent 6,993,572
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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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`1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478—79
`
`(Fed. Cir. 1994).
`
`“Section 103 forbids issuance of a patent when ‘the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int'l Co. v. Teleflex Inc, 550 U.S. 398, 406
`
`(2007).
`
`During examination of a patent application, a claim is given its
`
`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
`
`generally given their ordinary and customary meaning.” Phillips 12. AWH
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`Corp, 415 F.3d I303, I312 (Fed. Cir. 2005) (en banc) (internal citations
`
`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
`
`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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`10
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`Appeal 2009—013987
`Reexamination Control 90/008,374
`
`United States Patent 6,993,572
`
`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 1 (App. Br. 12). Appellant
`
`acknowledges that Arnold allows for customization to reflect the specific
`
`V0, but that does not amount to “capturing” as disclosed and claimed in the
`
`instant patent, even under the broadest reasonable interpretation standard
`
`(App. Br. 13-14). 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
`
`(Ans. 24-25). Thus, the issue before us turns on claim construction.
`
`We begin our analysis by broadly but reasonably construing the
`
`disputed claim term “capturing.” During prosecution, “the PTO gives
`
`claims their ‘broadest reasonable interpretation.” In re Bigfo, 381 F.3d
`
`1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 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. QfS'ei'. Tech Cm, 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
`
`by selecting an example page of the host, retrieving the sample pagefmm.
`
`11
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
`
`the host (FF 4). The Specification also makes clear 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 Examiner is correct that claim I does not specifically
`
`require a party other than the host itself 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
`
`Examiner is also correct that claim 1 does not require any sort of automatic
`
`retrieval of data (id), we do not find that Amold discloses such “capturing”
`
`through the 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 1. As
`
`such, we find that Arnold cannot anticipate claim 1, or claims dependent
`
`thereon, and thus we find that the rejection of claim I, was made in error.
`
`Appellant also contends that the Examiner’s rejection is in error
`
`because Arnold does not disclose the use of a commerce object as recited in
`
`claims 1, l3, and 17 (App. Br. [7). Appellant argues that “Arnold’s link
`
`from the host website to the merchant directly does not correlate/correspond
`
`with a (selected) commerce object .
`
`.
`
`. because [a commerce object] is
`
`12
`
`
`
`Appeal 2009—013987
`Reexamination Control 90/008,374
`
`United States Patent 6,993,572
`
`defined as a product of a third—party merchant, not a product sold by the
`
`owner of the linked page” (App. Br. 17—18). Appellant also argues that the
`
`Examiner has ignored the explicit definition of “commerce object” found in
`
`the Specification and which serves to distinguish the claims from Arnold
`
`(App. Br. 19). The Examiner finds that the term “commerce object” “in
`
`light of general e-commerce” does not require the specifics argued by the
`
`Patent Owner (Ans. 26), and that the merchant’s product web pages, in
`
`Arnold, “can be considered the ‘commerce object’ which is linked from the
`
`Host” (Ans. 27). We agree with Appellant.
`
`The Specification of the ’572 Patent defines a commerce object as “a
`
`catalog, category, product or dynamic selection” (FF 5). We agree with
`
`Appellant that the Examiner has not applied the definition of commerce
`
`object in the rejection of claims 1, 13 and 17 (App. Br. 19).
`
`In Arnold, the
`
`links provided correlate to a web page, as the Examiner acknowledges (Ans.
`
`27). As Appellant has argued: “[a] mere link to a merchant site, which in
`
`turn has links to a number of individual products, is not the same thing as
`
`correlating the referring page with a specific ‘commerce object’” (App. Br.
`
`18). While the served web page in Arnold could contain a single catalog,
`
`category or product, we do not find any explicit disclosure in Amold that it
`
`does. As such, we do not find that Arnold teaches all of the elements of
`
`claims 1, l3, and 17, and therefore the Examiner erred in finding those
`
`claims to be anticipated.
`
`In similar fashion, we also find the rejection of
`
`13
`
`
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
`
`dependent claims 4, 5, 20—22, and 24-26 to also have been made in error, by
`
`virtue of their dependence.
`
`With respect to the obviousness rejection of claims 18 and 19, where
`
`elements of those claims were found to be obvious over the disclosure of
`
`Arnold, the rejection fails to cure the deficiencies of Arnold which we have
`
`discussed supra. Since claims 18 and 19 depend from claim 17, where we
`
`find that Arnold does not anticipate the latter claim, we find that the
`
`Examiner has not provided a proper basis for finding claims 18 and 19 to be
`
`obvious over Arnold.
`
`CONCLUSION
`
`Appellant has shown that the Examiner erred in determining that: i)
`
`Arnold discloses capturing the look and feel description associated with a
`
`host website under 35 U.S.C. § 102(e); ii) Arnold discloses a link correlated
`
`with a commerce object under 35 U.S.C. § 102(e); and iii) Arnold teaches or
`
`suggests all of the elements of claims 18 and 19 under 35 U.S.C. § 103(a).
`
`DECISION
`
`The decision of the Examiner to reject claims 1, 4, 5, 13, 17-22, and
`
`24—26 is REVERSED.
`
`ack
`
`REVERSED
`
`l4
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`
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`Appeal 2009—013987
`Reexamination Control 90/008,374
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`United States Patent 6,993,572
`
`CC:
`
`LOUIS J. HOFFMAN, RC.
`
`1181] North Tatum Blvd.
`
`Suite 2100
`
`Phoenix, AZ 85028
`
`15
`
`