`
`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.
`
`90/008.374
`
`12/13/2006
`
`6,993,572
`
`23
`
`2875
`
`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 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.
`
`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
`
`6,993,572 (issued January 31, 2006) to D. Delano Ross,Jr., et al.
`
`[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 parte 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, LLCis the real party in interest and the current owner of
`the patent under reexamination.
`
`2
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`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. 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
`
`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. 14, Il. 6-17).
`
`Claims 1-27 are listed in the issued patent, where claims 2, 3, 6-12,
`
`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,
`
`13, 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 descriptionat 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 90/008,374
`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 pageat
`the visitor computer perceives the page as associated
`with the host website even thoughit is served from the
`second website.
`
`13. An e-commerce outsourcing system
`comprising:
`a) a data store including a look and feel
`description 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 throughthe Internet with the host
`web page and programmed, uponreceiving an indication
`that the link has beenactivated by a visitor computer in
`Internet communicationwith 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 stepsof:
`a) storing a look and feel description associated
`with a first website in a data store associated with a
`second website;
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`b) including within a web pageof the first
`website, which web pagehas a look and feel
`substantially corresponding to the stored look andfeel
`description, a link correlating the web page with a
`commerce object; and
`c) upon receiving anactivation of the link from a
`visitor computer to which the web pagehas beenserved,
`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 onthe
`commerce object associated with the link..
`
`Theprior art reference relied upon by the Examinerin rejecting the
`
`claimsis:
`
`Arnold
`
`6,016,504
`
`Jan. 18, 2000
`
`The Examinerrejected 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
`
`claims 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable over
`
`Arnold (Ans. 21-23).
`
`ISSUE
`
`Appellant contends 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 | (App. Br. 12). Appellant
`
`acknowledges that Arnold allows for customizationto reflect the specific
`
`virtual outlet (“VO”), but that does not amountto “capturing” as disclosed
`
`5
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`and claimed in the instant patent, even under the broadest reasonable
`
`interpretation standard (App. Br. 13-14). 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. 24-25).
`
`Appellant also contends that the Examiner’s rejection is in error
`
`because Arnold doesnot disclose the use of a “commerceobject[] as the
`
`language of claims 1, 13, and 17 variously require” (App. Br. 17). 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 commerceobject] is defined as a product of a third-party merchant, not a
`
`product sold by the ownerof 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 whichservesto
`
`distinguish the claims from Arnold (App. Br. 19). The Examinerfinds 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’ whichis linked from the Host” (Ans. 27).
`
`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).
`
`6
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`Thus, the issues arising from the respective positions of Appellant and
`
`the Examinerare:
`
`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) per claim 1?
`
`Did the Examinererr in determining that Arnold discloses a link
`
`correlated with a commerce object under 35 U.S.C. § 102(e) per claims1,
`
`13, and 17?
`
`Did the Examinererr in determining that Arnold teaches or suggests
`
`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
`
`“producers, distributors, or resellers of the goods to be sold
`
`through the outsource provider” (Spec. col. 23, Il. 18-19).
`
`2:
`
`The Specification of the '572 Patent defines “hosts” as “the
`
`operator of a website that engages in Internet commerce by
`
`incorporating one or more link to the e-commerce outsource
`
`providerinto its web content” (Spec. col. 23, Il. 46-48).
`
`3.
`
`The Specification of the '572 Patent discloses that the role of the
`
`“outsource provider”is to “[d]Jevelop and maintain the outsource
`
`provider service bureau-- the systems and software which provide
`
`the platform for e-commerce supportservices|, i]dentify and
`
`7
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`recruit target Host websites and monitor/manage these
`
`relationships[, and c|reate customer-transparent Host processing
`
`‘pages’ on a secure serverto receive order and payment
`
`information” (Spec. col. 23, |. 62 — col. 24, 1. 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 someorall of a host's
`
`website (Spec. col. 14, Il. 6-17).
`
`5.
`
`A link generator allowshost to create and maintain the shopping
`
`opportunities that they can then place ontheir site, where each link
`
`is assigned a uniquelink [D, with the link ID identifying who the
`
`host is, who the merchantis, and what commerce object(catalog,
`
`category, product or dynamic selection) is linked to (Spec. col. 15,
`
`Il. 10-16).
`
`6.
`
`Arnold discloses a method for establishing and maintaining a
`
`virtual outlet (VO) betweenan entity that controls and manages a
`
`website and a merchant that controls and managesa different Web
`
`site. To the customer using the VO, it appears that the entire
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`process of ordering from the merchant is conducted entirely within
`
`the VO web pages (Arnold, Abs.; Fig. 1A).
`
`a
`
`A webpage allowsa personsigning 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 fora graphicsfile that contains the
`
`VO's logo, the desired background color, and other such
`
`information”(Arnold, col. 9, Il. 14-20; Fig. 6).
`
`8.
`
`A CatalogBrowser routine allows a VO representative to browse
`
`through catalog Web pages supplied by the merchant, where items
`
`for sale are described andlisted along with URLscorresponding to
`
`the order web page that the merchant will supply to a customer
`
`linking through a VO web page to the merchantsite in order to
`
`purchasethe item. (Arnold, col. 10, Il. 41-47).
`
`D;
`
`Arnold further discloses that when a customer selects 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 who signed up forthe
`
`VO (Arnold,col. 14,Il. 15-27).
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`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,
`
`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 beenobviousat the time the
`
`invention was madeto 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 examinationof 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.
`
`10
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`ANALYSIS
`
`Appellant argues 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 | (App. Br. 12). 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. 13-14). 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. 24-25). Thus, the issue before us turns on claim construction.
`
`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 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 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 pageofthe host, retrieving the sample page from
`
`11
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`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 Examineris correct that claim 1 does not specifically
`
`require a party other thanthe hostitself to do the capturing (Ans. 9), we
`
`conclude that such a requirementis required by the claim by applying the
`
`proper claim interpretation to the elements therein. Similarly, while the
`
`Examineris also correct that claim 1 does not require any sort of automatic
`
`retrieval of data (id.), we do notfind that Arnold 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 methodologydisclosed
`
`in Arnold, we do not find Arnold discloses the steps of method claim 1. As
`
`such, we find that Arnold cannotanticipate claim 1, or claims dependent
`
`thereon, and thus wefind that the rejection of claim 1, was madeinerror.
`
`Appellant also contends that the Examiner’s rejectionis in error
`
`because Arnold doesnot disclose the use of a commerce object as recited in
`
`claims 1, 13, and 17 (App. Br. 17). 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 commerceobject] is
`
`12
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`defined as a productof a third-party merchant, not a product sold by the
`
`ownerof the linked page” (App. Br. 17-18). Appellant also argues that the
`
`Examinerhas ignored the explicit definition of “commerce object” found in
`
`the Specification and whichserves to distinguish the claims from Arnold
`
`(App. Br. 19). The Examinerfinds 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’ whichis 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 merchantsite, which in
`
`turn has links to a numberof 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 Arnoldthatit
`
`does. As such, we do not find that Arnold teaches all of the elements of
`
`claims 1, 13, and 17, and therefore the Examinererred in finding those
`
`claims to be anticipated.
`
`In similar fashion, we also find the rejection of
`
`13
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`dependentclaims 4, 5, 20-22, and 24-26 to also have been madein error, by
`
`virtue of their dependence.
`
`Withrespect 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
`
`Examinerhas not provided a properbasis for finding claims 18 and 19 to be
`
`obvious over Arnold.
`
`CONCLUSION
`
`Appellant has shownthat the Examiner erred in determiningthat: 1)
`
`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 Examinerto reject claims 1, 4, 5, 13, 17-22, and
`
`24-26 is REVERSED.
`
`ack
`
`REVERSED
`
`14
`
`
`
`Appeal 2009-013987
`Reexamination Control 90/008,374
`United States Patent 6,993,572
`
`Cc.
`
`LOUIS J. HOFFMAN, P.C.
`11811 North Taturn Blvd.
`Suite 2100
`Phoenix, AZ 85028
`
`15
`
`
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