Ex parte Belinne

OCR transcription for search; preserved printed pages are authoritative

Koard of Patent Appeals
and Interferences

Informative

Opinion

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DARYL JARVIS BELINNE, SHREE DANDEKAR,
JAMES A. HOWELL JR., and
SHANNON CHRISTOPHER BOESCH

Appeal 2009-004693
Application 10/137,623
Technology Center 2100

Decided: August 10, 2009

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
JOSEPH L. DIXON, and DEBRA K. STEPHENS, Administrative Patent
Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004693
Application 101137,623
STATEMENT OF THE CASE
According to Appellants, the invention relates to activating services
when configuring a "build to order" system. (See Spec. 1:8-9).
The Examiner rejected claims 1- 16 under 35 U.S.C. 5 102(e) over Lee
US 6,985,876 B1 Jan. 10, 2006.
The issue before us is whether Appellants have shown that the
Examiner failed to explain how the relied upon prior art reference discloses
an element of the claim.
In rejecting claims under 35 U.S.C. 5 102, "[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation." Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977,985-86 (Fed.
Cir. 2006). Therefore, we look to Appellants' Briefs to show error in the
Examiner's proffered prima facie case.
Exemplary Claim
1. A computer implemented system for enabling configuration of an
information handling system comprising:
a configurator, the configurator configuring a system with
options selected according to user input;
a checkout module, the checkout module presenting payment
options and obtaining payment and delivery information;
a service activation module for enabling a user to activate a
service for use on the information handling system; and
1 Appellants appeal under 35 U.S.C. 5 134(a) from the Examiner's rejection
of claims 1-16. We have jurisdiction under 35 U.S.C. 5 6(b).

Appeal 2009-004693
Application 101137,623
a database, the database receiving information from and
supplying information to the configurator, the checkout module and
the service activation module.
FINDINGS OF FACTS
The Examiner found that all of the limitations of claims 1-16 were
taught by Lee reference (09-21-2009 Non-Final Office Action pp. 3-9;
See also Ans. 3-17 and Ans. 18-24). Specifically, at page 3 of the Rejection
dated September 21, 2007, the Examiner found with respect to claim 1:
3. Lee taught the invention as claimed including a system
for enabling configuration of an information handling system
comprising :
4. A configurator (PXI configurator), the configurator
configuring a system with options selected according to user
input (e.g., see figs. 3,4 and col. 6, lines 30-65 and);
5. A checkout module, the checkout module presenting
payment options and obtaining payment and delivery
information e.g., see, col. 4, lines I -30)[the browser software
for accessing ecommerce website that performs the checkout
operation using the virtual shopping cart of Lee];
6. A service activation module for enabling a user to
activate a service (e.g., see col. 3, lines 43-col. 4, line 30[the
ecommerce software that provides for purchase of services such
ISP service or content subscription services]; and
7. A database, the database receiving information from
and supplying information to the configurator, the checkout
module and the service activation module (e.g., see col. 4, lines
59-col. 5, line 63 and figs. 2a,2b)[the media such as disk or
CDROM receive or store instructions and/or data in accordance
with the ecommerce method of figs.2a,2b that includes
configuring a system and purchasing or activating a service
(e.g., see col. 3, lines 34-65).
Lee at column 6, lines 30-65, as referenced by the Examiner, discloses in
part that "The user may be allowed to select customized component options"

Appeal 2009-004693
Application 101137,623
and that the options are of a "customizable product." We find that the
product is "such as a computer system" (Lee, col. 5,ll. 35-36).
Additionally, at pages 9-10 of the Answer, the Examiner further found
with respect to claim 1:
Lee disclosed that the products that were selected,
customized and purchased included a computer system and Lee
discussed the customization of a computer system (e.g., see fig.
3,4, 6 and col. 9, lines 16-63). Also Lee disclosed that products
selected customized and purchased by the system included
content subscription services and ISP service (INTERNET
service provider service)(e.g., see col. 3, lines 44-54). The Lee
system provided for the purchase of theses services (that are
used on a configured computer) via downloaded graphical
interface with the configuring and purchase of a computer (e.g.,
see col. 6, lines 21-59). The portion of the interface that enables
"services" selection and purchase meets the enabling a user to
activate a service limitation. The advantage is clearly to provide
a "one stop shop" for purchasing each thing that would be
desired for the user of the purchased computer product. Lee
disclosed that the purchase is an interactive process where the
user selects and configures a product until each item the user
desires is selected and configured and then the purchase is
finalized (e.g., see col. 8,lines 1-23).
At page 5 of the Rejection dated September 21, 2007, the Examiner
found with respect to claim 2:
8. As per claim 2, Lee taught the configurator and the
service activation module provide a customer with consistent
customer experience (e.g., see fig. 3,4), [ where the PXI
configurator provides consistent view of the system and the
ecommerce software that provides for the purchase of services
is taught part of the same ecommerce system with display
therefore the experience of purchasing a item is consistent]
The Examiner's findings with respect to claim 7 are found at page 5
of the Rejection dated September 21, 2007 and pages 12-13 of the Answer.

Appeal 2009-004693
Application 101137,623
The Examiner's findings with respect to claim 13 are found at pages
7-8 of the Rejection dated September 21,2007 and page 16 of the Answer.
APPELLANTS' CONTENTIONS
Appellants contend that the Examiner erred in finding that the
limitations of the claims were met by the Lee reference and Appellants
contend that a number of limitations are missing from the Lee reference
(See App. Br. 3-5; See also Reply Br. 2). Specifically, with respect to claims
1-6, at pages 3-4 of the Appeal Brief, Appellants argue:
Lee does not teach or suggest a computer implemented
system for enabling configuration of an information handling
system which includes a configurator, a service activation
module for enabling a user to activate a service for use on an
information handling system, and a database where database
receives information from and supplies information to the
configurator and the service activation module, all as required
by claim 1. Accordingly, claim 1 is allowable over Lee. Claims
2 - 6 depend from claim 1 and are allowable for at least this
reason.
The Appeal Brief presents no other arguments with respect to claim 1.
With respect to claims 7-12, at page 4 of the Appeal Brief, Appellants
argue:
Additionally, Lee does not teach or suggest a method of
enabling configuration of an information handling system
which includes configuring a system with options selected
according to user input, enabling a user to activate a service,
and using information derived during the configuring for the
enabling, all as required by claim 7. Accordingly, claim 7 is
allowable over Lee. Claims 8 - 12 depend from claim 7 and are
allowable for at least this reason.
The Appeal Brief presents no other arguments with respect to claim 7.

Appeal 2009-004693
Application 10/137,623

With respect to claims 13-16, at page 4 of the Appeal Brief,
Appellants argue:

Additionally, Lee does not teach or suggest an on-line
store for enabling configuration of an information handling
system which includes means for configuring a system with
options selected according to user input, means for enabling a
user to activate a service for use on an information handling
system, and a database where the database receives information
from and supplies information to the means for configuring, the
means for presenting and the means for enabling, all as required
by claim 13. Accordingly, claim 13 is allowable over Lee.
Claims 14 -16 depend from claim 13 and are allowable for at
least this reason.

The Appeal Brief presents no other arguments with respect to claim 13.
With respect to claims 2, 8, and 14, at pages 4-5 of the Appeal Brief,
Appellants separately argue:

As discussed in the application, one aspect of the present
invention relates to providing an on-line store which allows a
customer to order services of other providers while maintaining
a consistent customer experience. (See e.g., Belinne application,
page 6, lines 9 - 17.) This aspect of the invention is
affirmatively claimed in claims 2, 8 and 14 which set forth that
the configurator and the service activation module provide a
customer with a consistent customer experience.

When setting forth that Lee discloses a configurator and
the service activation module provide a customer with a
consistent customer experience, the Examiner sets forth:

Lee taught the configurator and the service activation

module provide a customer with a consistent customer

experience (e.g., see fig. 3,4), [where the PXI
configurator provides consistent view of the system and
the ecommerce software that provides for the purchase of
services is taught part of the same ecommerce system

with display therefore the experience of purchasing a

item is consistent]. (Final office action dated September

21, 2007, Page 4.)

Appeal 2009-004693
Application 101137,623
However, this portion of Lee, or anywhere else in Lee,
does not disclose or suggest a configurator (the configurator
configuring a system with options selected according to user
input) and a service activation module providing a customer
with a consistent customer experience, as required by claim 2
and as substantially required by claims 8 and 14. Accordingly,
claims 2, 8 and 14 are allowable over Lee.
The Appeal Brief presents no other arguments beyond those quoted
above.
ANALYSIS
In our review, we find that the Examiner has made extensive specific
fact finding, as detailed supra, with respect to each of the argued claims.
Appellants' argument, as detailed supra, repeatedly restates elements of the
claim language 	and simply argues that the elements are missing from the
reference. However, Appellants do not present any arguments to explain
why the Examiner's explicit fact finding is in error. Arguments not
presented in the Appeal Brief "will be refused consideration by the Board,
unless good cause is shown" ' (i.e., are waived). In contrast, the Examiner
findings address each claim limitation raised on appeal by Appellants and
also these findings reference specific teachings in Lee as showing these
claim limitations.
Weighing as a whole the Appellants' arguments, which are not
supported by further explanation, that the elements are missing and the
2 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim (See
37 C.F.R. 5 41.37 (c)(l)(vii)).
' 37 C.F.R. 5 41.37 (c)(l)(vii).

Appeal 2009-004693
Application 101137,623
Examiner's specific and detailed findings, we reach a conclusion that
Appellants have not shown error in the Examiner's finding of anticipation
based on Lee regarding claims 1-16.
DECISION
We affirm the Examiner's rejection of claims 1- 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a)(l)(iv).
AFFIRMED
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