Patent re-examination - PanIP

These re-examinations were requested by the PanIP Group Defense Fund (PGDF) and by Debrand Fine Chocolates which was the most active member of the PGDF.

This re-examination takes place with an application number 90/006,625.

The requesters found that claims 1-4 and 5-10 of 5,576,951 were anticipated by printed publications:

• an article "Comp-U-Store system could change retail economics" published in July 1983 in Direct Marketing, available in the prosecution history of 90/006,623 (see 6,289,319 re-examination);

• the conference records of a "Globecom ’82 IEEE Global Telecommunications conference", published in December 1982, available in the prosecution history of 90/006,623 (see 6,289,319 re-examination);

• "Discount Store news, the Newspaper of the Discount Department Store Industry", published in February 1983, probably available in the prosecution history of 90/006,623 (see 6,289,319 re-examination);

• "Electronic Retailing - Emerging methods & Markets" by Walter Forbes, Comp-U-Card International, published in May 1983;

• "How Video will change the sale" by Ellen Kleinberg, Industrial Marketing, published in April 1981. Available in the prosecution history of 90/006,623 (see 6,289,319 re-examination).

I found this detailed list in a notice of references cited. These printed publications are not in the prosecution history of 90/006,625. I discuss their content in the section about the re-examination of 6,289,319.

Though 5,576,951 was filed on March 16, 1994 its priority date was May 24, 1984 because it was a continuation-in-part of a continuation of a continuation-in-part of a continuation-in-part of a continuation-in-part of an application. 5,576,951 contains 10 claims, two independent claims 1 and 10 and eight claims depending on claim 1. So requesters focused on claims 1 and 10 and compared elements of claims 1 and 10 to the corresponding structures in the cited printed publications. They found that all publications described all elements in claim 1 and 10.

Claim 1 claims a "computer search system for retrieving information, comprising:

• means for storing interrelated textual information and graphical information;

• means for interrelating said textual and graphical information;

• a plurality of entry path means for searching said stored interrelated textual and graphical information, said entry path means comprising:

• textual search entry path means for searching said textual information and for retrieving interrelated graphical information to said searched text;

• graphics entry path means for searching said graphical information and for retrieving interrelated textual information to said searched graphical information;

• selecting means for providing a menu of said plurality of entry path means for selection;

• automatic data processing means for executing inquiries provided by a user in order to search said textual and graphical information through said selected entry path means and for fetching data as a function of other data;

• indicating means for indicating a pathway that accesses information related in one of said entry path means to information accessible in another one of said entry path means;

• accessing means for providing access to said related information in said another entry path means; and

• output means for receiving search results from said processing means and said related information from said accessing means and for providing said search results and received information to such user."

Claim 10 claims a "computerized system for selecting and ordering a variety of information, goods and services, which comprises:

• a plurality of computerized data processing installations programmed for processing orders for said information, goods and services;

• at least one computerized station, said station including:

• a micro-processor;

• a device for displaying graphical and textual material;

• at least one mass memory device controlled by said micro-processor;

• means for addressing at least one of said computerized data processing installations, and for sending thereto and receiving therefrom, coded messages and batches of data;

• program means for controlling the display on said display device of inquiries and acceptable answers;

• user operated means for selecting at least one of said acceptable answers;

• means for accumulating a set of said acceptable answers;

• automatic data processing means for processing said set of answers as a function of other data;

• means for storing in said mass-storing device, interrelated textual information and graphical information;

• means for interrelating said textual and graphical information;

• a plurality of entry path means for searching said stored interrelated textual and graphical information;

• means, responsive to said means for processing, for executing inquiries provided by said user and for searching said textual and graphical information through said selected entry path means;

• said means for executing and searching, including means for addressing at least one of said installations and for retrieving data related to said answer; and

• means responsive to said means for processing, for transferring orders for said information, goods and services to said installations."

The re-examination was ordered and subsequently the examiner issued a non-final action. He found that another printed publication, "Implications of consumer information processing for the design of consumer information systems" by Gabriel Biehal, The Journal of consumer affairs, Vol 17, No 1 published in 1983, anticipated claims 1-4 and 6-10. The examiner further found that claim 5 was obvious over Biehal in view of the Globecom conference record.

This re-examination takes place with an application number 90/006,623.

The requesters found that claim 1 was anticipated by printed publications:

• Electronic Mall. The printed publication is a reference guide for electronic mall merchants published by the Advanced Media Group (AMG). The Electronic Mall was a service of Compuserve using Videotex.

• Comp-U-Store. An interview of E. Kirk Shelton (president of Consumer Electronic Services, a division of Comp-U-Card) for Direct Marketing Magazine.

• Discount Store News. Vol 22 No 3. Article about a Canadian company, Consumer Distributing that created an electronic catalog for Videotex users.

The requesters found that claims 3-6 were obvious over printed publications:

• Electronic Mall. See above.

• Comp-U-Store. See above.

• GlobeCom. '82 IEEE Global Communication Conference. Conference record. Vol 3 of 3.

• Discount Store News. See above.

in view of the following printed publications:

• Prestel. A Prestel manual. Prestel was a UK videotext service.

• Kleinberg. An article entitled "How the video will change the sale" by Ellen Kleinberg.

• Ivis. A manual about IVIS.

• P-o-p videodisk. An article entitled "p-o-p disk videodisks help clerks to sell more products" by Michael Gerry, published in January 1984.

• Browning. A story by Graeme Browning about a Videospond device. This device is like today kiosks with a stress on video.

• Improving Retail Productivity. The agenda of a conference.

At the time of writing all these documents and more were public:

• the Electronic Mall document,

• papers from a Viewdata conference,

• the interview of E. Kirk Shelton about Comp-U-Store for Direct Marketing Magazine, entitled "Comp-U-Store system could change retail economics",

• the Globecom '82 IEEE Global Communication Conference. Conference record. Vol 3 of 3,

• an article of Discount Store News Vol 22 No 3 about a Canadian company, Consumer Distributing, which created an electronic catalog for Videotex users,

• samples from a Prestel manual, including some screenshots,

• an article entitled "How the video will change the sale" by Ellen Kleinberg, published by Industrial Marketing in April 1981,

• a manual about a Digital product called IVIS and entitled "IVIS put the power of sight, sound, and touch in information picture." The scan is terrible. The IVIS program was running on VAX. It could use a DECtouch touch screen color monitor and a videodisk player,

• an article entitled "p-o-p disk videodisks help clerks to sell more products" by Michael Gerry, published in January 1984,

• a story of United Press International by Graeme Browning about a Videospond device,

• the agenda of a conference entitled "Improving Retail Productivity", with a subtitle "How retailers and suppliers can improve their use of stocks, space, staff and systems" on October 20th, 2003.

These written publications relate:

1. for the online aspect to the first end-consumer online service to be widely used, the Videotex,

2. for the video to presentation of video devices.

The Videotex was a standard that used to be popular in France (Teletel) and substantially less in UK (Prestel) and elsewhere. The reason was that the French Telco, France Telecom gave a Videotex device, the Minitel, for free to its subscribers. The Minitel differed from the Web in the following ways:

1. It was easy for a provider to make money with Minitel. France Telecom was collecting the money from the subscriber (this was on his phone bill).

2. The use cost of the Minitel was quite high for the subscriber (sometime $1 per minute.)

3. Graphics were terrible and screens were displaying 40 characters per line.

Though Videotex had fewer users than the Web it was providing essentially the same service and designers had to solve essentially the same problems.

Technically Videotex was involving the following equipment:

1. a central computer, typically an IBM mainframe (S370) running a transaction monitor connected to a database, with a network front-end (3725) or a minicomputer (VAX) connected to an X25 public network,

2. the public X25 network,

3. a Packet Assembler/Disassembler (PAD) to convert between X25 and asynchronous,

4. a dumb device with typically a 75/1200bps modem (V23).

The complication of the apparatus came from the necessity to minimize the bandwidth need and the device cost. However the main components, a public network, servers and clients were the same as for the Web. Usually Videotex inventions were not patented. However there is not so much public prior art for the following reasons:

1. lack of easy-to-use authoring tools and of standardized document formats;

2. tedious publication process and secrecy policy, the rare documents were kept secret;

3. lack of archiving and indexing means due to the cost of hardware and especially of hard disks.

On the other hand articles, presentations and guides were explaining the systems’ designs in more details than today for the following reasons:

1. people were not Intellectual Property aware;

2. there were no technical writers and no experience in the art of explaining just what is needed to use a system;

3. early adopters were technicians that had to convinced of the value of the implementation, a vendor had to explain how its system was working.

Requesters relied precisely on such documents.

Though 6,289,319 was filed on November 30, 1994 its priority date was May 24, 1984 because it was a continuation of a continuation of a continuation of a continuation of a continuation-in-part of an application. 6,289,319 contains 6 claims, the independent claim 1 and five dependent claims. So requesters focused on claim 1 and compared elements of claim 1 to the corresponding structures in the cited printed publications. They found that the following references described all elements in claim 1:

• Comp-U-Store.

• Discount Store News.

• GlobeCom.

Requesters further found that the Electronic Mall document described all elements in claim 1 and that claim 1 was obvious over the Comp-U-Store, GlobeCom, Discount Store News and Electronic Mall documents.

Claim 1 reads:

"An automatic data processing system for processing business and financial transactions between entities from remote sites which comprises:

• a central processor programmed and connected to process a variety of inquiries and orders transmitted from said remote sites;

• said central processor including:

• means for receiving information about said transactions from said remote sites;

• means for retrievably storing said information;

• at least one terminal at each of said remote sites including a data processor and operational sequencing lists of program instructions;

• means for remotely linking said terminal to said central processor and for transmitting data back and forth between said central processor and said terminal;

• said terminal further comprising means for dispensing information and services for at least one of said entities including:

• a video screen;

• means for holding operational data including programming, informing, and inquiring sequences of data;

• means for manually entering information;

• means for storing information, inquires and orders for said transactions entered by one of said entities via said means for manually entering information, and data received through and from said central processor;

• on-line means for transmitting said information, inquiries, and orders to said central processor;

• on-line means for receiving data comprising operator-selected information and orders from said central processor via said linking means;

• means for outputting said informing and inquiring sequences on said video screen in accordance with preset routines and in response to data entered through said means for entering information;

• means for controlling said means for storing, means for outputting, and means for transmitting, including means for fetching additional inquiring sequences in response to a plurality of said data entered through said means for entering and in response to information received from said central processor;

• said informing sequences including directions for operating said terminal, and for presenting interrelated segments of said operational data describing a plurality of transaction operations;

• said programming sequences including means for interactively controlling the operation of said video screen, data receiving and transmitting means; and for selectively retrieving said data from said means for storing;

• said means for storing comprising means for retaining said operational sequencing list and means responsive to the status of the various means for controlling their operation;

• said central processor further including:

• means responsive to data received from one of said terminals for immediately transmitting selected stored information to said terminal; and

• means responsive to an order received from a terminal for updating data in said means for storing;

whereby said system can be used by said entities, each using one of said terminals to exchange information, and to respond to inquiries and orders instantaneously and over a period of time.

The requesters further explained why they found that claims 3-6 were obvious over printed publications.

The examiner found that the requester raised a substantial question of patentability, and ordered the re-examination.

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