Appeal 2007-1992
Application 09/318,447
It is readily apparent that the Examiner has not addressed numerous
limitations in the claims on appeal (FF 1) and none of the limitations that we
have determined appear in claim 108 but do not appear in Hartman claim 13.
For example, claim 108 (as well as claims 151 and 176) provide that the user
does not need to log in to the server system when ordering an item. The
Examiner does not appear to have addressed this. Appellants made this point
in the Appeal Brief (Appeal Br. 11-12).
We note that the Examiner applied Hafner as evidence to show that it
was well known to consolidate multiple orders. FF 1. This would apply to,
for example, claim 126. But the Examiner does not explain whether Hafner
shows “automatically” consolidating multiple orders, as required by, for
example, claim 26. The examiner does not address that aspect of the claimed
consolidating of multiple orders. This was a point Appellants made in the
Appeal Brief (Appeal Br. 13).
As a result, the Examiner was not in a position to adequately
determine whether the differences in subject matter between a claim on
appeal and a Hartman patent claim render the claims patentably indistinct.
The Examiner did not satisfy the second step of the test for
determining obviousness-type double patenting. As a result, the Examiner
failed to make out a prima facie case of obviousness-type double patenting
of a claim on appeal over a Hartman patent claim and the rejection is
reversed.
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