Amir M. Farhi

Patent Trials and Appeals Board

Jul 25, 2019

13420048 - (D) (P.T.A.B. Jul. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/420,048 03/14/2012 Amir M. Farhi NETO P0241 9338
122066 7590 07/25/2019
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
07/25/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
michael.benshimon@gmail.com
pair@mb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMIR M. FARHI
____________

Appeal 2017-0106241
Application 13/420,0482
Technology Center 3600
____________

Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134(a) from the rejections of
claims 1–3 and 5–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
February 13, 2017), Reply Brief (“Reply Br.,” filed August 11, 2017), the
Examiner’s Answer (“Ans.,” mailed June 16, 2017), and Final Office Action
(“Final Act.,” mailed June 15, 2016).
2 Appellant identifies “Netotiate, Inc.” as the real party in interest. Appeal
Br. 3.
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CLAIMED INVENTION
Appellant’s claims relate generally “to a computerized negotiation
platform for electronic commerce (E-commerce) websites, and more
specifically to anonymous negotiation platforms between consumers and
merchants” (Spec. ¶ 2).
Claims 1 and 18 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for enabling a consumer-to-merchant electronic
negotiation using a mediatorial server comprising at least a
processor and a memory communicatively connected to the
processor, the mediatorial server being communicatively
connected to a merchant device of each potential merchant and a
consumer device of a consumer, the memory containing
instructions that, when executed by the processor, configure the
mediatorial server to execute the method, comprising:
[a] retrieving a personal score card for each of the potential
merchants and the consumer;
[b] ranking the consumer and the potential merchants based on
their past activities and a feedback received for each potential
merchant and the consumer with respect to their interaction;
[c] based on the score and rank, automatically providing the
consumer with a list of potential merchants for the at least one
product of choice, enabling the consumer to submit at least one
offer to each of a plurality of the potential merchants of the same
product of choice;
[d] receiving a time-limited initial binding offer from the
consumer device of the consumer for purchasing at least one
product of choice from at least one merchant of choice selected
from the list, wherein the initial offer includes at least an offered
price for the product of choice, the at least one merchant of
choice, and the product of choice, wherein the initial offer
expires after a predefined timeframe;
[e] automatically determining whether the initial offer made by
the consumer is valid;
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[f] transmitting information to the at least one merchant of choice
about the initial offer from the consumer with respect to the at
least one product of choice without revealing consumer
information;
[g] automatically generating on behalf of the merchant of choice
a time-limited response based on the initial offer and a plurality
of rules, wherein the time-limited response is any one of: an
acceptance of the initial offer, a decline of the initial offer, and
one or more time-limited counter-offers; and
[h] automatically processing the generated time-limited response
to determine at least if the consumer-to-merchant negotiation has
not been concluded.

REJECTIONS
Claims 1–3 and 5–20 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
Claims 1–3 and 5–20 are rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
Claims 1–3, 5–11, and 15–20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ong (US 2008/0215493 A1, pub.
Sept. 4, 2008), Jordan (US 2007/0255663 A1, pub. Nov. 1, 2007), Widjojo
(US 2005/0192958 A1, pub. Sept. 1, 2005), and Torrenegra (US
2009/0287596 A1, pub. Nov. 19, 2009).
Claims 12 and 13 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Ong, Jordan, Widjojo, Torrenegra, and Chatter (US
8,762,221 B2, iss. June 24, 2014).
Claim 14 is rejected under 35 U.S.C. 103(a) as being unpatentable
Ong, Jordan, Widjojo, Torrenegra, and Official Notice.
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ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1–3 and 5–20 as a group (Appeal Br. 7–22;
Reply Br. 2–10). We select independent claim 1 as representative, and the
remaining claims stand or fall with independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. However, the Supreme Court has long interpreted 35
U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). Under that guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application, i.e., that “apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
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judicial exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53; see
also MPEP § 2106.05(a)–(c), (e)–(h).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See 2019 Revised Guidance.
Appellant argues that the Examiner’s rejection is in error because “the
Examiner has not properly identified an abstract idea to which the claims are
directed” (see Appeal Br. 7–15 (emphasis omitted); see also Reply Br. 2–7).
Appellant’s arguments are not persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzed the claims using the Mayo/Alice two-step framework (see Final
Act. 2–4; see also Ans. 27–35). The Examiner determined that independent
claim 1 is directed to “product negotiation between a consumer and
merchant or creating the contractual relationship” (Final Act. 3). More
particularly, the Examiner determined that independent claim 1 is directed
towards
retrieving a personal score card .... ; ranking the consumer .... ;
providing the consumer with a list of potential merchants ..... ;
determining whether the initial offer made by the consumer is
valid; transmitting the at least one merchant of choice .... ;
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generating on behalf the merchant of choice .... ; processing the
generated time limited response ....
(id. at 2 (emphasis omitted)), which the Examiner considers to be an abstract
idea, inasmuch as it may be characterized as being related to “organizing
human activities and/or fundamental economics and/or an idea of itself” (id.
at 3; see also Ans. 27–29). The Examiner further determined independent
claim 1
does not include additional element[s] that are sufficient to
amount to significantly more than the judicial exception because
the claim recites[d] generic[ally] computer elements (e.g[.,] a
mediator server, a merchant device, a consumer device) which
do not add meaningful limitation to the abstract idea because they
would be routine in any computer implementation.
Final Act. 3.
The Examiner, thus, has followed the two-part framework specified
by the Supreme Court in Mayo/Alice consistent with Office guidelines.
In response to the Examiner’s determination, Appellant argues that the
Examiner erred in determining that the present claims are directed to an
abstract idea and that independent claim 1 “cannot be properly interpreted as
an abstract idea” (Appeal Br. 11; see also Reply Br. 2–8)(emphases
omitted). We cannot agree.
Under the first prong of step 2A of the 2019 Revised Guidance, we
first determine if the claims recite an abstract idea. In this regard, we note
that the Specification is titled “A SYSTEM AND METHOD FOR A
CONSUMER TO MERCHANT NEGOTIATION.” The Background
section of the Specification describes that “[t]he way people shop has
significantly progressed since the development of the worldwide web”
(Spec. ¶ 3). The Specification identifies that other websites provide
“comparison shopping engines (CSE) that assist consumers by presenting
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prices and information about a product the consumer may be interested in
purchasing” (id. ¶ 4). According to the Specification, “Priceline.com®
allows a consumer to make a bid for a traveling service, such as a hotel room
reservation” which allows the service provider to “either accept or reject”
the consumer’s bid, but notes that “[t]he disadvantage of such an approach is
that the consumer does not know the particulars of the vender or service
provider” (id. ¶ 5). In light of the above, the Specification states that “[i]t
would therefore be advantageous to overcome the limitations of the prior art
by providing an effective way for a consumer and a supplier to negotiate”
(id. ¶ 6).
Consistent with this description, independent claim 1 recites broadly a
computer-implemented “method for enabling a consumer-to-merchant
electronic negotiation using a mediatorial server” including steps for
“retrieving a personal score card for each of the potential merchants and the
consumer,” “ranking the consumer and the potential merchants,” “providing
the consumer with a list of potential merchants,” “receiving a time-limited
initial binding offer from the consumer device,” “determining whether the
initial offer made by the consumer is valid,” “transmitting information to the
at least one merchant of choice,” “generating on behalf of the merchant of
choice a time-limited response based on the initial offer and a plurality of
rules,” and “processing the generated time-limited response.”
Upon reviewing the Specification and the claim as a whole, as
summarized above, we agree with the Examiner that independent claim 1 is
broadly covers a “product negotiation between a consumer and merchant or
creating a contractual relationship” (Final Act. 3). Here, independent claim
1 retrieves information (i.e., personal score cards (limitation [a])), processes
information (i.e., ranking the consumer and potential merchants (limitation
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[b])), provides information (i.e., a list of potential merchants (limitation
[c])), receives information (i.e., a time-limited initial binding offer
(limitation [d])), analyzes information (i.e., determining whether an initial
offer is valid (limitation [e])), transmits information (i.e., the initial offer
from the consumer to the merchant (limitation [f])), generates information
(i.e., a merchant response (limitation [g])), and processes information (i.e.,
the response (limitation [h])).
Thus, it is clear that independent claim 1 covers negotiation between a
consumer and merchant that, under the 2019 Revised Guidance, fall under
the category of “[c]ertain methods of organizing human activity” that
include “commercial . . . interactions,” such as “advertising, marketing or
sales activities or behaviors.” Accordingly, independent claim 1 recites an
abstract idea. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (holding that concept of “creating a contractual relationship–a
‘transaction performance guaranty’” is ineligible); In re Ferguson, 558 F.3d
1359, 1364 (Fed. Cir. 2009) (holding methods “directed to organizing
business or legal relationships in the structuring of a sales force (or
marketing company)” to be ineligible).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we turn to the second prong of step 2A of the 2019 Revised
Guidance and determine whether the claims recite a practical application of
the recited judicial exception. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing
(iv) or a use of the judicial exception in some other meaningful way beyond
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generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55;
See also MPEP § 2106.05(a)–(c), (e)–(h).
Appellant argues that “the claimed improvements to the technical
field are significant and are meaningful beyond generally linking the use of
an abstract idea to a particular technological environment” (Appeal Br. 20).
However, we agree with the Examiner that the only additional elements of
the claims “are generic[ally] computer elements (e.g., mediator server
comprising a processor and memory, a merchant device, a consumer device)
which do not add a meaningful limitation to the abstract idea” (Ans. 34;
Final Act. 3). The additional elements simply allow a generic computer to
perform the claimed operations using generic computer functions (see Spec.
¶¶ 15, 16, and 31).
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the steps recited in independent claim 1 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or effects a transformation or reduction of a particular article to a different
state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention “appl[ies], rel[ies] on, or us[es] the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Turning to Step 2B of the of the 2019 Revised Guidance, we
determine whether the additional elements (1) add a specific limitation or
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combination of limitations that is not well-understood, routine, and
conventional activity in the field, which is indicative that an inventive
concept may be present or (2) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative that an
inventive concept may not be present. See 2019 Revised Guidance, 84 Fed.
Reg. at 56.
Appellant argues that even if the claims are directed to an abstract
idea, the claims are nonetheless patent-eligible because they recite
significantly more than an abstract idea in light of BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (see
Appeal Br. 18–22; see also Reply Br. 8–10). However, we can find no
parallel between the present claims and those at issue in BASCOM. Instead,
we agree with the Examiner that the additional elements taken alone or in
combination do not result in anything more than conventional computer
implementation (see Final Act. 3; see also Ans. 33–34).
Appellant argues that independent claim 1, like BASCOM, is patent-
eligible because it is “directed to a specific application of a technology in the
market place” (Appeal Br. 19; see also Reply Br. 9–10). We do not agree,
however, that BASCOM is sufficiently analogous to control the outcome
here.
In BASCOM, the Federal Circuit held that the second step of the
Mayo/Alice framework was satisfied because the claimed invention
“represents a ‘software-based invention[ ] that improve[s] the performance
of the computer system itself.’” BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014), where the patent “claimed a technical solution to a problem unique to
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the Internet,” the patent in BASCOM claimed a “technology-based
solution . . . to filter content on the Internet that overcomes existing
problems with other Internet filtering systems . . . making it more dynamic
and efficient”) (citations omitted). Here, the difficulty with Appellant’s
argument is that Appellant does not persuade us that “negotiating sales over
the [I]nternet” (Appeal Br. 19; see also Reply Br. 9) is a technological
improvement, as opposed to an improvement in a business practice for
which generic computer components are used in their ordinary capacity (see,
e.g., Spec. ¶¶ 15, 16, and 31).
Appellant argues that “[t]he claim limitations do much more than
merely implement an abstract idea on a computer or perform generic
computer functions that are well-understood, routine, and conventionally
known in the industry” (Appeal Br. 18). However, other than merely
referring to “the claim overall” as providing the improvement (see, e.g.,
Appeal Br. 17–22; see also Reply Br. 8–10), Appellant provides no further
argument, such as how the elements are arranged in a non-generic or
unconventional manner such that it is a technical improvement over prior art
ways of “product negotiation between a consumer and merchant or creating
a contractual relationship” or of “enabling a consumer-to-merchant
electronic negotiation using a mediatorial server.” See BASCOM, 827 F.3d
at 1351.
Exemplary independent claim 1, unlike the claims found non-abstract
in prior cases, uses generic computer technology to store, process and
transmit data, and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314–15 (Fed. Cir. 2016 ) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
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In this regard, we note that the structural limitations (i.e., meditorial
server, processor, memory, consumer device, merchant device) for
performing the steps of retrieving a personal score card, ranking the
consumer and potential merchants, providing a list, receiving an offer,
determining validity of the offer, transmitting information, generating a
response, and processing the response are routine computer functions that
may be performed by any computer system. See In re Katz, 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can
be achieved by any general purpose computer without special
programming”); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876
F.3d 1372, 1378 (Fed. Cir. 2017) (holding that considering claims reciting
data retrieval, analysis, modification, generation, display, and transmission
as an “‘ordered combination’” reveals that they “amount to ‘nothing
significantly more’ than an instruction to apply [an] abstract idea” using
generic computer technology) (internal citation omitted).
Appellant last argues that claim 1 is not directed to an abstract idea
because claim 1 “do[es] not have a preemptive effect for any of the alleged
subject matter exception(s)” (Appeal Br. 8–14 (emphasis omitted)).
Appellant’s argument is not persuasive. “While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the ecommerce setting do not make them any less abstract”).
And, “[w]here a patent’s claims are deemed only to disclose patent ineligible
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subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2, 3, and
5–20, which fall with independent claim 1.
Written Description
In rejecting claims 1–3 and 5–20 under 35 U.S.C. § 112(a), the
Examiner finds that there is no written description support in the
Specification regarding “how the score and ranking are being computed or
generated and what algorithm are being used in the computing ‘score and
ranking’ [sic] for each potential merchant and the consumer in order to come
up with the result” (Final Act. 6 (emphases omitted); Ans. 35). The
Examiner notes that “even if one skilled in the art would know how to
program the computer to do the functions [sic] (scoring and rankings
merchants and consumers based on the feedback), this does not mean that
the [S]pecification shows that applicant was in possession of that
knowledge” (Ans. 36).
Appellant maintains that the rejection is improper, and asserts, “that
score and rankings are well known and that the particular algorithm used is
implementation dependent, with such algorithms also being well known”
(Appeal Br. 22).
Whether a Specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
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Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
Here, as Appellant points out, the Specification discloses
In one embodiment, both the consumer and the merchant
receive a score based on respective current and past transactions
using the system 100 and each have a personal scorecard
displaying their score and relative ranking. Based on scores and
ranks, the server 130 can better match between a consumer and
a merchant.
Appeal Br. 11 (citing Spec. ¶ 27 (emphases omitted); see also Reply Br. 11).
Thus, we agree with Appellant that a person of ordinary skill in the art
would reasonably understand from the Specification, as originally filed, that
“[a] simple way to produce a score would simply be based on average rating
and using thresholds for the matching” (Appeal Br. 23), and as such,
provides support for the argued limitation at the time the application was
filed.
Therefore, we do not sustain the Examiner’s rejection of claims 1–3
and 5–20 under 35 U.S.C. § 112(a).
Obviousness
Independent claim 1 and dependent claims 2, 3, 5–11, and 15–17 rejected as
obvious over Ong, Jordan, Widjojo, and Torrenegra
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Ong, Jordan, Widjojo, and Torrenegra fails to disclose or
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suggest the subject matter of that claim (see Appeal Br. 24–31; see also
Reply Br. 12–19).
Instead, we agree with, and adopt, the Examiner’s findings and
rationales as our own (see Final Act. 8–16, 36–40 (citing Ong ¶¶ 44–48,
Figs. 5, 10; Jordan ¶ 100, Claim 15; Widjojo ¶¶ 3, 51–86, 94–96, Figs. 5–6;
Torrenegra ¶¶ 21, 97, 101–103, Figs. 3.1, 4, 8); see also Reply Br. 36–41).
We add the following discussion for emphasis.
Ong is directed to “a method and system for conducting an online
transaction that allows automatic negotiation for purchasing goods and
services, including providing a randomized number of negotiations and/or a
randomized elapsed time for negotiations” (Ong ¶ 1). More particularly,
Ong discloses:
if the buyer accepts an initial price for an item 506, then the
negotiation process is avoided. The final price 524 is set-up and
the process reaches the end 526. If the buyer does not accept the
initial price, then the method continues at 508, wherein the buyer
makes an offer, such as an offer price. The system checks
whether the maximum number of negotiation proposals or
maximum amount of negotiation time 510 has been reached. If
the maximum number of negotiation proposals is not reached (or
the maximum amount of elapsed time allotted for negotiation is
not expired), then the system analyzes the buyer’s offer to see if
the offer is too low 514. If the buyer’s offer is too low, then the
system prompts the buyer to make another offer 518. The
buyer’s subsequent offer 508 is then analyzed as described
above.
(Ong ¶ 44).
Ong further discloses
[i]f the maximum number of negotiation proposals or maximum
amount of negotiation time 510 has been reached, then the
system accepts the buyer’s offer 512 if the buyer’s offer is within
an acceptable criterion range selected by the seller, such as a
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range including a minimum value and a maximum value
(optional). In this situation, the final price 524 is determined and
the process ends 526.
(Id. ¶ 45).
Jordan is directed to “a website and software download to be used for
negotiation between online buyers and sellers, whose privacy is protected by
the option of anonymity” (Jordan ¶ 15). Jordan’s system enables consumers
“to choose their products, price and their options as well as allowing sellers
a negotiation platform designed to help them win over more customers” (id.
¶ 17).
Widjojo is directed to a system for providing “enhanced feedback in
an online transaction processing (OLTP) environment” (Widjojo ¶ 2). More
particularly, Widjojo discloses that its system utilizes a “feedback collection
module” that
enables the system to receive feedback information responsive to
completion of a transaction in an online transaction processing
environment. The feedback information may be related to one
or more performance categories. The system further includes a
feedback score generator to generate feedback score utilizing the
feedback information, and a display module to enable a second
user to access the feedback score. The feedback collection
module can collect feedback information from local and remote
systems.
(Id. ¶ 8). Widjojo further discloses that its
OLTP application server 134 retrieves the seller’s feedback
rating information from “Feedback Detail History” 280 within
enhanced feedback database structure 200 and calculates seller
feedback scores based on the feedback ratings provided in
operation 335 and feedback information automatically collected
from a local or remote system (see operation 336). In particular,
OLTP application server 134 calculates an aggregate feedback
score for the seller, as well as a feedback score for individual
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performance categories (e.g., shipment time, accuracy of
description, communication time, etc.).
(Id. ¶ 72).
Torrenegra is directed to an e-commerce system “for enabling buyers
to select sellers offering travel related services” (Torrenegra ¶ 3).
Torrenegra discloses that its system “matches a buyer’s request with a set of
sellers” and “assign[s] sellers a ranking” according to different criteria
(Torrenegra ¶ 97). Torrenegra further discloses that “buyers can specify the
minimum qualifications that a seller should have in order to be invited to
submit an offer” based on, for example a “feedback rating or ranking given
to the buyer or seller by other users” (Torrenegra ¶ 122).
Appellant first argues Ong fails to disclose or suggest, “automatically
determining, by the mediatorial server, whether the initial offer made by the
consumer is valid,” as recited by limitation [e] of independent claim 1
(Appeal Br. 24–25; Reply Br. 12–13). More particularly, Appellant argues
a valid offer is an offer that was checked for consistency, was not
provided to the server 130 within a forbidden timeframe, or was
otherwise provided within an allowed timeframe where for
example, the consumer is identified as having a valid form of
payment that is consistent with the offer made, and so on and so
forth. Thus, it appears that an offer according to Appellant’s
claim language could be for a totally ridiculously unreasonable
(to the seller) and totally unacceptable (to the seller) low price,
and yet it could be a valid offer if the other criteria required for
a valid offer are met. In other words, in Appellant’s claims, the
validity of an offer is not based on price.
(Appeal Br. 25 (citing Spec. ¶ 19)).
Appellant’s argument is not persuasive. At the outset, we note that
although claim language is properly construed in light of the specification,
limitations from the specification are not to be read into the claims.
See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Here, we
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find nothing in the language of independent claim 1 that would limit how the
validity determination is performed. And, as the Examiner correctly
observes, Appellant’s Specification does not provide an explicit definition
for the terms “valid” or “valid offer” (see Ans. 37) to support Appellant’s
interpretation. Instead, Appellant’s Specification broadly describes that
[a] valid offer is an offer that was checked for consistency, was
not provided to the server 130 within a forbidden timeframe, or
was otherwise provided within an allowed timeframe where for
example, the consumer is identified as having a valid form of
payment that is consistent with the offer made, and so on and so
forth. The merchant may respond via the server 130 of
acceptance, rejection or counter offer to the offer made by the
consumer.
(Spec. ¶ 18). In light of the language of the claim and Appellant’s
Specification, we agree with the Examiner that that a broadest reasonable
interpretation of “determining whether the initial offer made by the
consumer is valid” reads on Ong’s disclosure that “[t]he system analyzes the
buyer’s offer to see if the offer is too low 514” (see Ong ¶ 44), and as such,
constitutes “determining whether the initial offer made by the consumer is
valid” as required by independent claim 1 (see Final Act. 9–10, 36–37; see
also Ans. 36–37). We also note that Ong discloses that “[t]he system checks
whether the maximum number of negotiation proposals or maximum amount
of negotiation time 510 has been reached” before additional analysis of the
offer for generation of a response, and as such, also addresses the argued
limitation in a manner consistent with Appellant’s claim and the
Specification. Thus, we are not persuaded by Appellant’s argument.
We also are not persuaded of error by Appellant’s argument that Ong
“teaches away” from transmitting information about the initial offer to the
merchant of choice “without revealing consumer information” because Ong
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“appears to teach a method where the buyer directly contacts the seller,
which would appear to reveal the buyer’s information, e.g., identity” (see
Appeal Br. 25–27; see also Reply Br. 13–16).
Instead, we agree with the Examiner there is nothing in Ong that
teaches away or discourages anonymity or would otherwise establish that it
would be “undesirable if the customer’s identity/buyer’s identity is not
provided to the merchant as shown in Jordan” (Ans. 38–39). To the
contrary, Ong discloses that its system enables negotiation to be “conducted
such that the identity of the source of an offer to purchase over a network is
confidential” (Ong ¶ 63). Moreover, we note that Jordan is directed to “a
website and downloadable software for direct negotiation between buyers
and sellers for products and services” (Jordan ¶ 3). Jordan discloses an
online negotiation system in which the “buyer can be anonymous” (Jordan
¶ 15; claim 15).
Although Appellant argues that the offers in Jordan “do not appear to
be binding offers, as required by Appellant’s claim” (Appeal Br. 27; see also
Reply Br. 15–16)(emphases omitted), we find Appellant’s argument fails to
recognize that the Examiner is relying on Jordan “to teach ‘transmitting
information to the at least one merchant about the initial offer from the
consumer . . . without revealing consumer information’” and relying on Ong
to address the transmission of information about the initial offer generally
(see Ans. 38–39; see also Final Act. 11–12). Thus, the combination of Ong
and Jordan discloses “transmitting information to the at least one merchant
of choice about the initial offer from the consumer . . . without revealing
consumer information,” as recited by independent claim 1.
Equally unpersuasive is Appellant’s argument that Torrenegra
“teaches away” from the concept of ranking each seller of the set of sellers
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to determine which of the set of sellers is to be provided to the buyer (see
Appeal Br. 28–29; see also Reply Br. 16–18).
Instead, we agree with the Examiner that Torrenegra discloses
“providing the buyer [a] list of sellers based on the rating feedback and
ranking for the buyer to submit offers to a plurality of sellers” (Ans. 40
(citing Torrenegra ¶¶ 21, 97, and 101–103)). In this regard, Torrenegra
discloses that the system “matches a buyer’s request with a set of sellers”
and “assign[s] sellers a ranking” according to different criteria (Torrenegra
¶ 97). Torrenegra further discloses that “buyers can specify the minimum
qualifications that a seller should have in order to be invited to submit an
offer,” including the “feedback rating or ranking given to the buyer or seller
by other users” (Torrenegra ¶ 122).
To the extent Appellant argues that Torrenegra “teach[es] the
opposite of Appellant’s invention” because Torrenegra discloses “the sellers
make the initial binding offer, not the buyer” (Appeal Br. 28; see also Reply
Br. 16–17), we find Appellant’s assertion fails to recognize that the
Examiner is relying on Torrenegra to teach “ranking each seller of the set of
sellers to determine which of the set of sellers to be provided to the buyer”
and relying on Ong to teach the receiving of an initial offer from the
consumer device generally (see Ans. 40; see also Final Act. 9–16).
Therefore, given that the Examiner relies on Ong to disclose the steps
of receiving of an initial offer from the consumer device and ranking the
consumer and potential merchants generally and Torrenegra to disclose
providing the buyer with a list of sellers based on a rating feedback and
ranking such that the buyer can choose to submit offers to the sellers (see
Ans. 40; see also Final Act. 9–16), we find the combination of Ong and
Torrenegra renders obvious the step of “based on the score and rank,
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automatically providing the consumer with a list of potential merchants for
the at least one product of choice, enabling the consumer to submit at least
one offer to each of a plurality of the potential merchants of the same
product of choice” as generally recited by independent claim 1.
Appellant last argues “that there is no real motivation provided to
make the entire combination in toto, and furthermore, there is no showing by
the Examiner that the proposed overall combination would solve the
problem recognized by Appellant” (Appeal Br. 30 (emphases omitted); see
also Reply Br. 17–20). Instead, Appellant argues that the Examiner’s
rejection is based on improper hindsight reasoning (see Appeal Br. 31; see
also Reply Br. 18–19). We cannot agree.
In making this determination, we note that the Supreme Court has
made clear that when considering obviousness “the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ” (see KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). We find that the Examiner has
provided an “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” (see id. (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). On pages 9 through 16 of the Final Action,
the Examiner provides the required rationale to support the combination.
More particularly, with respect to combining Ong and Jordan, the Examiner
states it would be obvious to modify Ong “to include notifying the at least
one merchant of choice about the initial offer from the consumer without
providing consumer’s identity as taught by JORDAN so that the seller will
determined whether the initial offer from the buyer is acceptable or declined
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as well as protecting consumer’s identity” (Final Act. 11–12). With respect
to combining Widjojo with Ong and Jordan, the Examiner states
it would have been obvious to one of ordinary skill in the art at
the time of the invention to provide the method and system for a
consumer to merchant electronic negotiation of ONG/JORDAN
to include discloses retrieving the feedback score for seller) and
buyer and rating the seller, buyer based on their past activities
and a feedback received from seller, buyer with respect of their
interaction.as taught by WIDJOJO in order to trading parties
(seller/buyer) within an OLTP environment have sufficient
knowledge concerning the historical trading reputation of their
trading partners (WIDJOJO par. 0003) and further since the
claimed invention is merely a combination of old elements, and
in the combination each element merely would have performed
the same function as it did separately which one of ordinary skill
in the art would have recognized that the results of the
combination were predictable.
(Final Act. 14–15). And, with respect to combining Torrenegra with Ong,
Jordan, and Widjojo, the Examiner takes the concludes
it would have been obvious to one of ordinary skill in the art at
the time of the invention to provide the rating and scoring the
buyer and seller based the past transaction and feedback of
ONG/JORDAN/WIDJOJO to include providing the buyer the
list of sellers based on the rating feedback and ranking for the
buyer to submit offers to plurality of sellers as taught by
TORRENEGRA in order to provide the buyer to find a suitable
seller, as well as the seller to find a suitable buyer based on buyer
and seller’s criteria e.g. buyer and seller’s feedback rating and
ranking.
(Final Act. 16).
We note that Appellant’s argument does not address whether the
modification described by the Examiner is more than the predictable use of
prior art elements according to their established functions nor do they
specifically mention or contest the substance of the Examiner’s rationale, but
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rather only generally asserts that “there is no showing by the Examiner as to
how these references could be combined to form Appellant’s invention as
claimed” (Appeal Br. 30; Reply Br. 18–19). Therefore, in the absence of
specific, technical arguments as to why the motivation is insufficient or why
the modification described by the Examiner is more than the predictable use
of prior art elements according to their established functions, we find
Appellant’s arguments to be unpersuasive.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also sustain the Examiner’s rejection of claims 2, 3, 5–11, and 15–17, which
depend from independent claim 1, and are not argued separately.
Independent claim 18 and dependent claim 19 and 20 rejected as obvious
over Ong, Jordan, Widjojo, and Torrenegra
Appellant argues that independent claim 18 is allowable for the same
reasons set forth with respect to claim 1 (Appeal Br. 31). We are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s
rejection of independent claim 18 under 35 U.S.C. § 103(a) for the same
reasons. We also sustain the rejection under 35 U.S.C. § 103(a) of claim 19
and 20, which depend from independent claim 18, and are not argued
separately.
Dependent claim 12 and 13 rejected as obvious over Ong, Jordan, Widjojo,
Torrenegra, and Chatter.
Appellant does not offer any argument in support of the patentability
of claims 12 and 13 other than to assert that “[t]he added reference Chatter is
not cited by the Examiner as curing the deficiencies of the rejection under
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§ 103 pointed out above with respect to independent claim 1” (see Appeal
Br. 32).
Appellant’s argument is not persuasive of error on the part of the
Examiner because it does not amount to a substantive argument for
patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“more
substantive arguments in an appeal brief [are required] than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art”). Therefore, in the absence of any
substantive arguments, we sustain the Examiner’s rejection of claims 12 and
13 under 35 U.S.C. § 103(a) as unpatentable over Ong, Jordan, Widjojo,
Torrenegra, and Chatter.
Dependent claim 14 rejected as obvious over Ong, Jordan, Widjojo,
Torrenegra, and Official Notice
Claim 14 depends from claim 8, and recites, “wherein examining
whether the initial offer is valid further includes checking if the billing
information is corrected.”
In rejecting dependent claim 14, the Examiner took Official Notice
“that checking if the billing information is corrected is known in the art”
(Final Act. 26), and concludes
[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to provide the transaction between the
buyer and seller of ONG/JORDAN/ WIDJOJO/
TORRENEGRA to include the verifying [of] billing information
as taught by Official Notice in order to make sure that billing
information of the buyer/customer is corrected before the
transaction is processed.
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(Id. at 27). To support the Examiner’s Official Notice, the Examiner relies
on column 8, lines 28–38 of Alvin3, as disclosing
the known concept of receiving the billing information from the
customer and verifying the billing information to determine and
if the billing information is corrected e.g. check on the order
information for completeness such as billing address
information, shipping address information, and method of
payment. For example, credit card information is checked to
verify that the credit card is not yet expired for credit card
purchases. If the data integrity check fails on the order, the
customer is notified of the incomplete portions of the order for
correction.
Final Act. 26–27.
In response, Appellant argues that the Examiner erred in rejecting
claim 14 under 35 U.S.C. § 103(a) as unpatentable over Ong, Jordan,
Widjojo, Torrenegra, and Official Notice, because
claim 14 goes to checking whether an offer is valid, which is
prior to there being a completed or agreed upon transaction. It is
respectfully submitted that one of ordinary skill on the art would
view checking the billing information for an offer which may not
turn into a completed or agreed upon transaction to be premature
and wasteful of resources, and would not do so.
(Appeal Br. 32). Appellant also argues that the Examiner’s taking of
Official Notice “is unsupported by any specific documentary evidence” (id.
at 33). Appellant’s argument is persuasive.
At the outset, we note that the Examiner does provide evidence to
support the Examiner’s taking of Official Notice (see Final Act. 26–27
(citing Alvin, col. 8, ll. 28–38)). However, the Examiner does not respond
to Appellant’s argument in the Answer. And, based on the record, the

3 U.S. Pat. No.: 7,139,731 B1, iss. Nov. 21, 2006
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Examiner’s reasoning does not persuade us that the specific requirements of
claim 14 would have been obvious.
In view of the foregoing, we do not sustain the Examiner’s rejection
of dependent claim 14 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1–3 and 5–20 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 1–3 and 5–20 under 35 U.S.C.
§ 112 (pre-AIA), first paragraph, is reversed.
The Examiner’s rejections of claims 1–3, 5–13, and 15–20 under
35 U.S.C. § 103(a) are affirmed.
The Examiner rejection of claim 14 under 35 U.S.C. § 103(a) is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED