Ex Parte Brett et alDownload PDFPatent Trial and Appeal BoardJun 25, 201309979326 (P.T.A.B. Jun. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID H. BRETT, DOUGLAS G. CHEPIL, and STEPHEN C. HAWTREE ____________ Appeal 2013-002019 Application 09/979,326 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and NINA L. MEDLOCK, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David H. Brett, et al. (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1, 4-9, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2013-002019 Application 09/979,326 2 SUMMARY OF DECISION We AFFIRM.1 THE INVENTION The invention “relates to a computer based method of managing the sale by auction of commodities and services utilizing a digital communication network linking a server computer system with a plurality of remote terminals.” Spec. 1:3-5. Sole independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. In a digital communications network wherein a server computer system is operatively linkable for bi-directional communications with a plurality of remote terminals, each remote terminal being under the control of a user of the network, a method of offering digital data by auction to such users, said method comprising the steps of: (a) storing digital data in a server computer system, wherein digital data means any data representing information or knowledge and which is capable of being stored in and retrieved from a computer or computer server system, which is effectively of unlimited supply, and which is transmitted over a digital channel, and displayed on a computer screen or other display device; (b) storing information relating to said digital data in said server computer system, said information including: (i) information identifying said digital data; and 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Apr. 5, 2012) and Reply Brief (“Reply Br.,” filed Nov. 19, 2012), and the Examiner’s Answer (“Ans.,” mailed Sep. 17, 2012). Appeal 2013-002019 Application 09/979,326 3 (ii) information representing a current ask price for said digital data; (c) in response to an information request command from any requesting one of said terminals, transmitting said information relating to said digital data from said server computer system to said requesting terminal for display by said requesting terminal; (d) receiving at said server computer system bid information transmitted from said remote terminals, said bid information including: (i) information identifying the user sending the bid information; and (ii) information representing the amount bid for said digital data by such user, (e) analyzing with said server computer system bid information so received and, in response thereto: (i) automatically raising said current ask price by a controlled amount if a predetermined criteria for doing so is satisfied; (ii) automatically lowering said current ask price by a controlled amount if a predetermined criteria for doing so is satisfied; and (iii) automatically generating an acceptance signal signifying the receipt of an acceptable bid in any case where said bid information satisfies predetermined criteria for acceptance; and (f) permitting said digital data to be downloaded from said computer server system to one of said remote terminals by any user submitting said acceptable bid. Appeal 2013-002019 Application 09/979,326 4 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Fraser Fisher Miyashita US 5,905,974 US 6,243,691 B1 US 2001/0014876 A1 May 18, 1999 Jun. 5, 2001 Aug. 16, 2001 The following rejection is before us for review: 1. Claims 1, 4-9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fraser, Fisher, and Miyashita. ISSUE Did the Examiner err in concluding that the claimed subject matter would have been obvious to one of ordinary skill in the art given the cited prior art rejection? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Final Rejection, pages 5-8. Additional findings of fact may appear in the Analysis below. ANALYSIS The Appellants argued claims 1, 4-9, 14, and 15 as a group (App. Br. 7-24). We select claim 1 (supra) as the representative claim for this group, and the remaining claims 4-9, 14, and 15 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2013-002019 Application 09/979,326 5 The Appellants argue that the Examiner has failed to present a prima facie case of obviousness. App. Br. 9. According to the Appellants, Fraser and Fisher are irrelevant because they do not disclose storing “digital data” and auctioning the stored “digital data.” According to the Appellants, Fraser “refers only to storing market data relating to the auction items” (App. Br. 10) and “Fisher is concerned with methods for ‘conducting a multi-bidder, interactive auction without using a human auctioneer to conduct the auction’ (column 5, lines 39-41). Fisher, like Fraser, makes no suggestion that the merchandise in question might be digital data.” (App. Br. 10). Both Fraser and Fisher disclose digital data processing systems that support auctions. For example, Fraser provides for “auction processing” (block 210 in Fig. 2; col. 8, ll. 22-29). The difference between the claimed method and that disclosed in Fraser and Fisher is not in the storing/processing of digital data but in the items up for auction. In Fraser and Fisher, the auction items are financial instruments (Fraser) or merchandise (Fisher) while the claimed method auctions “digital data” of unlimited supply stored on a server. Miyashita (see Fig. 2 and associated disclosure at para. [0046]) discloses the auctioning of digital music/video content on a server. (See also para. [0044]: Original music and video is “an object to be auctioned.”) Such content is “digital data” that necessarily is “transmitted over a digital channel, and displayed on a computer screen or other display device” (claim 1). In light of Miyashita, it would have been obvious to one of ordinary skill Appeal 2013-002019 Application 09/979,326 6 in the art to auction server-stored “digital data” (albeit in the form of audio/video content) rather than financial instruments (Fraser) or merchandise (Fisher). The Appellants challenge Miyashita as evidence of auctioning “digital data” of unlimited supply stored on a server as the claims require. Appellants argue that Miyashita does not involve “digital data” effectively of unlimited supply. App. Br. 12. However, the Specification does not define “digital data” effectively of unlimited supply. Accordingly, we give it the ordinary and customary meaning one of ordinary skill in the art would give it, which would reasonably broadly be an endless supply of digital data. In that regard, the supply of digital data that the Miyashita process provides is effectively endless, limited only to the extent determined by the content and advertisement providers. Appellants further argue that the auction bidder/buyer plays no role in the Miyashita auction process. According to the Appellants, in the claimed method, “the same person who places the bid downloads the digital data if the bid is successful.” App. Br. 13. The difficulty with this argument is that claim 1 is not so limited. It more broadly calls for “permitting said digital data to be downloaded from said computer server system to one of said remote terminals by any user submitting said acceptable bid.” Emphasis added. Also, one of ordinary skill in the art would know that in the conventional auction process (see Fraser and Fisher) a winning bidder receives the item bid on. Where an item is digital content, as in Miyashita, Appeal 2013-002019 Application 09/979,326 7 receipt is achieved via downloading the digital content. Accordingly, one of ordinary skill in the art would foresee a winning bidder of digital data given permission to download said data. We note the argument in the Reply Brief (p. 2) to the effect that, in claiming “digital data is effectively of unlimited supply,” the claim means “an unlimited number of bidders can win the right to download the digital data at the same price. Thus, there is no digital data quantity limitation that can serve as a trigger to end in auction (or to raise or lower acceptable bid prices).” We view this as attorney argument as we can find no supporting evidence for such a narrow construction of the claim on the record before us. As such and because it is a construction not commensurate in scope with what is claimed, it is not basis for a persuasive argument as to error in the rejection. Finally, the Appellants criticize the combination of references: “How would one of ordinary skill in the art use the disclosures of Fisher, Fraser, and Miyashita to come up with the presently claimed invention, especially when not all of the elements of the claimed invention are present in the cited references?” App. Br. 15. The Appellants find that the Examiner has “oversimplified” the claimed process. App. Br. 17. We disagree. The fact that Fisher and Fraser are not directed to auctioning digital content while Miyashita is, does not defeat the prima facie case. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary Appeal 2013-002019 Application 09/979,326 8 skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson's-Black Rock are illustrative-a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). The fact that “not all of the elements of the claimed invention are present in the cited references” (App. Br. 17) is also not defeating. “As our precedents make clear, however, 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.” KSR at 418. We are in agreement with the Examiner. In our view, one of ordinary skill in the art would have been led to the claimed process by applying the Fisher/Fraser system and auctioning techniques to the auctioning of digital content as Miyashita describes. “[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR at 417. In that regard, the Appellants have not come forward with evidence of unexpected results from auctioning digital data in the manner claimed. For the reasons given by the Examiner, we find that a prima facie case of obviousness has been established in the first instance. The arguments challenging the case having been reviewed and not found persuasive as to error in that case, the rejection is sustained. Appeal 2013-002019 Application 09/979,326 9 CONCLUSION The rejection of claims 1, 4-9, 14, and 15 under 35 U.S.C. § 103(a) as being unpatentable over Fraser, Fisher, and Miyashita is sustained. DECISION The decision of the Examiner to reject claims 1, 4-9, 14, and 15 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh Copy with citationCopy as parenthetical citation