Ex Parte Carrott

Board of Patent Appeals and Interferences

Mar 5, 2004

09475126 (B.P.A.I. Mar. 5, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD F. CARROTT
____________
Appeal No. 2002-0828
Application No. 09/475,126
____________
ON BRIEF
____________
Before FLEMING, RUGGIERO, and SAADAT, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-42, all the claims present in the instant application.
Invention
The invention relates to e-commerce. In particular, the
invention relates to promoting sales of services and merchandise
over the Internet. See page 1 of Appellant's specification. The
invention solves the problem of how to divide an otherwise
indivisible Internet into defined geographic areas for useful
purposes such as promoting product sales and paying commissions.
See page 5 of Appellant's specification.
Appeal No. 2002-0828
Application No. 09/475,126
2
Appellant's claim 1 is representative of the claimed
invention and is reproduced as follows:
A method of allocating commissions comprising:
providing exclusive geographic distribution/representation
areas;
recording sales to said exclusive geographic
distribution/representation areas placed through an Internet web
site;
determining a value of said sales to each of said geographic
distribution/representation areas; and
allocating said commissions based solely on said value of
said sales delivered to each of said geographic
distribution/representation areas.
References
The references relied on by the Examiner are as follows:
Smithies et al. 6,091,835 Jul. 18, 2000
(Smithies) (filed Feb. 17, 1998)
http://www.travelsavers.com/about.asp
Rice, Kate "Consumer Web Site Breaks New Ground" Leisure Travel
News, v15, n21 (June 7, 1999) p11;
SanFilippo, Michelle "Travelsavers' Rescue Plan" Travel Agent,
v295, n12 (July 12, 1999) p21
Appeal No. 2002-0828
Application No. 09/475,126
1 Travelsavers is a multi-million dollar chain of
independent travel agencies operating as a business in the United
States and Mexico as well as over 9,000 worldwide affiliates.
The Examiner has used Rice and SanFilippo and the Travelsavers'
web page to establish how and when this business operates.
2 Appellant filed an appeal brief on June 18, 2001.
Appellant filed a reply brief on January 7, 2002. The Examiner
mailed an Office communication on January 18, 2002 stating that
the reply brief has been entered.
3
Rejections at Issue
Claims 1-6, 8-13, 15-20, 22-27, 29 and 36 stand rejected
under 35 U.S.C. § 102 as being anticipated by Travelsavers.1
Claims 7, 14, 21, 28, 30-35 and 37-42 stand rejected under
35 U.S.C. § 103 as being unpatentable over Travelsavers in view
of Smithies.
Throughout our opinion, we will make reference to the
briefs2 and the answer.
OPINION
With full consideration being given the subject matter on
appeal, the Examiner's rejections and the arguments of Appellant
and the Examiner, for the reasons stated infra, we reverse the
Examiner's rejection of claims 1-6, 8-13, 15-20, 22-27, 29 and 36
under 35 U.S.C. § 102 and we reverse the Examiner's rejection of
claims 7, 14, 21, 28, 30-35 and 37-42 under 35 U.S.C. § 103.
Appeal No. 2002-0828
Application No. 09/475,126
4
Rejection under 35 U.S.C. § 102
The Appellant argues that the Examiner has not established
that Travelsavers allocates commissions based solely on the value
of said sales delivered to each of the geographic
distribution/representation areas. In particular, Appellant
argues that the evidence relied on by the Examiner which is the
Rice and SanFilippo articles as well as the Travelsavers web site
does not utilize the delivery location of goods or services to
calculate commissions as in the claimed invention. Furthermore,
Appellant argues that Travelsavers does not handle or administer
any type of commissions to its member agents. Appellant argues
that Travelsavers only provides a referral and allows each
individual member travel agent to profit from that referral
according to each travel agent's individual marketing system.
See pages 8-12 of the brief and the reply brief.
It is axiomatic that anticipation of a claim under § 102 can
be found only if the prior art reference discloses every element
of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
Appeal No. 2002-0828
Application No. 09/475,126
5
Upon our review of the Travelsavers' website, Rice and
SanFilippo, we fail to find that these references teach a system
for allocating commissions. Travelsavers presents a web-base
system that provides national marketing and advertising
initiatives to motivate customers to travel and then the website
refers them to member agencies. Travelsavers does not determine
commissions for their member agencies. These commissions are not
paid based solely upon the sales delivered to each of the
geographic distribution/representation areas. The commissions
are based upon which member agency made the sale. Therefore, we
will not sustain the Examiner's rejection of Appellant's claims
under 35 U.S.C. § 102.
Rejection under 35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
Appeal No. 2002-0828
Application No. 09/475,126
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skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." In re
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must
not only assure that the requisite findings are made, based on
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the agency's conclusion." In
re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
Claims 7, 14, 21, 28, 30-35 and 37-42 stand rejected under
35 U.S.C. § 103 as being unpatentable over Travelsavers in view
of Smithies. We note that the Examiner is relying on
Travelsavers for the teaching of allocating commissions based
solely upon the value of said sales delivered to each of the
Appeal No. 2002-0828
Application No. 09/475,126
7
geographic distribution/representative areas. Furthermore, we
fail to find that Smithies teaches this limitation. Therefore,
we will not sustain this rejection for the same reasons as above.
In view of the foregoing, we have not sustained the
Examiner's rejection of claims 1-6, 8-13, 15-20, 22-27, 29 and 36
under 35 U.S.C. § 102 and we have not sustained the Examiner's
rejection of claims 7, 14, 21, 28, 30-35 and 37-42 under
35 U.S.C. § 103.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MRF/lbg
Appeal No. 2002-0828
Application No. 09/475,126
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FREDERICK W. GIBB, III
MCGINN & GIBB, PLLC
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