Ex Parte Daman et al

Board of Patent Appeals and Interferences

Mar 8, 2010

09767126 (B.P.A.I. Mar. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLEM DAMAN and
JAMES A. MCINNES
___________

Appeal 2009-003999
Application 09/767,126
Technology Center 3600
____________

Decided: March 8, 2010
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-003999
Application 09/767,126

2
STATEMENT OF THE CASE
Willem Daman, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-37. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 1

THE INVENTION
This invention is “an automated auction system which supports
technology for information updates, a large number of simultaneous
transactions, rapid decision-making and auction closure.” Specification
18:20-23.
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.
21. A method for conducting a transaction, comprising the steps
of:
identifying a subject;
specifying a set of rules relating to a transaction
involving the subject;
implementing the set of rules of transaction proximate to
a client for ensuring compliance with each of said rules;
efficiently communicating transaction information from
the client to a server complying with said rules; and
receiving, at said server, transaction information from a
client.

1 1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Feb. 7, 2008) and the Examiner’s Answer (“Answer,” mailed May 29,
2008).

Appeal 2009-003999
Application 09/767,126

3

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Alaia
Friedland
US 6,230,146 B1
US 6,449,601 B1
May 8, 2001
Sep. 10, 2002

The following rejection is before us for review:
1. Claims 1-37 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Friedland and Alaia.

ISSUE
The issue is whether claims 1-37 are obvious under 35 U.S.C. §103(a)
over Friedland and Alaia.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

The scope and content of the prior art
Friedland
1. Friedland describes a distributed live auction (DLA) system, where
live auctions are conducted in the presence of remote bidders via
the Internet. Col. 2, l. 66 – col. 3, l. 2.
Appeal 2009-003999
Application 09/767,126

4
2. Friedland’s DLA system having an auction server, which is
connected to the remote bidders, through the Internet. Col. 8, ll. 6 -
17.
3. Friedland describes that the auction server is connected to the
remote bidders via a hierarchy of collector/redistributor nodes.
Col. 9, ll. 13-38.
4. Friedland states:
Similarly, the hierarchical interconnection of
collector/redistributor nodes allows for filtering bids,
using a variety of criteria, including lot and auction ID
verification, bid value, and various bid inventory checks.
The bid inventory checks include checks to make sure
that there is sufficient inventory available for a particular
bid and to make sure the bid meets minimum inventory
requirements established on the floor by the auctioneer,
e.g. minimum quantities in quantity lots. Only valid bids
with the highest detected bid prices submitted by the
remote bidders’ computers connected to a particular
collector/redistributor node are propagated back towards
the server computer 404. This greatly reduces network
traffic and message handling in upstream
collector/redistributor nodes, the server computer 404,
and the on-site computer 402.
Col. 9, ll. 49-63.
5. Friedland states that the hierarchy of collector/redistributors nodes
“efficiently” collects and filters bids and passes potentially
winning bids onto the auction server. Col. 3, ll. 23-26.
6. In the Background of the Invention, Friedland describes two types
of auctions - Yankee auctions, which begin with a low asking price
that is increased, and Dutch auctions, which being with a high
price that is decreased. Col. 2, ll. 6-11.
Appeal 2009-003999
Application 09/767,126

5
7. In column 8, lines 10-50, Friedland describes that the DLA auction
server 312 broadcasts status updates via the Internet 314 to a
number of remote bidders and that the updates need to be received
in time periods on the order of a second or less.
8. Friedland describes the status messages includes information about
remaining inventory in the identified lot and a text field, which
could include other information about the status of the auction.
9. Friedland describes some states of auction as “open-for-bidding,”
“presold,” “fair warning,” “last chance,” “sold,” and “inventory
reduction.” Col. 7, ll. 26-29
Alaia
10. The Examiner cited Alaia to teach decision rules. Answer 5.
Any differences between the claimed subject matter and the prior art
11. Friedland does not describe automatically maintaining
synchronization of a clock at each remote location.
The level of skill in the art
12. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of transaction processing
networks. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”)
(Quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
F.2d 158, 163 (Fed. Cir. 1985)).
Appeal 2009-003999
Application 09/767,126

6
Secondary considerations
13. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

Appeal 2009-003999
Application 09/767,126

7
ANALYSIS
The rejection of claims 1-37 under §103(a) as being unpatentable over
Friedland and Alaia.
Claims 1 and 5
The Appellants argue claims 1-5 as a group. Br. 15-16. We select
claim 1 as the representative claim for this group, and the remaining claim 5
stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Claim 1 recites a step of “decrementing the offer price over time.”
The Appellants argue that, while Friedland does mention a descending price
auction, Friedland’s distributed live auction system is an ascending price
auction. See Br. 15-16. Friedland mentions that Dutch auctions are a type
of auction where the price decreases in the Background of Invention. FF 6.
Therefore, the Appellants argue that Friedland’s description of a descending
price auction is not “relevant.” Br. 15-16. Further, the Appellants argue that
there is no teaching or suggestion to modify Friedland since Friedland
teaches away from the present method because Friedland’s filters would not
be “terribly useful” in a descending price auction and, therefore Friedland
teaches away. Br. 16.
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413,
425, (CCPA 1981). We note that patents are “revelant for all they contain.”
In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983).
We find that one of ordinary skill in the art would have been led by
Friedland’s teaching of different auction types to modify Friedland’s
Appeal 2009-003999
Application 09/767,126

8
preferred embodiment of a distributed live auction (DLA) system to be a
descending auction instead of an ascending auction.
The Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR, 550 U.S. at 415. (citing Graham, 383 U.S. at 12 (emphasis added)),
and reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416. The
operative question in this “functional approach” is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 415.
Given Friedland’s DLA system (FF 1) and the teaching that a
decreasing price auction is a known type of auction (FF 6), we find that one
of ordinary skill in the art would have been led to make the DLA system a
decreasing price auction. We find that modifying Friedland’s preferred
embodiment to be a decreasing price auction would be nothing more than
the predictable use of prior art elements according to their established
functions.
Further, we find that Friedland does not teach away from the proposed
modification because Friedland’s preferred embodiment describes filters that
have criteria designed to decrease network traffic in an ascending auction.
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). The fact that the filters in the preferred embodiment have some
Appeal 2009-003999
Application 09/767,126

9
criteria related to an ascending price auction does not discourage a person of
ordinary skill in the art from modifying Friedland to be a descending price
auction. We note that Friedland teaches the filter using “variety of criteria”
(FF 4) and that one of ordinary skill in the art would know to modify the
criteria for a decreasing price auction.
Accordingly, we find that the Appellants have not overcome the prima
facie showing of obviousness, and we sustain the rejection of claim 1 and
claim 5, dependent thereon, under §103(a) as being unpatentable over
Friedland and Alaia.

Claim 2
Claim 2 recites that “the local server comprises a rule database, and
requires that the bid identifications transmitted to the central server
conforms to rules in the rule database.” The Examiner applied Alaia to
teach a local server comprising a rule database. FF 10. The Appellants
argue that Alaia does not teach this limitation. Br. 16-17.
However, we find that Friedland’s filters, which are stored on the
collector/redistributor nodes (i.e. local servers) teaches this limitation. FF 4.
The filters require that the bids conform to certain criteria (i.e. rules) in order
to be passed to the server computer 404 (i.e. the central server). Id. The
criteria must be stored on the collector/redistributor nodes in order for the
nodes to do the filtering.
Accordingly, we find that the Appellants have not overcome the prima
facie showing of obviousness, and we sustain the rejection of claim 2 under
§103(a) as being unpatentable over Friedland and Alaia.

Appeal 2009-003999
Application 09/767,126

10
Claim 3
Claim 3 recites “wherein the information communicated between the
central server and the local server is compressed.” The Appellants argue
that it is not obvious to modify Friedland’s distributed live auction system to
perform this limitation because there is “no particular motivation” to further
process the bids to be compressed. Br. 17. However, the Examiner found
that one of ordinary skill in the art would have been led to compress the bids
to “to reduce bandwidth and to consequently provide faster (real-time)
communication between the central serve and the remote server.” Answer 4.
Accordingly, we find that the Appellants have not overcome the prima
facie showing of obviousness, and we sustain the rejection of claim 3 under
§103(a) as unpatentable over Friedland and Alaia.

Claim 4
Claim 4 recites “wherein information is contained in a data packet
comprising quantity remaining information for a plurality of lots.” The
Appellants argue that neither Friedland nor Alaia provides an affirmative
teaching required to render the claim obvious. Br. 17. The Examiner
reasoned that Friedland is transmitting information over the Internet and that
data packets are used in a data-packet network, such as the Internet. Answer
4. Therefore, the Examiner concludes it would be obvious to use data packet
to transmit information over the Internet. Answer 5. We note that Friedland
describes transmitting status messages, which contain the available
inventory for an identified lot and a text field for other status updates about
the auction. FF 8-9.
Appeal 2009-003999
Application 09/767,126

11
The Appellants do not respond to the Examiner’s rationale in finding
the claim obvious, but only argue that neither reference teaches the
limitation. Br. 17. Accordingly, we find that the Appellants have not
overcome the prima facie showing of obviousness, and we sustain the
rejection of claim 4 under §103(a) as unpatentable over Friedland and Alaia.

Claims 6 and 7
Claim 6 recites “receiving bid identifications . . . from the plurality of
remote locations by communicating between a set of users and a plurality of
remote servers at respective remote locations to interactively define the bid
identification.” The Appellants argue that neither Friedland nor Alaia teach
this limitation. Br. 18.
The Examiner’s does not mention this step in the rejection nor point to
where in Friedland or Alaia this step is taught. Answer 4-5. With respect to
claim 6, the Examiner only states:
In response to applicant’s argument that claim 6, a
recitation of the intended use of the claimed
invention must result in a structural difference
between the claimed invention and the prior art in
order to patentably distinguish the claimed
invention from the prior art. If the prior art
structure is capable of performing the intended use,
then it meets the claim.
Answer 5. However, claim 6 recites a method and the limitation at issue is
not a recitation of intended use, but a positively recited step.
Appeal 2009-003999
Application 09/767,126

12
Accordingly, we find that the Appellants have overcome the prima
facie showing of obviousness, and we reverse the rejection of claim 6, and
claim 7, dependent thereon, under 35 §103(a) as unpatentable over Friedland
and Alaia.

Claims 8-13
Independent claim 8 recites an auction method with a step of
“automatically maintaining synchronization of a clock at each remote
location.” The Appellants argue that neither Friedland nor Alaia teach any
clock synchronization. Br.19. The Examiner points to “updates to bidders”
in column 8, lines 10-50 of Friedland to address this limitation. Answer 5.
However, we find that Friedland, including the portion cited by the
Examiner, does not describe a step of automatically maintaining
synchronization of a clock at each remote location. FF 11. The updates
described in column 8, lines 10-50 of Friedland are auction status updates
(FF 7), such as “open-for-bidding” or “sold” (FF 9). They are not described
as updates that synchronize clocks at each remote location.
Further, the Examiner has not cited any portion of Alaia or general
knowledge in the art to teach a step of automatically maintaining
synchronization of a clock at each remote location. The Examiner has not
articulated any reasoning with rational underpinning as to why one of
ordinary skill in the art would have been led to the method of claim 8, which
includes a step of automatically maintaining synchronization of a clock at
each remote location. The Examiner has failed to establish a prima facie
showing of obviousness in rejecting claim 8.
Appeal 2009-003999
Application 09/767,126

13
Accordingly, we find that the Examiner failed to establish a prima
facie showing of obviousness, and we reverse the rejection of claims 9-13
under 35 U.S.C. § 103(a) as unpatentable over Friedland and Alaia.

Claims 14-20
Independent claim 14 recites a step of “prioritizing an award of a
quantity of subject to a respective buyer based on a sequence of generation
of bids, if received within a bid time window, wherein the sequence is
determined based on an automatically synchronized timebase, which
maximizes a seller utility.” The Appellants argue that the Examiner has
provided no well-reasoned basis for rejecting this claim and that neither
Friedland nor Alaia teaches that clock synchronization is necessary. Br. 12
Though not entirely clear, the Examiner seems to have read this
limitation out the claim because the examiner considers the limitation to be a
conditional limitation. See Answer 6. “It is of course true that method steps
may be contingent. If the condition for performing a contingent step is not
satisfied, the performance recited by the step need not be carried out in order
for the claimed method to be performed.” Cybersettle, Inc. v. Nat’l
Arbitration Forum, Inc., 243 Fed.Appx. 603, 607 (Fed. Cir. 2007)
(unpublished). So when the contingency is satisfied, the recited step must be
performed. The prior art must show the condition.
As discussed above with regards to claim 8, we find that Friedland
does not teach a synchronized timebase. Therefore, we find that Friedland
not does not teach the claimed prioritizing step, wherein the sequence is
determined based on an automatically synchronized timebase.
Appeal 2009-003999
Application 09/767,126

14
Accordingly, we find that the Appellants have overcome the prima
facie showing of obviousness, and we reverse the rejection of claim 14 and
claims 15-20, dependent thereon, under 35 U.S.C. 103(a) as unpatentable
over Friedland and Alaia.

Claims 21, 23, 29, 30, 31, and 33
The Appellants argued claims 21, 23, 29, 30, 31, and 33 as a group
(Br. 23). We select claim 21 as the representative claim for this group, and
the remaining claims 23, 29, 30, 31, and 33, stand or fall with claim 21. 37
C.F.R. § 41.37(c)(1)(vii) (2009).
Independent claim 21 recites a method for conducting transactions
which includes the step of “implementing the set of rules of transaction
proximate to a client for ensuring compliance with each of said rules” and
the step of “efficiently communicating transaction information from the
client to a server complying with said rules.” The Appellants assert that the
Examiner admitted that Friedland does not disclose these limitations and that
Alaia does not describe these limitations. Br.23. The Examiner does not
respond to these arguments. See Answer 5-7.
However, as with claim 2 above, we find that Friedland teaches these
steps. Friedland describes that the collector/redistributor nodes filter the
bids using a variety of criteria and that only valid bids are sent back to the
server. FF 4. The claimed rules read on the filter that uses a variety of
criteria. Further, Friedland describes that using a hierarchy of these
collector/redistributors nodes “efficiently” collects and filters bids and
passes potentially winning bids onto the auction server. FF 5. The claimed
implementing step and communicating step read on these descriptions.
Appeal 2009-003999
Application 09/767,126

15
Accordingly, we find that the Appellants have not overcome the prima
facie showing of obviousness, and we sustain the rejection of claim 21, and
claims 23, 29, 30, 32, and 33, dependent thereon, under 35 U.S.C. § 103(a)
as unpatentable over Friedland and Alaia.

Claim 22
Claim 22 recites “wherein the rules provide for temporal variations in
permissible transaction parameters.” The Appellants argue that there is “no
well-reasoned rejection of the claim.” Br. 23. The Examiner does not
respond to the Appellants’ argument. See Answer 5-7.
We find that the Examiner has failed to establish a prima facie
showing of obviousness in rejecting claim 22. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Examiner has provided no articulated reasoning with rational underpinning
to reject claim 22 as obvious. “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 US at 418 (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). In rejecting claim 22, the Examiner does
not cite to any portions of Friedland or Alaia to teach the claimed transaction
involving travel tickets nor does the Examiner assert that such transactions
involving travel tickets are within the general knowledge of the art. The
Examiner’s rejection is silent as to the subject matter of claim 22. See
Answer 6-7. We are compelled to find that the Examiner erred in rejecting
Appeal 2009-003999
Application 09/767,126

16
claim 22 because the Examiner did not establish a prima facie showing of
obviousness.
Accordingly, we find that the Examiner has failed to establish a prima
facie showing of obviousness, and we reverse the rejection of claim 22 under
35 U.S.C. § 103(a) as unpatentable over Friedland and Alaia.

Claims 24 and 32
Claims 24 and 32 both require a descending price auction. The
Appellants make the same argument as was made with respect to claim 1.
As discussed above, we found this argument unpersuasive and, accordingly,
find them unpersuasive as to claims 24 and 32.
We find that the Appellants have not overcome the prima facie
showing of obviousness, and we reverse the rejection of claims 24 and 32
under 35 U.S.C. § 103(a) as unpatentable over Friedland and Alaia.

Claims 25, 26, 35, and 36
Claim 25 requires that the subject of the transaction in the method of
claim 21 is a travel ticket. The Appellants argue that there is “no well-
reasoned rejection of the claim.” Br. 24. The Examiner does not respond to
the Appellants’ argument. See Answer 5-7.
We find that the Examiner has failed to establish a prima facie
showing of obviousness in rejecting claims 25 and 26. In rejecting claims
under 35 U.S.C. § 103(a), the examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984). The Examiner has provided no articulated reasoning with
Appeal 2009-003999
Application 09/767,126

17
rational underpinning to reject claim 25 as obvious. “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR, 550 US
at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In rejecting
claim 25, the Examiner does not cite to any portions of Friedland or Alaia to
teach the claimed transaction involving travel tickets nor does the Examiner
assert that such transactions involving travel tickets are within the general
knowledge of the art. The Examiner’s rejection is silent as to the subject
matter of claim 25. See Answer 6-7. We are compelled to find that the
Examiner erred in rejecting claim 25 because the Examiner did not establish
a prima facie showing of obviousness.
Accordingly, we find that the Examiner has failed to establish a prima
facie showing of obviousness, and we reverse the rejection of claim 25 and
claims 26, 35 and 36, dependent thereon, under 35 U.S.C. § 103(a) as
unpatentable over Friedland and Alaia.

Claim 27
Claim 27 requires that the rules in the method of claim 21 prevent
inconsistent itineraries. The Appellants argue that there is “no well-reasoned
rejection of the claim” and further argues that “prevention of inconsistent
itineraries are nowhere found in the references.” Br.24. The Examiner does
not respond to the Appellants’ argument. See Answer 5-7.
We find that the Examiner has failed to establish a prima facie
showing of obviousness in rejecting claim 27. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
Appeal 2009-003999
Application 09/767,126

18
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Examiner has provided no articulated reasoning with rational underpinning
to reject claim 27 as obvious. “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 US at 418 (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). In rejecting claim 27, the Examiner does
not cite to any portions of Friedland or Alaia to teach rules that prevent
inconsistency nor does the Examiner assert that such rules are within the
general knowledge of the art. The Examiner’s rejection is silent as to the
subject matter of claim 27. See Answer 6-7. We find that the Examiner
erred in rejecting claim 27 because the Examiner did not establish a prima
facie showing of obviousness.
Accordingly, we find that the Examiner has failed to establish a prima
facie showing of obviousness, and we reverse the rejection of claim 27 under
35 U.S.C. § 103(a) as unpatentable over Friedland and Alaia.

Claim 28
Claim 28 recites that “the transaction information transmitted from the
client to the server as compressed information in an information packet.”
The Appellants make the same argument as was made with respect to claim
4. As discussed above, we found this argument unpersuasive and,
accordingly, find them unpersuasive as to claim 28.
Appeal 2009-003999
Application 09/767,126

19
We find that the Appellants have not overcome the prima facie
showing of obviousness, and we sustain the rejection of claim 28 under 35
U.S.C. § 103(a) as unpatentable over Friedland and Alaia.

Claim 34
Claim 34 recites that the buyer demand-utility function comprises a
non-uniform maximum bid price per incremental unit of subject available.
The Appellants argue that there is “no well-reasoned rejection of the
claim” and further argues that the references do not teach this limitation as
recited in claim 34. Br. 25. The Examiner does not respond to the
Appellants’ argument. See Answer 5-7.
We find that the Examiner has failed to establish a prima facie
showing of obviousness in rejecting claim 34. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Examiner has provided no articulated reasoning with rational underpinning
to reject claim 34 as obvious. “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 US at 418 (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). In rejecting claim 34, the Examiner does
not cite to any portion of Friedland or Alaia that teaches a buyer demand-
utility function comprising a non-uniform maximum bid price per
incremental unit of subject available nor does the Examiner assert that it is
within the general knowledge of the art. The Examiner’s rejection is silent
Appeal 2009-003999
Application 09/767,126

20
as to the subject matter of claim 34. See Answer 6-7. We find that the
Examiner erred in rejecting claim 34 because the Examiner did not establish
a prima facie showing of obviousness.
Accordingly, we find that the Examiner has failed to establish a prima
facie showing of obviousness, and we reverse the rejection of claim 34 under
35 U.S.C. § 103(a) as unpatentable over Friedland and Alaia.

Claim 37
Claim 37 recites that the step of identifying a quantity of subject
available and a minimum price is performed using an airline ticket yield
management system. We note that the Specification states that an airline
yield management system is, also known as, a Revenue Management
System. Specification 12:9-11.
The Appellants argue that there is “no well-reasoned rejection of the
claim” and further argues that the references do not teach a yield
management system as recited in claim 37. Br. 26. The Examiner does not
respond to the Appellants’ argument. See Answer 5-7.
We find that the Examiner has failed to establish a prima facie
showing of obviousness in rejecting claim 37. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Examiner has provided no articulated reasoning with rational underpinning
to reject claim 37 as obvious. “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
Appeal 2009-003999
Application 09/767,126

21
conclusion of obviousness.” KSR, 550 US at 418 (citing In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). In rejecting claim 37, the Examiner does
not cite to any portions of Friedland or Alaia to teach using an airline ticket
yield management system to perform the step of identifying a quantity of
subjects available and a minimum price nor does the Examiner assert that it
is within the general knowledge of the art. The Examiner’s rejection is
silent as to the subject matter of claim 37. See Answer 6-7. We find that the
Examiner erred in rejecting claim 37 because the Examiner did not establish
a prima facie showing of obviousness.
Accordingly, we find that the Examiner has failed to establish a prima
facie showing of obviousness, and we reverse the rejection of claim 37 under
35 U.S.C. § 103(a) as unpatentable over Friedland and Alaia.

CONCLUSIONS OF LAW
We conclude that the Appellants have not overcome the prima facie
showing of obviousness as to the rejection of claims 1-5, 21, 23, 24, and 28-
33 under 35 U.S.C. §103(a) as being unpatentable over Friedland and Alaia.
We conclude that the Examiner failed to establish or the Appellants
have overcome the prima facie showing of obviousness as to the rejection of
claims 6-20, 22, 25-27, and 34-37 under 35 U.S.C. §103(a) as being
unpatentable over Friedland and Alaia.

DECISION
The decision of the Examiner to reject claims 1-5, 21, 23, 24, and 28-
33 is affirmed and to reject claims 6-20, 22, 25-27, and 34-37 is reversed.
Appeal 2009-003999
Application 09/767,126

22
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) (2007).

AFFIRMED-IN-PART

mev

ECKERT SEAMANS CHERIN & MELLOTT, LLC
U.S. STEEL TOWER
600 GRANT STREET
PITTSBURGH PA 15219-2788