Ex Parte Demarcken et al

Board of Patent Appeals and Interferences

Apr 12, 2010

10456997 (B.P.A.I. Apr. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CARL G. DEMARCKEN and JUSTIN A. BOYAN
____________

Appeal 2009-003817
Application 10/456,997
Technology Center 2100
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Decided: April 12, 2010
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Before HOWARD B. BLANKENSHIP, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Application 10/456,997

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INTRODUCTION
Appellants request rehearing of our Decision entered
October 20, 2009 (“Decision”), in which we affirmed the rejection of
claims 1-30 as being anticipated by DeMarcken.

ANALYSIS
In their Request for Rehearing, specifically regarding Claim 1,
Appellants in essence contend that the claimed “fares” are distinguishable
from DeMarcken’s “booking codes” and that the structure of the data in the
cache of claim 1 cannot be considered as non-functional descriptive
material. (Req. 2, 6-8.) We disagree.
We start by noting that although Appellants argue that the claimed
“fares” are more than merely a price and that Appellants’ Specification
presents several examples of fares, it is the “claimed” invention that the
Examiner has evaluated and rejected and which we review for error, not the
various examples in the Specification. We note that Appellants could have
amended the claims during prosecution to recite “a fare that includes market
or fare restrictions,” for example. However, Appellants chose not to do so.
Because “app[ellants] may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)). As noted in our Decision, Appellants’ own Specification
broadly defines “fares” as “prices” (Spec. 3, l. 24). As such, we decline to
read the various other narrower examples of fare related information shown
in the Specification into the claims. “[L]imitations are not to be read into the
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claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). During
patent prosecution, claims are construed as broadly as is reasonable. Here,
we find that “price” is a reasonable definition, provided by Appellants
themselves, for the claimed “fare.”
In addition, although Appellants argue that the structure of the data in
the cache of claim 1 cannot be considered as non-functional descriptive
material, we respectfully point out that our Decision also found that even if
the argued feature was given weight, DeMarcken discloses both travel
planning queries and results. (Decision 8-9.) In other words, our Decision
addressed the “travel planning queries and results” limitations under both
circumstances, e.g., non-functional descriptive material or functional
(Decision 8-10). As such, this particular argument is moot given our
alternative analysis in the Decision.

Regarding Claims 2, 7, 8, 10-17, 19-26, and 28-30, Appellants argue
that the Board improperly avoided consulting Appellants’ Specification to
clarify the meaning of the term “travel planning system” (Req. 9) and “travel
planning query” (Req. 12-13) and that the claimed “travel planning system”
is distinguishable from DeMarcken’s “airline availability system” (Req. 11).
We disagree.
Although Appellants direct our attention to some typical functions of
a travel planning system (Req. 9, footnote 12), we find that such exemplary
functions are not indicative of all travel planning systems, as some are not
even related to air travel. Furthermore, the claims provide no additional
limitations within the claim language itself to identify any characteristics of
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the claimed travel planning system or the travel planning query. Instead,
Appellants merely relies upon the examples, not definitions, found in the
Specification. No specific definition for a “travel planning system” has been
advanced by Appellants. Therefore, we decline to read each of these various
exemplary functions into the claimed travel planning system. Again,
“limitations are not to be read into the claims from the specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989)). As noted supra, Appellants could have
amended the claims during prosecution to recite particular functionality of
the travel planning system and travel planning query, but chose not to. The
absence of any defining limitations within the claims themselves or in the
specification allows us to use the broadest reasonable interpretation
standard. As such, we view this phrase as a mere label and under a broad
but reasonable interpretation, a “travel planning system” can include any
system which facilitates travel. As noted in our decision, DeMarcken’s
airline availability system facilitates travel by providing answers to
availability queries (Decision 11).

Regarding Claims 9, 18, and 27, Appellants argue that “de Marcken
does not retrieve a result that comprises a set of answers. de Marcken
retrieves a single answer/result” (Req. 12). We disagree.
As noted in our Decision, we find that “a set of answers” can include
a single set comprising an answer/result pair and an “insufficient number of
answers” can be zero (Decision 14-15). The claims do not require that a “set
of answers” be any particular number of answers, only that the set has a
flight and a fare useable with the flight (see Claim 1). Therefore, under a
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broad but reasonable interpretation of claim 1 and claim 9, the claimed “set
of answers” reads on DeMarcken’s single returned answer/result and “an
insufficient number of answers” reads on no answers found in DeMarcken.

DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
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).

REHEARING DENIED

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