Ex Parte Diamant et al

Patent Trial and Appeal Board

Feb 17, 2017

10454936 (P.T.A.B. Feb. 17, 2017)

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.
10/454,936 06/05/2003 Alice Diamant US-0007.01128204H-014510 3024
122328 7590 02/22/2017
Baker Hostetler LLP/USAA
1050 Connecticut Avenue, N.W., Suite 1100
Washington, DC 20036
EXAMINER
SOREY, ROBERT A
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALICE DIAMANT, LUTHER BRANHAM,
and MARIA CAVAZOS
Appeal 2014-0034031
Application 10/454,9362
Technology Center 3600
Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
October 8, 2013), Appellants’ Reply Brief (“Reply Br.,” filed
January 27, 2014), the Examiner’s Answer (“Ans.,” mailed
November 25, 2013), and Final Office Action (“Final Act.,” mailed May 8,
2013).
2 Appellants identify “United Services Automobile Association (USAA) of
San Antonio, Texas” as the real party in interest (Appeal Br. 1).
Appeal 2014-003403
Application 10/454,936
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—3, 5—13, 15—26, 31, and 32. Claims 33 and 34 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellants’ claimed invention relates generally “to a method of
locating, acquiring, financing and insuring property” (Spec. 2,11. 8—9).
Claims 1 and 31 are the independent claims on appeal. Claim 1,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
1. A computer-implemented method of acquiring
property for members of a membership organization providing
financial and insurance products, the method comprising:
[a] using at least one computer processor to receive
communication from a member of the membership organization
for assistance in locating and selecting a property item through a
website of the membership organization;
[b] negotiating by the membership organization, using the
at least one computer processor, a price of the property item with
a supplier, wherein the supplier is an entity separate from the
membership organization;
[c] financing by the membership organization, using the at
least one computer processor the property item for the member;
and
[d] insuring by the membership organization, using the at
least one computer processor the property item.
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Application 10/454,936
REJECTIONS3
Claims 1—3, 5, 12, 13, 31, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Anabtawi (US 2003/0046179 Al, pub. Mar. 6,
2003) and Jim Davis, Local Bankers Agree Reforms Will Unfetter
Competition, 18 Kan. City Bus. J. Nov 12, 1999, at 5) (hereinafter,
“Local”).
Claims 6—104 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Anabtawi, Local, and Official Notice.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Anabtawi, Local, and PRNewswire, eBay Motors and AutoTrader.com
Select Esurance as Exclusive Online Used Auto Insurance Provider, PR
Newswire, New York, Dec. 4, 2000, at 1) (hereinafter, “PRNewswirel”).
Claims 15—17 and 19-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Anabtawi, Local, and PR Newswire, Bank of America and
Homestore.com, Inc. Announce Multi-Year Strategic Agreement, PR
Newswire, New York, Apr 10, 2001, at 1) (hereinafter, “PR Newswire2).
Claims 18 and 22—24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Anabtawi, Local, PR Newswire2, and David Emery,
Personal Finance: Click on for the new way to buy a home the internet
revolution has now extended to home buying. But can this new technology
widen services and reduce costs?, The Independent, London (UK),
June 10, 2000, at 3) (hereinafter, “Emery”).
3 A rejection of claims 33 and 34 under 35 U.S.C. § 112, first paragraph, was
withdrawn by the Examiner (see Ans. 2).
4 Appellants indicate that claim 14 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Anabtawi, Local, and Official Notice, however, claim 14
is cancelled.
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Application 10/454,936
Claims 25 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Anabtawi, Local, PRNewswire2, and Official Notice.
ANALYSIS
Independent claim 1 and dependent claims 2, 3, 5, 12, and 13.
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Anabtawi and Local fails to disclose or suggest “negotiating
by the membership organization, using the at least one computer processor, a
price of the property item with a supplier, wherein the supplier is an entity
separate from the membership organization,” as recited by limitation [b] of
independent claim 1 (see Appeal Br. 6—7; see also Reply Br. 3 4).
The Examiner maintains that the rejection is proper, and cites
paragraphs 11 and 19—21, as well as Figure 1, of Anabtawi as disclosing
limitation [b] of independent claim 1 (see Final Act. 5—6). The Examiner
takes the position that the “negotiating” step “is met by the website offering
a given vehicle at only one ‘blanket’ price” (id. at 5), and the limitation
“wherein the supplier is an entity separate from the membership
organization” “is met by website being a distinctly separate entity from the
suppliers (e.g., the dealership, distribution center, or manufacturing facility)”
(id. at 5—6).
Anabtawi is directed “to a way of providing a complete shopping and
buying experience including direct sales to consumers, one price selling, and
a customer express delivery system all via the [Ijntemet” (Anabtawi 11).
Anabtawi discloses that its
strategy hinges on a website 10 that includes a database and
application software[,] and that brings together at least one
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vehicle manufacturing facility 12 with a plurality of distribution
centers 20 located regionally, a plurality of dealerships 30
serviced by the distribution centers[,] and a plurality of customer
locations 40 serviced by the dealerships.
(Id. 119). Anabtawi identifies that a “customer may experience a
tremendous lack of access to information concerning pricing, financing,
options and vehicle availability” and “[m]any customers are uncomfortable
haggling to negotiate for a price they feel is fair for the vehicle they’ve
selected” (id. 111). To address these issues, Anabtawi discloses that its
“website offers a given vehicle at only one price including taxes and
delivery. A blanket price facilitates the e-commerce process and allows the
dealership to concentrate on the service aspects of the transaction” (id. 121).
Anabtawi further discloses that its
shopping process 101 also includes payment options pages 118.
These pages give customers the ability to simulate financial plans
for their choice of vehicle configurations including paying by
cash, credit or financing. A side by side comparison of plans
among all financing and leasing plans available is possible, with
the customer inputting different down-payment amounts and
choosing among available terms for each plan.
(Id. 130). Anabtawi also discloses financing options (id. H 30, 38-40) and
insurance options, i.e., “[t]he customer is also given the opportunity to
include credit life and automobile insurance in the monthly payment when
financing or leasing” (id. 139). We note that Anabtawi discloses that
“[pjrices for dealer accessories are displayed as manufacturer suggested
retail prices (MSRP) and do not include the manpower for installation. The
price for dealer installed accessories is paid to the dealer of delivery” (id.
137).
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Local is an article entitled “[l]ocal bankers agree reforms will unfetter
competition” which discusses the Gramm-Leach-Bliley Act, which repealed
“the Glass-Steagall Act of 1933, which has barred commercial [banks] from
investment banking activities, such as securities underwriting” (Local H 1,
2). Local also identifies that “[m]any people want one-stop shopping” (id.
11), and surmises that the Gramm-Leach-Bliley Act “should drive down the
price for products because it will reduce expenses” (id. 13). Local also
discloses that in light of the Gramm-Leach-Bliley Act, “Kansas City Life
Insurance Co. is proceeding with plans announced in April to establish a
savings bank” (id. 14).
We have reviewed the cited portions of Anabtawi and agree with
Appellants that Anabtawi fails to disclose or suggest “negotiating by the
membership organization ... a price of the property item with a supplier,” as
called for by limitation [b] of independent claim 1 (see Appeal Br. 6; see
also Reply Br. 1—3). More particularly, we agree with Appellants that “[t]he
Examiner cannot simply ignore the claimed method step of ‘negotiating’
between two parties by stating that the term ‘negotiating’ is too broad and
that any offered price is a negotiated price” (Reply Br. 2). Here, we may
agree with the Examiner that “[w]hat constitutes negotiating is left broad”
(Ans. 3) and “[t]he [Specification provides no detail as to what constitutes
negotiating or how it is performed” (id.), however, we cannot agree with the
Examiner that Anabtawi’s disclosure about a blanket price, i.e., “one price
including taxes and delivery” (Anabtawi 121), corresponds to the step of
“negotiating by the membership organization ... a price of the property item
with a supplier,” as required by limitation [b] of independent claim 1.
Instead, as Appellants point out, “Anabtawi offers a ‘blanket price’ or a ‘fair
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fixed price, ’ both of which imply no negotiation between any party and the
supplier” (Appeal Br. 6). The Examiner does not rely on Local to cure this
deficiency.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of claims 2, 3, 5, 12, and 13,
which depend therefrom.
Dependent claims 6—11 and 15—26
Each of claims 6—11 and 15—26 ultimately depends from independent
claim 1. The Examiner’s rejections of these dependent claims do not cure
the deficiency in the Examiner’s rejection of independent claim 1.
Therefore, we do not sustain the Examiner’s rejections of claims 6—11 and
15—26 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to independent claim 1.
Independent claim 31 and dependent claim 32
Independent claim 31 includes a limitation substantially similar to
limitation [b] of independent claim 1, as discussed above. Therefore, we do
not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of
independent claim 31, and claim 32 that depends therefrom, for the same
reasons set forth above with respect to independent claim 1.
DECISION
The Examiner’s rejections of claims 1—3, 5—13, 15—26, 31, and 32
under 35 U.S.C. § 103(a) are reversed.
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REVERSED
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