Ex Parte Dietrich

Board of Patent Appeals and Interferences

Jan 31, 2008

09850383 (B.P.A.I. Jan. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRENDA LYNN DIETRICH
____________

Appeal 2007-0815
Application 09/850,383
Technology Center 3600
____________

Decided: January 31, 2008
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brenda Dietrich (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a “method for
considering constraints imposed by the participants in auctions for multiple
items.” (Specification 1:4-5.) Appellant’s process involves taking into
account constraints bidders or sellers may place on the items being auctioned
rather than constraints that may be imposed on the manner of conducting the
auction. “This invention is not concerned with the particular bidding rules
of the auction, only with the methods and systems used to select the winning
bids.” (Specification 15:6-7.) “The method and system described in this
invention are applicable independent of the form of the authorization rules.”
(Specification 15:10-11.)
The types of constraints which the method can consider include a
budget constraint “that specifies the total amount the bidder is willing to pay
for a collection of items on which he has placed bids” (Specification 5:13-
14), a maximum quantity constraint which “provides a generalization of the
concept of substitutability” for the case of similar items (Specification 5:17-
19), a minimum quantity constraint “to represent factors such as economies
of scale by the bidder” (Specification 6:1-2), and a precedence constraint
“used to indicate that a bidder is willing to win one item only if he also wins
another item” (Specification 6:4-5.) The Specification points out “sellers
may be allowed similar capability to place constraints and modify the set of
items to be sold.” (Specification 15:5-6.)
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As an example of Appellant’s process, proposals can be generated
based on constraints specified by the bidder and provided on a user interface
(Fig. 2) where the bidder can review, edit, or reject the proposal.
(Specification 17:7-9, see Fig. 6.) The proposals are generated by way of an
integer program solver (Fig. 4) which formulates winning bids based on
information about the constraints input through the user interface.
(Specification 8:9-10.) Formulas that include bid constraint variables are
described in the Specification (pp. 9-11.) In this way, “participants can
specify constraints that describe or characterize the combination of items
they desire to win or sell.” (Specification 3:13-14.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer implemented method for
an auction comprising:
establishing an auction system;
receiving at least one constraint specified by
a participant in the auction, wherein the constraint
characterizes combinations of items desired by the
participant within the auction system; and
determining a winner in the auction, based
on the constraint specified by the participant.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ausubel
Macready
McAfee

US 5,905,975
US 2002/0016759 A1
US 6,718,312 B1

May 18, 1999
Feb. 7, 2002
Apr. 6, 2004

The following rejections are before us for review1:
1. Claims 1-2, 6-7, and 11-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ausubel.2
2. Claim 3-5 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Ausubel in view of McAfee.
3. Claims 8-10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ausubel in view of Macready.

ISSUES
The first issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 2, 6, 7, 11, 12, 14-19 as unpatentable
over Ausubel. This issue turns on whether Ausubel shows the use of a
“constraint” as claimed such that it would have led one having ordinary skill

1 In reviewing these rejections, we have considered Appellant’s Appeal Brief
(“App. Br.,” filed Jul. 10, 2006), the Examiner’s Answer (“Answer,” mailed
Oct. 20, 2006), and the Reply Brief (“Reply Br.,” filed Nov. 21, 2006).
2 The February 8, 2006 Final Rejection characterized this rejection as one of
anticipation under 35 U.S.C. § 102(b) (Final Rejection 2), but the text of the
rejection included analysis of obviousness. The rejection in the Answer at 3
changed the statement of the rejection to be under obviousness.
Accordingly, we treat the rejection as under obviousness.
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in the art to determine a winner in an auction, based on the “constraint”
specified by the participant. Another issue, applicable to claim 13, is
whether Ausubel shows “generating a proposal, based on the constraints
specified by the participant, using a column generation formulation” as
claimed such that it would have led one having ordinary skill in the art to a
program medium with instructions to perform such a step.
The second issue before us is whether the Appellant has shown that
the Examiner erred in rejecting claims 3-5 as unpatentable over Ausubel in
view of McAfee. This issue turns on whether the prior art would have led
one having ordinary skill in the art to a method wherein the “constraints
characterize combinations of bids from the participant for the desired items
within the auction system,” as claimed.
The third issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 8-10 as unpatentable over Ausubel in
view of Macready. This issue turns on whether the prior art would have led
one having ordinary skill in the art to a method that provides that the seller
constraints, for which auction system is enabled to be responsive, specify a
minimum value for a combination of items.

FINDINGS OF FACT
We find that the following enumerated findings 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).
Claim construction
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1. Claim 1 is directed to a computer implemented method that
comprises “receiving at least one constraint specified by a
participant in [an] auction, wherein the constraint characterizes
combinations of items desired by the participant within the auction
system; and determining a winner in the auction, based on the
constraint specified by the participant.” (Emphasis added.)
2. The customary and ordinary meaning of “constraint” is a
confinement or restriction (see Webster’s New World Dictionary,
3rd College Ed., 299 (1988) definition 1: “a constraining or being
constrained; specif., a) a confinement or restriction b) compulsion
or coercion”).
3. The Specification does not provide a meaning for “constraint” that
differs from the customary and ordinary meaning of the word.
4. The Specification explains constraints this way: “there is a need for
methods through which participants can specify constraints that
describe or characterize the combination of items they desire to
win or sell, as well as a need for methods to solve the winner
determination problem in auction systems that permit participants
to specify such constraints.” (Specification 3: 12-15.) In other
words, the term “constraints” is used to refer to auction
participants’ desires for what they want to win or sell; that is, the
“constraints” are restrictions placed on the auction. One such
restriction may be “the total amount the bidder is willing to pay for
a collection of items on which he has placed bids.” (Specification
5:13-14.) This is an example of a “budget constraint.”
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(Specification 5:13.) Constraints are indicated on the user
interface by the participant prior to winning bids being formulated.
(Specification 7:10 to 8:10.) Constraints are factors to be
considered in selecting winning bids and are independent of
auction authorization rules. (Specification 15:7-11.)

The scope and content of the prior art
5. Ausubel is directed to computer implemented methods and systems
for executing auctions. The system comprises an auctioneer’s
system and a user’s system whereby the auctioneer’s system
receives bid information entered by the bidder into the user system.
(See Fig. 1.)
6. The Ausubel process comprises the auctioneer’s system
communicating messages to the user systems to initiate an auction.
(Ausubel 2:30-35.) “The users may thereafter enter flexible bid
information.” (Ausubel 2:37.)
7. The flexible bid information that users input via the user system
can include a scalar-value, vector-value or a function.
The flexible bid information may be an expression of how
many units of object(s) a bidder is willing to purchase at a
given price(s), how much money a bidder is willing to pay for
the purchase of a given object(s), or any other expression of the
willingness-to-pay or value which a bidder places on object(s).
Optionally, a bidding rule may also include a limitation (e.g. "I
desire up to a quantity of x at a price P, but I do not want any
positive quantity at all unless I receive a minimum quantity of
y"). Thus, a bidding rule may include an unconditional bid or a
contingent bid, and may consist of a function from available
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information to bid quantities (e.g. a function of the previous
bid(s) submitted).

(Ausubel 2:38-50.)(See also Ausubel 6:50-63.)

8. The flexible bid information is stored in databases accessed by the
auctioneer’s system. (Ausubel 2:52-53.) A database process
performs database look-ups for data relevant to questions and
generates answers through calculations and/or logical operations
which are sent to the auctioneer’s system. (Ausubel 8:66 to 9:4.)
“Depending upon the particular auction involved and the answers,
the auctioneer’s system may conclude that the auction has been
concluded and send a final message to one or more users.”
(Ausubel 9:10-13.)
9. McAfee relates to “computer implementations of simultaneous
auctions of multiple items, wherein combinatorial bidding is
permitted … [using] bid composition restrictions.” (1:7-11.)
10. Macready relates to methods and systems for discovering trades
between parties to uncover improved win-win agreements by
exploiting the flexibilities and trade-offs of the buyers and sellers.
[0002]-[0003] The Macready process permits constraints on the
trade to be expressed by buyers and sellers [0077] as well as
suppliers [0110].
Any differences between the claimed subject matter and the prior art
11. The claimed system combines various features separately disclosed
in the prior art into one system.
The level of skill in the art
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12. Neither the Examiner nor Appellants has addressed the level of
ordinary skill in the pertinent arts of tracking items and data
formatting. 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)).
Secondary considerations
13. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim construction
“The Patent and Trademark Office (“PTO”) determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“The problem is to interpret claims ‘in view of the specification’ without
unnecessarily importing limitations from the specification into the claims.”
E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
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Claims define the subject matter Appellants regard to be their
invention. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The burden of
defining the invention lies with Appellants, not the PTO. Id. at 1056.
Appellants have the opportunity to amend the claims during prosecution.
Thus, a broad interpretation by the Examiner reduces the possibility that the
claim, once issued, will be interpreted more broadly than is justified. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Words in claims “are
generally given their ordinary and customary meaning” to a person of
ordinary skill in the art at the time of the invention. Phillips v. AWH Corp.,
415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). How a person of
ordinary skill in the art understands a claim term “is based on the well-
settled understanding that inventors are typically persons skilled in the field
of the invention and that patents are addressed to and intended to be read by
others of skill in the pertinent art.” Id. at 1313. When interpreting a claim,
unless the inventor has set forth a definition for a term, that term will be
given its ordinary and customary meaning as understood by one skilled in
the pertinent art. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
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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, 127 S.Ct. at 1734 (“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.” 383 U.S. at 18.

ANALYSIS
Rejection of claims 1, 2, 6, 7, and 11-19 as unpatentable over Ausubel.
Claim 1
The Examiner found that Ausubel discloses a computer-implemented
auction system which receives at least one constraint specified by a
participant characterizing a combination of items the participant desires and
transactions resulting from the auction. (Answer 3.) However, the
Examiner further found that “Ausubel does not explicitly disclose
determining a winner in the auction, based on the constraint specified by the
participant.” (Answer 3.) The Examiner relied on the knowledge of those
with ordinary skill in the art, that transactions which result from auctions are
“winners,” and thus the Examiner concluded that “it would have been
obvious to an ordinary practitioner of the art at the time of Applicant’s
invention to have combined the art of Ausubel with the common
understanding about transactions and particularly about transactions
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resulting from an auction process, motivated by a desire to offer and
implement improved auction methods.” (Answer 4.)
The Appellant argues that “Ausubel does not teach or suggest
“determining a winner in the auction, based on the constraint specified by
the participant.”” (App. Br. 7; see also Reply Br. 10.) In particular, the
Appellant contends that the Examiner has misconstrued the term
“constraint” as used in the claim. (App. Br. 7.) According to the Appellant,
“the claimed invention may allow ‘the winner determination problem’ to be
formulated as an integer program (e.g., including the constraints
specified by a participant in the auction) which can be solved by
commercially available software packages (Application at page 1, lines 5-
7).” (App. Br. 7.) Accordingly, the Appellant takes the position that the
term “constraints” should be construed as “is used in the field of
mathematics” (App. Br. 8) and that this is the commonly accepted meaning
in the art and consistent with the meaning of the term as used in the
Specification (App. Br. 7.) In that regard, the Appellant contends that
Ausubel employs bidding rules, not constraints as used in the claim.
“[N]owhere does Ausubel teach or suggest that his ‘bidding rules’ are used
to [sic] as a constraint to solve an ‘integer program.’” (App. Br. 9.)
The Appellant also argues that “the Ausubel system is unrelated to the
claimed invention. Indeed, Ausubel discloses that the bidders are required to
express combinatorial bids.” (App. Br. 9.) According to the Appellant,
“[t]he claimed invention, on the other hand, does not necessarily require the
bidders to express combinatorial bids.” (App. Br. 9.)
We do not find the Appellant’s arguments persuasive.
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The Appellant argues that the term “constraints” as used in the claims
is different from the bidding rules used in Ausubel. The Specification makes
clear that the constraints used by the invention are independent of bidding
rules used during an auction (FF 4). However, we see little if any difference
between the constraints used by claimed method and Ausubel’s bidding
rules. Notwithstanding that Ausubel never uses the term “constraints” but
rather refers to “bidding rules,” Ausubel’s bidding rules are constraints
placed by auction participants as part of the process leading to the winning
bid (FF 8). For example, Ausubel describes, as an example of a bidding
rule, “an expression of … how much money a bidder is willing to pay for the
purchase of a given object(s)” (FF 7). This is a “budget constraint” as the
Specification defines it (FF 4: “the total amount the bidder is willing to pay
for a collection or items on which he has placed bids.”) The evidence does
not support Appellant’s contention that a distinction exists between the
claimed “constraint” and Ausubel’s “bidding rule.” Accordingly, the
Appellant’s argument that Ausubel does not teach or suggest determining a
winner in the auction, based on the constraint specified by the participant is
not persuasive as to error in the rejection.
Appellant’s argument that the Ausubel system is unrelated to the
claimed invention because it discloses that the bidders are required to
express combinatorial bids is not commensurate in scope with what is
claimed. The scope of claim 1 is such that it broadly encompasses
combinatorial bids. “Many of appellant’s arguments fail from the outset
because, . . . they are not based on limitations appearing in the claims . . . .”
In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
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Claim 13
The issue with respect to claim 13 is whether Ausubel shows
“generating a proposal, based on the constraints specified by the participant,
using a column generation formulation” as claimed such that it would have
led one having ordinary skill in the art to a program medium with
instructions to perform such a step.
The Examiner found that
Ausubel suggests generating a proposal, based on the
constraints specified by the participant, using a column
generation formulation (Fig. 3D displays bid data in a column.
Making use, analyzing and displaying data in columns and
matrices has been a basic display for a long time. It is also a
technique used in mathematical and computer software
analytical and parsing techniques). Therefore, it would have
been obvious to the ordinary practitioner of the art at the time of
Applicant’s invention to have combined the art of Ausubel to
for the purpose of executing a program in a computer system
for operating an auction with machine readable instructions and
making use of column generation techniques, motivated by a
desire to offer and implement improved auction methods
(Ausubel, Col. 1, ll. 15-16).

(Answer 5.)
The Appellant rests on statements made with respect to the rejection
of claim 1. In that regard, given that we have not found the Appellant’s
argument persuasive as to error in the rejection of claim 1, we reach the
same conclusion with respect to the argument as it applies to claim 13.
(App. Br. 11.)
The Appellant also argues that the Examiner improperly equates the
claimed “column generation formulation” with Ausubel’s disclosure in Fig.
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3D showing displaying bid data in a column because “in the field of
mathematics, the term ‘column generation’ may be defined as an algorithm
for solving linear programs” (App. Br. 12.) The Appellant states that “the
Specification uses the term ‘column generation’ in a similar manner [as used
in the field of mathematics] (e.g., see Application at page 12, line 6 – page
13, line 22).” (App. Br. 12.) Accordingly, the Appellant finds “the
Examiner’s analysis is superficial and overly simplistic.” (App. Br. 12.)
(See also Reply Br. 3-4.)
We do not find this argument persuasive as to error in the rejection.
We have reviewed page 12, line 6 – page 13, line 22. While we see
reference to “column generation formulation” in that disclosure, and it is
used there in a mathematical algorithm context, the phrase is not otherwise
defined. Nor is there any suggestion there or anywhere else in the
Specification that the phrase should take on only the algorithmic meaning
used in the field of mathematics. “The problem is to interpret claims ‘in
view of the specification’ without unnecessarily importing limitations from
the specification into the claims.” E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003). In that regard, the Appellant contends that
the Examiner construes the term “column generation” in a manner that is
contrary to its common usage in the art. (App. Br. 11-12.) However, the
Appellant has provided no evidence to support that view. Appellant's
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). See also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984). Furthermore, notwithstanding the Examiner’s reliance
on Fig. 3D of Ausubel, the Examiner also found that “Making use, analyzing
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and displaying data in columns and matrices has been a basic display for a
long time. It is also a technique used in mathematical and computer
software analytical and parsing techniques” (Answer 5.) Accordingly, the
Examiner relied not just on Ausubel but also that the claimed “column
generation formulation” was well known in the art. Nowhere in the Brief
has the Appellant challenged this position. An adequate traversal of the
Examiner’s position would contain information or argument to create on its
face a reasonable doubt regarding the circumstances justifying Examiner's
notice of what is well known to one of ordinary skill in the art. In re Boon,
439 F.2d 724, 728 (CCPA 1971). That has not been done here.
Claims 2, 6, 7, 11, 12, 14-19
The Appeal Brief (e.g., pp. 12-17) indicates, without further
discussion, that various features set forth in these claims are absent from the
references. But the Examiner had clearly explained where the subject matter
of these claims were shown in Ausubel. (Answer 4-6.) A general allegation
that the art does not teach any of the claim limitations is no more than
merely pointing out the claim limitations. A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii) (2007). The
Appellant also rests on statements made with respect to the rejection claim 1.
In that regard, given that we have not found the Appellant’s argument
persuasive as to error in the rejection of claim 1, we reach the same
conclusion with respect to the Appellant’s argument as to the rejection of
these claims.
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Rejection of claim 3-5 as unpatentable over Ausubel in view of McAfee.
Claim 3 further limits the process of claim 1 by providing that the
“constraints characterize combinations of bids from the participant for the
desired items within the auction system.”
The Examiner found that
Ausubel does not explicitly disclose a method wherein the
constraints characterize combinations of bids from the
participant for the desired items within the auction system.
However, Ausubel does in fact teach and suggest the use of
constraints and the combination of items desired by participants
by participants in an auction process (see the rejection of claim
1). Further, McAfee discloses a method wherein the constraints
characterize combinations of bids from the participant for the
desired items within the auction system (Abstract, l. 8, Col. 1, l.
9, Col. 5, ll. 19-20: Col. 9, ll. 66-67) … that eliminate
associated bidding problems (McAfee, Col. 9, ll. 59-63).

(Answer 6.)

The Appellant argues that (a) Ausubel and McAfee are so disparate
that one of ordinary skill in the art would not have combined their teachings
absent hindsight; i.e., the references are non-analogous, (b) the Examiner
points to no motivation in the references, and (c) in McAfee, the restrictions
are placed by the auctioning organization and apply to all bidders. (App. Br.
18-19.)
We do not find the Appellant’s arguments persuasive.
We do not see that Ausubel and McAfee are so disparate from each
other. Given that they are both related to computer automated auctions and
thus related to the claimed invention, one of ordinary skill in the art of
auctions would find they are analogous. When a person having ordinary skill
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in the art would consider it relevant or related to the invention sought to be
patented then the prior art is “analogous.” See Dann v. Johnston, 425 U.S.
219, 229 (1976).
We disagree that the examiner has failed to point to any motivation in
the references. The Examiner clearly pointed to col. 9, ll. 59-63 of McAfee.
(Answer 6.) Nevertheless, in KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727
(2007)., the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at
1739 and discussed circumstances in which a patent might be determined to
be obvious without an explicit application of the teaching, suggestion,
motivation test. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (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.” Id.
The Court explained:
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 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.
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Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. The Supreme Court
made clear that “[f]ollowing these principles may be more difficult in other
cases than it is here because the claimed subject matter may involve more
than the simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained,
[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.

Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit. Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)) (“[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”). 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.” Id. at 1741. Here the Examiner
articulated a reason with some rational underpinning to support the legal
conclusion of obviousness.
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The argument that McAfee’s restrictions are placed by the auctioning
organization and apply to all bidders is the same argument the Appellant
made against Ausubel. The Examiner did not rely on McAfee to show this
limitation of the claim. The Examiner relied on Ausubel. We addressed that
supra with respect to the rejection of claim 1. Ausubel shows determining a
winner in the auction based on a constraint specified by a participant to the
extent claimed.
Claims 4 and 5
The Appeal Brief (e.g., pp. 19-20) indicates that, for these claims, the
Appellant incorporates the arguments made with respect to the rejection of
claim 3. In that regard, given that we have not found the Appellant’s
argument persuasive as to error in the rejection of claim 3, we reach the
same conclusion with respect to the Appellant’s arguments as to the
rejection of these claims.
Rejection of claims 8-10 as unpatentable over Ausubel in view of Macready.
Claim 8
Claim 8 further limits the process of claim 1 by providing that the
seller constraints, for which auction system is enabled to be responsive
(claim 7), specify a minimum value for a combination of items.
The Examiner found that “Ausubel does not explicitly disclose a
method wherein the seller constraints specify a minimum value for a
combination of items. However, Macready discloses a method wherein the
seller constraints specify a wide range of parameter possibilities (Page 6,
[0077]; [0018]-ll. 1-2; [0110]).” (Answer 7.) The Examiner determined that
[i]t would have been obvious to the ordinary practitioner
at the time of applicant’s invention that these possibilities
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suggest the imposition of a constraint specifying a minimum
value. Such a value would be based on the participant’s
assessment that he would be worse off to engage in a
transaction below such a minimum value). Hence it would
have been obvious to an ordinary practitioner at the time of
Applicant’s invention to have combined the art of Ausubel with
that of Macready to be responsive to seller constraints such as
minimum value for a combination of items, motivated by the
desire to offer flexibility to all trading partners to locate win-
win opportunities for all parties if they exist (Macready, page 2,
[0012] ll. 7-9).

(Answer 7-8.)
The Appellant argues that (a) Ausubel and Macready are so disparate
that one of ordinary skill in the art would not have combined their teachings
absent hindsight; i.e., the references are non-analogous, (b) the Examiner
points to no motivation in the references, and (c) Macready does not teach or
suggest determining a winner in the auction, based on the constraint
specified by the participant. (App. Br. 21-22.)
We do not find the Appellant’s arguments persuasive.
We do not see that Ausubel and Macready are so disparate from each
other that one of ordinary skill would not look to the computerized trading
system of Macready to modify Ausubel’s computerized auction. Given that
they are both related to computer automated transactions involving buyers
and sellers and thus related to the claimed invention, one of ordinary skill in
the art of auctions would find they are analogous. When a person having
ordinary skill in the art would consider it relevant or related to the invention
sought to be patented then the prior art is “analogous.” See Dann v.
Johnston, 425 U.S. 219, 229 (1976). Notwithstanding whether the prior art
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is analogous, “[w]hen 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 [in] a different one. If a person of ordinary skill [in the art] can
implement a predictable variation, § 103 likely bars its patentability.” KSR.
at 1740.
We disagree that the examiner has failed to point to any motivation in
the references. The Examiner clearly pointed to page 2, [0012] ll. 7-9 of
Macready. (Answer 6.) Nevertheless, as we stated earlier, in KSR,, the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” id. at 1739 and
discussed circumstances in which a patent might be determined to be
obvious without an explicit application of the teaching, suggestion,
motivation test. “[T]he 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.” Id. at 1741. Here the Examiner articulated a reason
with some rational underpinning to support the legal conclusion of
obviousness.
The argument that Macready does not teach or suggest determining a
winner in the auction, based on the constraint specified by the participant, is
the same argument the Appellant made against Ausubel. The Examiner did
not rely on Macready to show this limitation of the claim. The Examiner
relied on Ausubel. We addressed that supra with respect to the rejection of
claim 1. Ausubel shows determining a winner in the auction based on a
constraint specified by a participant to the extent claimed.
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Claim 9
Claim 9 further limits the process of claim 1 by providing that the
seller constraints, for which auction system is enabled to be responsive
(claim 7), specify a minimum value for a combination of a minimum number
of items to be sold.
The Appellant argues that “Macready makes no reference to the seller
constraints specifying any of a minimum value for a combination of items,
or a minimum number of items to be sold, or a minimum value for a
combination of items correlated to a precedence relationship, as in claims 8-
10. Rather, Macready merely notes that “[b]uyers and sellers may express
constraints over both continuous and discrete variables,” (Macready at page
6, paragraph [0077]) and that “a seller [may] express additional linear
constraints” (Macready at page 8, paragraph [0108]).” (App. Br. 22.)
We do not find the Appellant’s argument persuasive as to error in the
rejection of claim 9. The Appellant fails to address the Examiner’s point
that “[t]he ordinary practitioner would have seen it as obvious that minimum
values could easily be involved in auctions which involve multiple items and
in which the seller(s)’s constraints permit or perhaps even require bidding on
a combination of items.” (Answer 8.) In effect, the Examiner is arguing that
one skilled in the art would have known that minimum values and bidding
on multiple items are among the constraints a seller might set. The Brief
does not challenge this.
Claim 10
The Appeal Brief (pp. 22-23) indicates that, for this claim, the
Appellant incorporates the arguments made with respect to the rejection of
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claim 9. In that regard, given that we have not found the Appellant’s
argument persuasive as to error in the rejection of claim 9, we reach the
same conclusion with respect to the Appellant’s arguments as to the
rejection of claim 10.

New Ground of Rejection
We enter a new ground of rejection under 35 U.S.C. § 103 of claims
1-12 and 14-19 in light of the recent decision in In re Comiskey, 499 F.3d
1365 (Fed. Cir. 2007). The claimed process is a computer-implemented
method for facilitating an auction. But for the mention of a computer in the
preamble of the claim, the steps set forth in the claims would, absent the
presence of a computer, recite wholly mental steps. Comiskey established
that “the application of human intelligence to the solution of practical
problems is not in and of itself patentable.” Id. at 1379.
The Supreme Court has reviewed process patents reciting
algorithms or abstract concepts in claims directed to industrial
processes. In that context, the Supreme Court has held that a
claim reciting an algorithm or abstract idea can state statutory
subject matter only if, as employed in the process, it is
embodied in, operates on, transforms, or otherwise involves
another class of statutory subject matter, i.e., a machine,
manufacture, or composition of matter. 35 U.S.C. § 101.

Id. at 1376. The instant claims are arguably directed to statutory subject
matter because the steps are embodied in another class of statutory subject
matter, i.e., a computer. “When an unpatentable mental process is combined
with a machine, the combination may produce patentable subject matter ….”
Id. at 1379. However, “[t]he routine addition of modern electronics to an
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otherwise unpatentable invention typically creates a prima facie case of
obviousness.” Id. at 1380.
If prosecution should continue, the Examiner may also want to
consider whether the claims should be rejected under the second paragraph
of 35 U.S.C. § 112 in light of the recent decision in Halliburton Energy
Services, Inc. v. M-I LLC, 2007-1149, decided January 25, 2008 (Fed. Cir.
2008). The dispute over the patentability of the claims has been over the
meaning to be given certain claim terms (e.g., “column generation
formulation” in claim 13). Central to that dispute is a debate over the
ordinary and customary usage of these terms. Given the Appellant’s
insistence that the Examiner has improperly construed the terms on the
ground that the Examiner applied a meaning to these terms that an ordinary
artisan would not commonly use but without providing evidence establishing
what these terms would mean to the ordinary artisan, the Examiner could
argue that the disputed terms lack clear meaning to the ordinary artisan and
are thus insolubly ambiguous. (Id. at page 7.) A similar concern could be
raised with respect to the meaning of the claim terms “characterizes” and
“based on” that depend on the meaning of the term “constraint,” the meaning
of which has been in dispute.

CONCLUSIONS OF LAW
We conclude the Appellant has failed to show that the Examiner erred
in rejecting claims 1-2, 6-7, and 11-19 as unpatentable over Ausubel, in
rejecting claims 3-5 as unpatentable over Ausubel in view of McAfee, and in
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rejecting claims 8-10 as unpatentable over Ausubel in view of Macready.
We enter a new ground of rejection under 35 U.S.C. §103 of claims 1-12 and
14-19.
DECISION
The decision of the Examiner to reject claims 1-19 is affirmed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
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) (2007).
AFFIRMED; 37 C.F.R. § 41.50(b)
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