Ex Parte Dutta

Board of Patent Appeals and Interferences

Sep 13, 2009

09915439 (B.P.A.I. Sep. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RABINDRANATH DUTTA
____________

Appeal 2009-004343
Application 09/915,439
Technology Center 3600
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Decided: September 14, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004343
Application 09/915,439
2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-25 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a method for
performing an anonymous online transaction. A request for an enhanced
certificate is received from a requestor at a certificate authority server. It is
determined whether the requestor qualifies for the enhanced certificate. If
the requestor qualifies, the requestor is issued an enhanced certificate from
the certificate authority server. (Spec. 3-7). Claim 1, reproduced below, is
representative of the subject matter of appeal.

1. A method for performing an anonymous online transaction
comprising:
receiving a request for an enhanced certificate from a requestor
at a certificate authority server;
determining whether the requestor qualifies for the enhanced
certificate;
issuing the requestor an enhanced certificate from the certificate
authority server if the requestor qualifies;
receiving an offer from a supplier with a supplier enhanced
certificate at an aggregate exchange server;
receiving a bid from a purchaser with a purchaser enhanced
certificate at the aggregate exchange server;
determining whether the bid matches the offer;
sending the supplier the purchaser enhanced certificate from the
aggregate exchange server, and sending the purchaser the supplier
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enhanced certificate from the exchange server, if the bid matches the
offer; and
receiving agreement of the matched supplier and purchaser at
the exchange server to execute the anonymous transaction.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejections:
Kiselik US 2001/0034631 A1 Oct. 25, 2001
Hambrecht US 6,629,082 B1 Sep. 30, 2003
Herschkorn US 6,691,094 B1 Feb. 10, 2004

The following rejection is before us for review:
1. Claims 1-25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hambrecht, Kiselik, and Herschkorn.

THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejection.
This issue turns on whether it would have obvious to combine the
teachings of Hambrect, Kiselik, and Herschkorn to have an auction system
with certificate authority verification and anonymous transactions.

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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Hambrecht has disclosed an auction system (Title) used for pricing
and allocating securities. Bids are accepted only from qualified potential
purchasers (Abstract).
FF2. Hambrecht has disclosed that individual investors may be required to
use a third-party Certificate Authority to validate a bidder’s digital signature
(Col. 9:57-60).
FF3. Hambrecht discloses that information about an offering to accept bids
is provided to potential purchasers (Abstract).
FF4. Kiselik has disclosed a method of selection of parties to an
arrangement between a requestor and a satisfier of selected requirements
(Title).
FF5. Kiselik has disclosed that a buyer furnishes qualifications which are
determined to be qualified or not, and if not qualified, the buyer is informed
and may provide more information (Fig. 3, [0032]).
FF6. Kiselik has disclosed that a rating system is used in the system in
which the requester rates the satisfier of the performance (Abstract).
FF7. Herschkorn has disclosed a bank loan trading system where sellers
and buyers enter offers and bids and it is determined if a match is made with
one of the bids and offers of the same loan (Title, Abstract).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF8. Herschkorn has disclosed that systems with users and dealers has
cross-matching systems that allows users to trade with each other
anonymously (Col. 3:58-61).

PRINCIPLES OF LAW
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, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
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.”)
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 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, 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), and reaffirmed principles based on its precedent that “[t]he
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. 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 Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (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.

ANALYSIS
The Appellant argues that the rejection of claims 1, 11, and 21 is
improper because the references fail to teach or suggest “receiving
agreement of the matched supplier and purchaser at the exchange server to
execute an anonymous transaction” (Br. 11). The Appellant argues that
Kiselik and Hambrecht both teach away from using an anonymous
transaction (Br. 11-12). The Appellant argues that the teaching of an
anonymous transaction shown by Herschkorn does not cure the fact that the
rest of the references teach away from this and that the combination works in
an unexpected manner (Br. 13-14).
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In contrast the Examiner has determined that from the combination of
Hambrecht, Kiselik, and Herschkorn it would have been obvious to have
qualified buyers and sellers, and to have enabled trade without disclosing
privacy identification information in an auction on an Internet website (Ans.
4-5 and 8).
We agree with the Examiner. Hambrecht has disclosed an auction
system (FF1) that uses a third-party Certificate Authority to validate a
bidder’s digital signature (FF2). Kiselik has disclosed a system where a
buyer furnishes qualifications which are determined to be qualified or not,
and if not qualified, the buyer is informed and may provide more
information (FF5) which would provide an advantage of enabling more
buyers to be qualified. Herschkorn has disclosed a bank loan trading system
where sellers and buyers enter offers and bids (FF7), and cross-matching of
systems allows users to trade with each other anonymously (FF8). An
auction system may either disclose users in some way to each other, or
remain anonymous, each instance providing respective advantages. When
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her technical
grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. KSR, 550 U.S. at 421.
Here, the use of anonymous trading as disclosed by Hershkorn would allow
privacy to be maintained in transactions between buyers and sellers if
desired. The modification of the system of Hambrect to include the buyer
qualification system of Kiselik and the anonymous trading system of
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Herschkorn in order to increase buyers and maintain privacy in transactions
is considered an obvious, predictable combination of known elements for
their known functions with articulated reasoning and rational underpinning.
For these reasons the rejection of claims 1, 11, and 25, as well as
dependent claims 2-10 and 12-24 which have not been argued separately, is
sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-25 under 35 U.S.C. § 103(a) as unpatentable over
Hambrecht, Kiselik, and Herschkorn.

DECISON
The Examiner’s rejection of claims 1-25 is sustained.
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

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