Ex Parte Emigh

Patent Trial and Appeal Board

Mar 12, 2013

12804320 (P.T.A.B. Mar. 12, 2013)

a 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.
TA-024 1543
EXAMINER
CIV AN, ETHAN D
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
12/804,320 07/19/2010
85853 7590
Aaron Emigh
762 Judith Court
Incline Village, NV 89451
Aaron T. Emigh
03/13/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON T. EMIGH
Appeal 2012-005145
Application 12/804,320
Technology Center 3600
Before: ALLEN R. MACDONALD, LINDA E. HORNER,
MICHAEL W. KIM, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2012-005145
Application 12/804,320
STATEMENT OF CASE
Appellant appeals under 35U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART, and enter a NEW GROUND of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).
The claims are directed to techniques for pricing based on browsing
history (Spec., para. [0001]). Claims 1 and 19, reproduced below, are
illustrative of the claimed subject matter:
1. A method for pricing, comprising executing
programmatic instructions at a computing device for:
detecting a visitor at a first e-commerce site;
determining that an item offered for sale at the first
e-commerce site is of potential interest to the visitor;
detecting a second e-commerce site at which the
user has viewed the item, wherein the second e-commerce
site is different than the first e-commerce site;
determining a competitive price, wherein the
competitive price is associated with a web page, wherein
the web page has offered the item at the second e-
commerce site;
calculating an offering price, wherein the offering
price is based on the competitive price;
offering the item to the visitor at the offering price
at the first e-commerce site; and
selling the item to the visitor at the offering price.
19. A system for pricing, comprising:
a processor configured to:
detect a visitor at a first e-commerce site;
determine that an item offered for sale at the first
e-commerce site is of potential interest to the visitor;
detect a second e-commerce site at which the user
has viewed the item, wherein the second e-commerce site
is different than the first ecommerce site;
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Application 12/804,320
determine a competitive price, wherein the
competitive price is associated with a web page, wherein
the web page offered the item at the second e-commerce
site;
calculate an offering price, wherein the offering
price is based on the competitive price;
offer the item to the visitor at the offering price at
the first ecommerce site; and
sell the item to the visitor at the offering price; and
a memory coupled with the processor, wherein the
memory provides instructions to the processor.
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Balin (US 2006/0149618 Al, pub. Jul. 6, 2006) in view of Freeman
(US 2008/0040143 Al, iss. Feb. 14, 2008).
ISSUES
Did the Examiner err in asserting a combination of Balin and Freeman
discloses or suggests “detecting a second e-commerce site at which the user
has viewed the item, wherein the second e-commerce site is different than
the first e-commerce site” and “wherein the competitive price is associated
with a web page, wherein the web page has offered the item at the second e-
commerce site,” as recited in independent claim 1'?
Did the Examiner fail to establish a prima facie case of obviousness
by failing to assert which specific portions at paragraphs [0035]-[0067] of
Freeman correspond to the specific aspects set forth in dependent claims 2-5,
7, 8, and 11?
1 We choose independent claim 1 as representative of claims 1, 6, 9, 10, and
12-18, and 20. See 37 C.F.R. § 41.37(c)(l)(vii). Although Appellant did not
argue independent claim 19 separately from independent claim 1, we treat
claim 19 separately for the reasons provided infra.
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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).
Freeman
FF 1. Freeman discloses tracking impressions on the World Wide
Web (“web”) pages and determining whether an impression led a user to
purchasing a product advertised in the contents of the impression (para.
[0005]).
FF2. In a case where a user clicks on an impression or advertisement
link provided as part of an e-mail message, that user may be identified by
looking up the user’s information. This information may be in the form of a
cookie stored on the user’s device from which the user is accessing the
impression or advertisement link. Alternatively, the user may be asked to
enter his or her name and any other information related to the user. The user
information is then transmitted in a URL to the web site providing the
products or services advertised on the impressions or advertisement links.
(Para. [0038]).
ANALYSIS
Independent Claim 1
We are not persuaded the Examiner erred in asserting a combination
of Balin and Freeman discloses or suggests “detecting a second e-commerce
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site at which the user has viewed the item, wherein the second e-commerce
site is different than the first e-commerce site” and “wherein the competitive
price is associated with a web page, wherein the web page has offered the
item at the second e-commerce site,” as recited in independent claim 1 (App.
Br. 4-6; Reply Br. 4-6). As an initial matter, the Examiner has cited
paragraph [0034] of Balin for disclosing the first e-commerce site, and
paragraph [0040] of Balin for disclosing the second e-commerce site, with
“[t]he sole difference between Balin and the claimed subject matter [being]
that instead of using a historical price determined based on a user’s web
history, Balin utilizes a price based on several major retailers” (Ans. 5, 7).
For the “historical price determined based on a user’s web history,” the
Examiner cites Freeman (Ans. 6).
Appellant asserts that “Freeman teaches tracking advertising
impressions, which are not the same thing as viewing the item, much less ‘an
item offered for sale at the first e-commerce site’ (the antecedent for ‘the
item’). In fact, even in the case where an advertisement is advertising an
item, it would not be for sale at the first ecommerce site, but rather at
another site that was advertising” (App. Br. 4-5; Reply Br. 4-5). However,
Freeman discloses tracking whether a user clicked an impression or
advertisement link (FF2), which would direct a user to an e-commerce site
where the user would have viewed the item displayed in the impression or
advertisement link. Thus, tracking whether a user clicked an impression or
advertisement link is tracking “a user’s web history.”
Appellant then asserts that “Freeman relies on explicitly storing
information relating to impressions that were viewed, and sharing that
information via cookies or URF embedding. (See Freeman, paragraphs 5-6,
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24-25, and 38-39, and Figures 3a-3d.) Such a scheme presupposes data
sharing mechanisms which operate within a web site and not across a first
and second site, which are different from- and competitive with - each other”
(App. Br. 5; Reply Br. 5). However, Balin, not Freeman, is cited for
disclosing offers on competitive sites (Ans. 5). In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single reference alone
does not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”).
Appellant additionally asserts that “since Freeman relies on
mechanisms that track an advertisement from display to purchase, it cannot
be combined with Balin in the way envisioned by the Examiner. Since it is
tracking a view of an advertisement to purchase of an item advertised,
necessarily any purchase must be made at the price that was advertised”
(App. Br. 5; Reply Br. 5). However, Freeman discloses tracking a user’s
click of an impression or advertisement link even without a purchase by the
user (FF2). Thus, because Freeman’s tracking does not require a purchase,
we are not persuaded that any required purchase in Freeman’s tracking
precludes it from being combined with Balin in the manner set forth by the
Examiner.
For these reasons, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a), and claims 6, 9, 10, 12-18, and 20 fall with claim 1.
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Dependent Claims 2-5, 7, 8, and 11
We are persuaded the Examiner failed to establish a prima facie case
of obviousness by failing to assert which specific portions at paragraphs
[0035]-[0067] of Freeman correspond to the specific aspects set forth in
dependent claims 2-5, 7, 8, and 11 (App. Br. 6-10; Reply Br. 6-10). In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (during examination, the
examiner bears the initial burden of establishing a prima facie case of
obviousness). For example, dependent claim 3 recites “wherein determining
that the URF was visited includes setting style information associated with a
link, wherein the link is associated with the URF.” The Examiner asserts
that paragraphs [0035]-[0067] of Freeman disclose this aspect, without
further analysis (Ans. 7, 12). However, a word search of Freeman does not
return any mention of “style,” and we are unable to ascertain which portion
of paragraphs [0035]-[0067] of Freeman is supposed to correspond to the
recited “style information.” In the absence of such a showing by the
Examiner, a prima facie case of obviousness has not been established with
respect to dependent claim 3, and thus we will not be sustain this rejection.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (the PTO fails to
establish a prima facie case “when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for the rejection”) (citation omitted). For the same reasons, we also do not
sustain the rejections of dependent claims 2, 4, 5, 7, 8, and 11.
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NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
independent claim 19 under 35 U.S.C. § 112, second paragraph, for
indefiniteness. Specifically, we construe processor in “a processor
configured to” as a nonce word invoking § 112, sixth paragraph, and find
that the Specification does not disclose sufficient structure, in the form of a
general purpose processor and an algorithm, corresponding to “calculate an
offering price, wherein the offering price is based on the competitive price,”
as required by Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521
F.3d 1328, 1333 (Fed. Cir. 2008).
FINDINGS OF FACT
Specification
FF3. Fig. 1 discloses user device 101 and subscription management
server 105.
FF4. The Specification does not mention the term “processor” other
than in originally-filed claim 19.
FF5. The Specification recites that “[a] price can be calculated for
the item (for example at the server during construction of a response, which
for example can be done with an asynchronous call such as an AJAX call, or
with a redirect to a page that is being constructed) which is based on other
prices that the user has seen (504). For example, a lowest price may be
matched, or beaten by a predetermined amount or percentage, or an amount
or percentage relating to the visitor (for example by determining that a
visitor meets one or more criteria such as previous purchases, etc.), or may
have a premium added to it, or may be processed in any or all of these ways
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with a threshold such as a minimum price that will be offered. In various
embodiments, pricing may or may not include shipping costs” (para.
[0057]).
PRINCIPLES OF LAW
Analysis of Whether Computer-Implemented
Claim Limitations Invoke 35 U.S.C. § 112, Sixth Paragraph
Special rules of claim construction allow for claim limitations drafted
in functional language and are set forth in 35 U.S.C. § 112, sixth paragraph,
which provides for:
[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital
of structure, material, or acts in support thereof, and such claim shall
be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision
permits a claim limitation to be set forth using solely functional language, it
operates to restrict such claim limitation to those structures, materials, or
acts disclosed in the specification (or their equivalents) that perform the
claimed function. Personalized Media Communications, LLC v. Int'l Trade
Comm 'n, 161 F.3d 696, 703 (Fed. Cir. 1998)
The Federal Circuit has established that use of the term “means” is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph: use of the word “means”
creates a rebuttable presumption that the inventor intended to invoke § 112,
sixth paragraph, whereas failure to use the word “means” creates a
rebuttable presumption that the inventor did not intend the claims to be
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Application 12/804,320
governed by § 112, sixth paragraph. Id. at 703-04; Flo Healthcare
Solutions, LLC v. Kappos, 697 F.3d 1367 (Fed. Cir. 2012).
When an inventor has not signaled an intent to invoke § 112, sixth
paragraph by using the term “means,” the presumption against its invocation
is strong but can be overcome if “the claim term fails to recite sufficiently
definite structure or else recites function without reciting sufficient structure
for performing that function.” Lighting World, Inc. v. Birchwood Lighting,
Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting CCS Fitness Inc. v.
Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (internal quotation
marks and citation omitted)). A claim limitation that “essentially is devoid
of anything that can be construed as structure” can overcome the
presumption. Flo Healthcare, 697 F.3d at 1374. The presumption may be
overcome by a claim limitation that uses a non-structural term that is
“simply a nonce word or a verbal construct that is not recognized as the
name of structure” but is merely a substitute for the term ‘means for’
associated with functional language. Lighting World, 382 F.3d at 1360.
Claim language that further defines a term that otherwise would be a nonce
word can denote sufficient structure to avoid a § 112, sixth paragraph
construction, MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir.
2006), as can a claim limitation that contains a term that “is used in common
parlance or by persons of skill in the pertinent art to designate structure.”
Lighting World, 382 F.3d at 1359. Nor will claim language invoke a § 112,
sixth paragraph construction if persons of ordinary skill in the art reading the
specification understand the term to be the name for a structure that
performs the function, even when the term covers a broad class of structures
or identifies the structures by their function. Greenberg v. Ethicon Endo-
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Application 12/804,320
Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their
names from the functions they perform.”)
Indefiniteness Analysis for Computer-Implemented
Claim Limitations Interpreted Under
35 U.S.C. § 112, Sixth Paragraph
The structure corresponding to a 35 U.S.C. § 112, sixth paragraph,
claim limitation for a computer-implemented function must include the
algorithm needed to transform the general purpose computer or processor
disclosed in the specification into the special purpose computer programmed
to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333. Thus, the
specification must sufficiently disclose an algorithm to transform the general
purpose computer or processor to a special purpose processor programmed
to perform the disclosed algorithm. Id. at 1338. An algorithm is defined, for
example, as “a finite sequence of steps for solving a logical or mathematical
problem or performing a task.” Microsoft Computer Dictionary, Microsoft
Press (5th ed. 2002). Applicant may express the algorithm in any
understandable terms including as a mathematical formula, in prose, in a
flow chart, or “in any other manner that provides sufficient structure.”
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
A rejection under § 112, second paragraph, is appropriate if the
specification discloses no corresponding algorithm associated with a
computer or processor. Aristocrat, 521 F.3d at 1337-38. Mere reference to
a general purpose computer or processor with appropriate programming
without providing an explanation of the appropriate programming, or to
“software” without providing detail about the means to accomplish the
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software function, is not an adequate disclosure. Id. at 1334; Finisar, 523
F.3d at 1340-41. In addition, simply reciting the claimed function in the
specification, while saying nothing about how the computer or processor
ensures that those functions are performed, is not a sufficient disclosure for
an algorithm which, by definition, must contain a sequence of steps.
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir.
2009).
If the specification explicitly discloses an algorithm, the sufficiency of
the disclosure must be determined in light of the level of ordinary skill in the
art. Aristocrat, 521 F.3d at 1337. The specification must sufficiently
disclose an algorithm to transform a general purpose processor to a special
purpose processor so that a person of ordinary skill in the art can implement
the disclosed algorithm to achieve the claimed function. Id. at 1338.
ANALYSIS
Section 112, sixth paragraph
The issue is whether the term “a processor configured to” as used in
claim 19 is a verbal construct devoid of structure that is used as a substitute
for the term “means for” and so invokes the application of § 112, sixth
paragraph. Claim 19 recites a system for pricing comprising a memory
coupled to “a processor configured to” perform several steps, including
“calculate an offering price, wherein the offering price is based on the
competitive price.” As such, failure to recite the word “means” creates the
strong presumption that the inventor did not intend the limitation “a
processor configured to” to be governed by § 112, sixth paragraph. To see
whether the presumption is overcome, we look to how a skilled artisan
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would understand “processor,” whether the limitation recites sufficient
structure, material, or acts for achieving the recited functions, and whether
the term “processor” is modified by functional language.
The Specification makes no mention of the term “processor,” let alone
a definition (FF4). CCS Fitness, Inc., 288 F.3d at 1366 (claim terms are
properly construed to include limitations not otherwise inherent in the term
when the Specification “clearly set[s] forth a definition of the disputed claim
term.”) Presumably user device 101 and subscription management server
105 (FF3) include a processor; however, no details are provided. Thus, we
look to the dictionary definition of a “processor,” which would be
recognized, by a skilled artisan in computer programming, as a computer, a
central processing unit, or a program that translates another program into a
form acceptable by the computer being used.2 See Lighting World, 382 F.3d
at 1360-61 (consulting dictionaries to determine whether a claim term has a
generally understood meaning that denotes structure). Given this dictionary
definition, the “processor” recited in claim 19 would not be recognized by a
skilled artisan as the name of a sufficiently definite structure for performing
the “calculating” function recited above. As such, the term “processor” at
least initially appears to be merely a substitute for the term “means for”
associated with recited functional language.
To confirm whether the presumption against such a substitution is
overcome, we look to determine whether the functions performed by the
processor are typical functions found in a commercially, available off-the-
shelf processor, which would weigh against invoking § 112, sixth paragraph.
American Heritage Dictionary of the English Language 1398 (4th ed.
2006) (defining processor).
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See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011) (functions such as “processing,” “receiving,” and
“storing” that can be achieved by any general purpose computer without
special programming do not require disclosure of more structure than the
general purpose processor that performs those functions). If the functions
performed by the processor are not typical functions found in a processor,
we look to see whether the claim recites sufficient, structure, material, or
acts for achieving the specified function. If so, § 112, sixth paragraph
should not be applied. Also weighing against invoking § 112, sixth
paragraph would be when the term processor includes a structural modifier,
such as a “height-adjustment” processor. To that end, we find that none of
the above factors apply to the “processor” recited in claim 19. A
commercially, available off-the-shelf processor would not be able to
“calculate an offering price, wherein the offering price is based on the
competitive price,” as recited in claim 19. Other than the functional
language itself, claim 19 does not recite sufficient structure, material, or acts
for achieving the specified function. In particular, the aforementioned
limitation only recites that “wherein the offering price is based on the
competitive price,” which is a condition, and not structure, material, or even
an act. And finally, the term “processor” in claim 19 does not include any
structural modifiers.
Unlike a recited circuit coupled with a description of the circuit’s
operation in the claims, which has been found to connote sufficient structure
to avoid application of § 112, sixth paragraph, here the recited processor and
claim language does not recite anything to describe the “calculating”
operation. Accord MIT, 462 F.3d at 1354-56; Linear Tech. Corp. v. Impala
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Linear Corp., 379 F.3d 1311, 1320—21 (Fed. Cir. 2004); Apex Inc. v. Raritan
Comp., Inc., 325 F.3d 1364, 1374 (Fed. Cir. 2003).
Unlike the claims in Inventio AG v. ThyssenKrupp Elevator Americas
Corp., 649 F.3d 1350, 1359-60 (Fed. Cir. 2011), in which the claimed
“computing unit” that was held to connote sufficiently definite structure was
claimed to be connected to a modernizing device and to generate a
destination signal for transmission to the modernizing device and was
further claimed to be connected to floor terminals of the elevator system and
evaluate incoming call reports, destination floors, and identification codes to
generate the destination signal for processing by the modernizing device, the
claim here nakedly recites “a processor” without a modifier, the claim does
not recite sufficient structure other than being connected to a memory, which
is not sufficient for performing the recited function, and the claim does not
recite, and the written description does not delineate, the internal
components of the processor or in another way convey structure to skilled
artisans to support a conclusion that process is not a purely functional
limitation (FF3, FF4).
And unlike a claimed control unit that further recited “a CPU and a
partitioned memory system” to provide sufficient structure to perform the
recited “controlling the communication unit” function and so avoid invoking
§ 112, sixth paragraph, see LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d
1364, 1372 (Fed. Cir. 2006), rev'd on other grounds, Quanta Computer, Inc.
v. LG Elecs., Inc., 553 U.S. 617 (2008), here the “calculating” function is not
a function that can be executed solely by a general-purpose processor and a
partitioned memory system.
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As such, we conclude that the term “processor” is a non-structural
term that would not be understood by a skilled artisan as having sufficiently
definite structure to perform the recited functions and, therefore, is used as a
substitute for the term “means for” and so invokes the application of § 112,
sixth paragraph.
Section 112, second paragraph
Given that “a processor configured to” recited in independent claim
19 invokes § 112, sixth paragraph, the structure in the Specification
corresponding to a 35 U.S.C. § 112, sixth paragraph, claim limitation for a
processor-implemented function must include an algorithm, for performing
the recited function, that transforms the general purpose processor to a
special purpose processor programmed to perform the disclosed algorithm.
Aristocrat, 521 F.3d at 1333, 1338. The Specification must disclose an
algorithm that addresses each functional limitation. Default Proof Credit
Card Sys., Inc. v. Home Depot U.S.C., Inc., 412 F.3d 1291, 1298 (Fed. Cir.
2005) (“[w]hile corresponding structure need not include all things
necessary to enable the claimed invention to work, it must include all
structure that actually performs the recited function.” (citing Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir.
2002))). Accordingly, the Specification must disclose a sufficient algorithm
for all recited functional claim limitations, including “calculate an offering
price, wherein the offering price is based on the competitive price,” as
recited in independent claim 19.
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The only portion of the Specification that discloses any details related
to “calculate an offering price, wherein the offering price is based on the
competitive price” relates to prose describing certain exemplary ways in
which such an offering price may be calculated (FF5). However, these
myriad of examples are, in effect, an impermissible attempt to claim every
way of “calculating an offer price” under the sun, and do not constitute a
sequence of steps of a particular algorithm required to meet the definiteness
requirements of § 112, second paragraph. ePlus, Inc. v. Lawson Software,
Inc., 700 F.3d 509, 519 (Fed. Cir. 2012) (“There is no instruction for using a
particular piece of hardware, employing a specific source code, or following
a particular algorithm. There is therefore nothing in the specification to help
cabin the scope of the functional language in the means for processing
element: The patentee has in effect claimed everything that generates
purchase orders under the sun. The system claims are therefore indefinite”);
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir.
2009); Finistar, 523 F.3d at 1385 (quoting In re Freeman, 573 F.2d 1237,
1245—46 (CCPA 1978)) (“[e]ven described ‘in prose,’ an algorithm is still ‘a
step-by-step procedure for accomplishing a given result’”).
Accordingly, we find that independent claim 19 is indefinite because
the Specification fails to disclose corresponding structure for the means-
plus-fimction limitation “a processor configured to . . . calculate an offering
price, wherein the offering price is based on the competitive price.”
Obviousness Rejection of Independent Claim 19
For the reasons discussed above, independent claim 19 is indefinite.
Therefore, we reverse, pro forma, the Examiner’s § 103(a) rejection of
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independent claim 19 because it was necessarily based on speculation and
assumptions as to the scope of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962). Specifically, as there is no algorithm for “calculate
an offering price, wherein the offering price is based on the competitive
price,” as recited in independent claim 19, there is no way to determine
whether any prior art discloses that non-existent algorithm. Of course, if
these claims were not construed under § 112, sixth paragraph, and therefore
were not indefinite under § 112, second paragraph, we would sustain the
Examiner’s § 103(a) rejection of independent claim 19, which contains
similar limitations to independent claim 1, for which Appellant has not made
separate, detailed arguments.
DECISION
The Examiner’s rejection of claims 1, 6, 9, 10, 12-18, and 20 under
35 U.S.C. § 103(a) is AFFIRMED.
The Examiner’s rejection of claim 19 under 35 U.S.C. § 103(a) is
REVERSED pro forma.
The Examiner’s rejection of claims 2-5, 7, 8, and 11 under 35 U.S.C.
§ 103(a) is REVERSED.
We newly reject claim 19 under 35 U.S.C. § 112, second paragraph,
for indefmiteness.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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.”
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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 ....
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board." Should Appellants elect to
prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1),
in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the affirmance is
deferred until conclusion of the prosecution before the Examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(l)(iv).
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Appeal 2012-005145
Application 12/804,320
AFFIRMED-IN-PART; 37 C.F.R. $ 41.50(b)
JRG
20