Ex Parte Emigh

Patent Trial and Appeal Board

Feb 28, 2017

12804320 (P.T.A.B. Feb. 28, 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.
12/804,320 07/19/2010 Aaron T. Emigh TA-024 1543
85853 7590
Aaron Emigh
762 Judith Court
Incline Village, NV 89451
EXAMINER
CIV AN, ETHAN D
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
02/28/2017 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 2014-006517
Application 12/804,320
Technology Center 3600
Before MICHAEL W. KIM, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1 and 3—32.1 We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellant asserts that “[cjlaims 1 and 3—32 are currently pending in
the application, and are attached hereto as an appendix. All pending claims
were finally rejected by the Examiner. Claims 1—18, 20, and 27—32 are the
subject of this appeal.” App. Br. 2; see also Reply Br. 7 (“With regard to the
Examiner’s arguments in his Answer regarding claims 19 and 21—26, they
are irrelevant, because these claims are not the subject of this appeal.”). 37
C.F.R. § 41.31(c) (2011) reads “[a]n appeal, when taken, is presumed to be
taken from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office.” No such
Appeal 2014-006517
Application 12/804,320
The invention relates generally to techniques for pricing based on
browsing history. Spec. 11.
Claims 1,19, and 20 are independent. Independent claim 1 is
illustrative:
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, wherein
determining that the item offered for sale at the first e-commerce
site is of potential interest to the visitor includes determining that
a URL was visited, wherein the URL relates to the item;
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.
Claims 1 and 3—32 are rejected under 35U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement.
Claims 1 and 3—32 are rejected under 35U.S.C. § 112, second
paragraph, for indefmiteness.
We AFFIRM-IN-PART.
amendment has been filed or entered. Accordingly, we will treat as
appealed the rejection of all of claims 1 and 3—32.
2
Appeal 2014-006517
Application 12/804,320
ANALYSIS
Written Description Rejection of Claims 1—18, 20, and 27—32
We are persuaded the Examiner erred in asserting that “calculating an
offering price, wherein the offering price is based on the competitive price,”
as recited in independent claim 1, does not comply with the written
description requirement. App. Br. 4—7; Reply Br. 2—7. In setting forth the
rejection, the Examiner asserts the following:
Second, appellant argues that paragraph 0057 of the
specification provides support for this claim element. Appeals
Brief, page 6. However, while such paragraph is undoubtedly
relevant, the examiner respectfully submits that it does not
provide an adequate explanation of this portion of the invention.
Instead of providing one or more algorithms or flow charts for
“calculating an offering price, wherein the price is based on the
competitive price”, this paragraph provides a list of examples of
types of methods that can be used, without detailing their steps.
For example, a lowest price can be matched.
Ans. 9-10. The Examiner’s assertions are misplaced, because we are
unpersuaded that the written description requirement requires that for any
particular method step, the Specification must provide either “one or more
algorithms or flow charts.” More specifically, we are unpersuaded that the
written description requirement cannot be met by “a list of examples of
types of methods that can be used,” so long as those examples describe the
limitation at issue in sufficient detail such that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991). To that end, paragraph 57 of the Specification reads
as follows:
3
Appeal 2014-006517
Application 12/804,320
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 with a
threshold such as a minimum price that will be offered. In
various embodiments, pricing may or may not include shipping
costs.
Spec. 1 57 (emphasis added). We are persuaded that the italicized and
bolded portion of the above paragraph provides literal written description
support for “calculating an offering price, wherein the offering price is based
on the competitive price,” as recited in independent claim 1, and that the
balance of paragraph 57 provides sufficient relevant detail such that one
skilled in the art can reasonably conclude that the inventor had possession of
that claim limitation. Put another way, we are persuaded that one of
ordinary skill would have been able to “calculate] an offering price,
wherein the offering price is based on the competitive price,” based on the
criteria provided, in simplest example, by making the offering price equal to
or less than the lowest price.
The Examiner asserts further that “[o]ne problem is how to determine
what is a ‘competitive price’ given that neither of two (or even ten) web sites
may have competitive prices with respect to a particular good. Thus, the
specification does not adequately explain this claim element.” Ans. 10. We
acknowledge the Examiner’s concern that the portion of the Specification
cited by the Appellant does not recite the exact term “competitive price.”
4
Appeal 2014-006517
Application 12/804,320
Nevertheless, we are persuaded that one of ordinary skill would conclude
that “other prices,” and especially a “lowest price,” both of which are
disclosed at paragraphs 56 and 57 of the Specification, provides sufficient
written description support for the recited “competitive price.” More
specifically, we are persuaded that an “other price” for the same item is, by
its very nature, a competitive price, and that in commerce generally, the
lowest price is the most competitive price, and vice versa.
We do not sustain the written description rejection of independent
claim 1, or dependent claims 2—18, 20, and 27—32 which depend therefrom.
Indefiniteness Rejection of Claims 1—18, 20, and 27—32
We are persuaded the Examiner erred in asserting that “calculating an
offering price, wherein the offering price is based on the competitive price,”
as recited in independent claim 1, is indefinite. App. Br. 8. For the rejection
of independent claim 1 on this ground, the Examiner provides a similar
analysis as was set forth for the above rejection. Final Act. 6; Ans. 10. That
analysis is unpersuasive for the same reasons as set forth supra.
We do not sustain the indefmiteness rejection of independent claim 1,
or dependent claims 2—18, 20, and 27—32 which depend therefrom.
Written Description and Indefiniteness Rejection of Claims 19 and
21-26
The Appellant has not set forth any arguments as to why the Examiner
has erred in rejecting independent claim 19 and dependent claims 21—26 on
these grounds. Accordingly, we summarily sustain those rejections.
5
Appeal 2014-006517
Application 12/804,320
DECISION
We REVERSE the rejection of claims 1—18, 20, and 27—32.
We AFFIRM the rejection of claims 19 and 21—26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
6