Ex Parte Fralic

Board of Patent Appeals and Interferences

Jun 28, 2010

10047366 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD R. FRALIC
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Appeal 2009-009110
Application 10/047,366
Technology Center 3600
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Decided: June 28, 2010
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Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-3 and 5. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
The Examiner relies upon the following as evidence of unpatentability:

Appeal 2009-009110
Application 10/047,366

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Silverman US 5,924,082 July 13, 1999
Waldo US 6,237,009 B1 May 22, 2001

The Examiner rejected claims 1-3 and 51 obvious under 35 U.S.C. § 103b (a)
over Silverman in view of Waldo.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A lease auction method comprising the steps of:
(a) providing to at least one lessor's computer via a computer network a first
plurality of lessee entered qualitative lessor variables and a first plurality of lessee
entered quantitative lessor data regarding a lease input at a lessee's computer;
(b) receiving from each lessor's computer via the computer network a second
plurality of lessor entered qualitative lessor variables and a second plurality of
lessor entered quantitative lessor data regarding the lease;
(c) receiving from the lessee's computer via the computer network for at
least one of the lessor entered qualitative lessor variables for each lessor at least
one of a grade and a relative weight related to an importance of the at least one
lessor entered qualitative lessor variable to the lessee;
(d) for each lessor, processing the at least one of the grade and the relative
weight received for the at least one lessor entered qualitative lessor variable and
the lessor entered quantitative lessor data to determine a weighted total score;
(e) ranking the weighted total scores;
(f) displaying the ranked weighted total scores on the lessee's computer and
each lessor's computer via the computer network; and
(g) repeating steps (c) through (f) each time a change of at least one of the
lessor entered qualitative lessor variables or at least one of the lessor entered
quantitative lessor data is received from at least one of the lessor's computers via
the computer network, wherein the lessor entered qualitative lessor variables and
the lessee entered qualitative lessor variables each include at least one of the

1 Although the Final Office Action did not group claim 2 in the rejection, it
nevertheless addressed claim 2 in the analysis section, the Answer groups claim 2
and the Appeal Brief argues claim 2.
Appeal 2009-009110
Application 10/047,366

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following: lessor's lease documents; lessor's reputation; lessor's knowledge of the
item being leased; lessor's status as a private or public entity; and whether the
lessor is also a vendor.
Independent claim 1 the sole independent on appeal recites in pertinent part
(c) receiving from the lessee's computer via the computer network for at least one
of the lessor entered qualitative lessor variables for each lessor at least one of a
grade and a relative weight related to an importance of the at least one lessor
entered qualitative lessor variable to the lessee….
The Examiner found that Silverman discloses this limitation referencing:
“[t]he aforementioned objects, as well as other objects, of the present invention are
achieved by providing a negotiated matching system with a filtering feature that
filters the potential transactions to be displayed to a trader based on ranking and
other transaction information input by the trader and potential counterparties.
Silverman 5,924,082, col. 4, lines 13-18).” (Answer 4)
Appellant however maintains that:
The Silverman et al. patent, however, does not disclose,
teach or suggest any reason for one counterparty to a
transaction to assign a grade or relative weight to ranking
information entered by another counterparty to a
transaction. To this end, as best understood, the
Silverman et al. patent utilizes the ranking information to
simply match acceptable counterparties to a transaction
without any further use of this ranking information in the
interactive manner of steps (a)-(c) of claim 1. (Appeal Br.
4)
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We agree with Appellant because it is the user himself in Silverman who
inputs his own ranking information indicating the party’s willingness to trade with
another party (col. 9. ll. 25-40). The system uses only the ranking information
from a given user to compare with that of another which match the given user’s
criteria, e.g., size of counter party is a filter criteria for a match (col. 10. ll. 6-10).
No one party grades or gives a relative weight related to an importance to the
information of the other. This is done through the intermediary of a filter based
on common compatibility criteria (col. 12 ll. 64-67). Thus, even the ranking
information which is identified by the Examiner attributable to step e (Answer 5)
cannot be read as a ranking resulting from the grade given by the counter party,
e.g., lessee grades the lessor’s information, because that information is only the
result of the same user’s input (col. 9. ll. 25-40). It is not apparent from the
Examiner’s analysis how such a difference would be unobvious, and thus we will
not sustain the rejection of claim 1.
Since claims 2, 3, and 5 depend from claim 1, and since we cannot sustain
the rejection of claim 1, the rejection of claims 2, 3, and 5 likewise cannot be
sustained.
REVERSED
JRG
Appeal 2009-009110
Application 10/047,366

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