Ex Parte Fu et al

Board of Patent Appeals and Interferences

Nov 4, 2009

10882633 (B.P.A.I. Nov. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL FU,
ERIK BECK HANSEN,
GEORGE LIANG,
DEBORAH LIU,
NGAN-HA D. NGUYEN, and
ANDREW LEIGH SANDLER
____________

Appeal 2009-007405
Application 10/882,633
Technology Center 3600
____________

Decided: November 4, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Paul Fu, et al. (Appellants) seek our review under 35 U.S.C. § 134 of
the final rejection of claims 16-24 and 28. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention relates to commerce automation and, “in particular, to
methods and systems to facilitate generation of invoices combining multiple
transactions established utilizing a multi-seller network-based marketplace.”
Specification [0002].
Claims 16-24 are directed to a method, claim 16 being the
independent claim. Independent claim 28 is directed to a machine-readable
medium. Claim 16, reproduced below, is illustrative of the subject matter on
appeal.
16. A method to facilitate invoicing for transactions established
between a plurality of buyers and a plurality of sellers in a network-
based marketplace, the method including:
identifying a plurality of transactions to which a first user is a
party;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 17, 2007) and Reply Brief (“Reply Br.,” filed Feb. 10, 2009),
and the Examiner’s Answer (“Answer,” mailed Dec. 9, 2008).
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identifying one or more subsets of the plurality of transactions
that satisfy combinable criteria relating to combining transactions into
a single invoice; and
providing to the first user an indication of the combinability of
transactions of the one or more subsets;
wherein the identification of the one or more subsets includes
identifying each of the transactions of the one or more subsets as
being between a common buyer and a common seller of the plurality
of buyers and the plurality of sellers in the network-based
marketplace.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hartman
Rotman
US 6,615,226 B1
US 2003/0182222 A1
Sep. 2, 2003
Sep. 25, 2003
The Examiner took Official Notice that “[i]t was old and well known
in the art at the time of the invention to provide functionality to a user to
easily make decisions/selections by use of an icon.” Answer 7.
The following rejections are before us for review:
1. Claims 16-24 are rejected under § 101 as being directed to
nonstatutory subject matter.
2. Claims 16, 19, 21-24 and 28 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Rotman and Hartman.
3. Claims 17, 18, and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rotman, Hartman, and Official Notice.

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ISSUES
The issue of whether the Appellants have sustained their burden of
showing that the Examiner erred in rejecting claims 16-24 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter turns on whether the claims
cover non-statutory subject matter, and specifically whether the process
claimed is tied to a particular apparatus.
The issue of whether the Appellants have sustained their burden of
showing that the Examiner erred in rejecting claims 16, 19, 21-24 and 28
and claims 17, 18, and 20 under 35 U.S.C. § 103(a) as unpatentable over
Rotman and Hartman, and Rotman, Hartman, and Official Notice,
respectively, turns on whether the cited prior art discloses or renders obvious
the claimed invention having the step of “identifying one or more subsets of
the plurality of transactions that satisfy combinable criteria relating to
combining transactions into a single invoice.”

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).
The scope and content of the prior art
1. Rotman relates to Rotman is directed to a method and system for
improved online auctions. [0002]
2. In particular, Rotman seeks to improve communication between
buyers and sellers about the real shipping costs for items being bid
upon. [0006]-[0007]
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3. To that end, Rotman describes a shipping calculator which can be
included in a display of the item in auction. [0036]
4. Various features of the calculator to help give a buyer a more accurate
estimate of the shipping cost are described. E.g., [0038]
5. At [0063], referring to Fig. 14, Rotman describes steps by which a
system applies a shipping rate to multiple items a buyer has
purchased. Specifically, [0063] describes combining the multiple into
a single shipment to which the shipping rate is applied.
6. [0063] of Rotman reads as follows:
[0063] In embodiments, the system can recognize when
a given buyer has purchased multiple items from a given
seller 102, and it can prompt the seller 102 to combine
the items into a single shipment. The system 1000 can
then apply the rate calculation to the combined shipment,
rather than making separate calculations for all
shipments. Thus, at a step 1404, the system determines
whether there are multiple items at the step 1404, then at
a step 1405 the system retrieves data for the first item's
auction, either previously stored in the data storage
facility 1020 (if a buyer 104 has used the calculator for
this auction before) or by accessing the data in the
auction directly, such as by a spider or API. At a step
1406 the system determines whether the item for which
the data was retrieved at the step 1405 is the last item. If
not, then the system returns to the step 1405 repeatedly
until data for all items has been retrieved for use by the
system. If at the step 1404 it is determined that there is
only one item, or if at the step 1406 it is determined that
the item is the last item, then processing proceeds to a
step 1407.

7. Hartman relates to an online ordering system.
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8. Fig. 1C of Hartman depicts a page with ordering information with
indications that certain ordered items will be shipped together.
Any differences between the claimed subject matter and the prior art
9. The prior art does not show the claim step of “identifying one or more
subsets of the plurality of transactions that satisfy combinable criteria
relating to combining transactions into a single invoice.”
The level of skill in the art
10. Neither the Examiner nor the Appellants have addressed the level of
ordinary skill in the pertinent art of facilitate invoicing for
transactions. 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
11. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
§ 101 - Patentable Subject Matter - Process
[T]he proper inquiry under § 101 is not whether the process
claim recites sufficient “physical steps,” but rather whether the
claim meets the machine-or-transformation test. [fn]25 As a
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result, even a claim that recites “physical steps” but neither
recites a particular machine or apparatus, nor transforms any
article into a different state or thing, is not drawn to patent-
eligible subject matter. Conversely, a claim that purportedly
lacks any “physical steps” but is still tied to a machine or
achieves an eligible transformation passes muster under § 101.
In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc).
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., 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, and (3) the level of skill
in the art. 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.”) 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.” Graham, 383 U.S. at 17-18.

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ANALYSIS
The rejection of claims 16-24 under § 101 as being directed to nonstatutory
subject matter.
According to the Examiner, the claims are directed to nonstatutory
subject matter because the process claimed is neither (1) tied to another
statutory class nor (2) transforms underlying subject matter to a different
state of thing. Answer 6. The Appellants disagree, arguing that the claimed
process is tied to a “network-based marketplace,” which the Appellants
construe to be, for example, a machine - which is one of the statutory classes
of subject matter. Reply Br. 1-2.
We will reverse the rejection because the Examiner has failed to
present a prima facie case that the process claimed is nonstatutory under §
101. While the test the Examiner articulates generally follows the Bilski
machine-or transformation test (see supra) for determining whether a
claimed process is statutory under § 101, the Examiner simply concluded
that the claims do not pass the test. No claim construction analysis has been
performed to determine whether the claims in fact fail to pass the test. Cf.
State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1370
(Fed. Cir. 1998) (“[W]hether the ... patent is invalid for failure to claim
statutory subject matter under § 101[ ] is a matter of both claim construction
and statutory construction.”)
We would agree that the claimed process fails to pass the
transformation prong of the Bilski machine-or transformation test. “A
claimed process is patent-eligible if it transforms an article into a different
state or thing. This transformation must be central to the purpose of the
claimed process.” Bilski, 545 F.3d at 954. The claimed process does not
transform an article into a different state or thing.
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However, the claimed process could be statutory if it passes the
machine prong of the Bilski test. It would be satisfied if the claimed process
is “tied to a particular machine.” Bilski, 545 F.3d at 954.
Here, the question is whether a network-based marketplace is a
particular machine. It is recited in two places in independent claim 16 and
the process is tied to it. The Specification illustrates the network-based
marketplace in Fig. 1 and both in that Figure and the associated description
(Specification [0021]), it is depicted and described in terms of a concrete
thing comprising a combination of devices. It thus appears to be a machine.
“The Supreme Court has defined the term “machine” as “a concrete thing,
consisting of parts, or of certain devices and combination of devices.” Burr
v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863). This “includes every
mechanical device or combination of mechanical powers and devices to
perform some function and produce a certain effect or result.” Corning v.
Burden, 56 U.S. 252, 267 (1853).” In re Nuijten, 500 F.3d 1346, 1355 (Fed.
Cir. 2007).
The Examiner has not explained why the claimed process, which is
tied to a network-based marketplace and appears to be a machine, does not
meet the machine prong of the Bilski test. Because that has not been done,
the Examiner has failed to make out a prima facie case that the claimed
process is not a statutory process under § 101.

The rejection of claims 16, 19, 21-24 and 28 under 35 U.S.C. §103(a) as
being unpatentable over Rotman and Hartman.
The issue is whether the cited prior art discloses or renders obvious
the claimed subject matter comprising the step of “identifying one or more
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subsets of the plurality of transactions that satisfy combinable criteria
relating to combining transactions into a single invoice.”
The Examiner states that this step is disclosed at [0063] of Rotman.
Answer 6.
We do not see in Rotman (FF 1-5) and in disclosure at [0063] (FF 6)
in particular the claim step of, “identifying one or more subsets of the
plurality of transactions that satisfy combinable criteria relating to
combining transactions into a single invoice.” Rotman does not disclose or
make obvious the claim requirement of satisfying combinable criteria
relating to combining transactions into a single invoice. The disclosure at
[0063] while it describes combining multiple items into a single shipment, it
does so in order to apply a shipping rate to that single shipment without
mention of combining the transactions into a single invoice and we do not
find an explanation in the record accounting for this difference. We thus do
not find that one of ordinary skill would arrive at the claimed subject matter
given this information.
In response to the Appellants argument that the Rotman disclosure at
[0063] does not disclose an invoice (App. Br. 11), the Examiner directs
attention to Fig. 7 of Rotman which the Examiner characterizes as a
summary of a bill and argues that a bill can be defined as an invoice.
Whether Fig. 7 in fact depicts a bill is arguable. According to the associated
description, Fig. 7 is a depiction of a page that displays a shipping calculator
and shipping information and shipping cost/location choices a buyer can
select. [0038]-[0039]. Nevertheless, even if we assume arguendo that this is
a bill and the claim term “invoice” is reasonably broadly construed to cover
a “bill” such as the one depicted in Fig. 7, the step at issue is still not
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disclosed. There is no disclosure of and the Examiner does not explain how
one of ordinary skill would arrive at employing the claim step of,
“identifying one or more subsets of the plurality of transactions that satisfy
combinable criteria relating to combining transactions into a single invoice.”
There is nothing in Fig. 7 or the associated description about, for instance,
“identifying,” “subsets of the plurality of transactions,” “subsets of the
plurality of transactions that satisfy combinable criteria,” or “subsets of the
plurality of transactions that satisfy combinable criteria relating to
combining transactions into a single invoice.”
We note that the Examiner cited Hartman as showing “providing an
indication of the combinability of transactions of the one or more subsets
(FIG 1C).” Answer 6. But the Examiner does not explain and we have been
unable to determine from Fig. 1C (FF 8) that aspect of what is depicted are
“subsets of the plurality of transactions that satisfy combinable criteria”
(claim 16).
Accordingly, a prima facie case of obviousness for the claimed
subject matter has not been established.

The rejection of claims 17, 18, and 20 under 35 U.S.C. §103(a) as being
unpatentable over Rotman, Hartman, and Official Notice.
Claims 17, 18, and 20 depend from claim 16 whose rejection we
reverse for the reasons stated above. For the same reasons, we will not
sustain the rejections of claims 17, 18, and 20 over the cited prior art. Cf. In
re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.").

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CONCLUSIONS
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 16-24 under § 101 as being directed to nonstatutory
subject matter; claims 16, 19, 21-24 and 28 under 35 U.S.C. §103(a) as
being unpatentable over Rotman and Hartman; and, claims 17, 18, and 20
under 35 U.S.C. §103(a) as being unpatentable over Rotman, Hartman, and
Official Notice.
DECISION
The decision of the Examiner to reject claims 16-24 and 28 is
reversed.

REVERSED

mev

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