Ex Parte GillDownload PDFPatent Trial and Appeal BoardJan 30, 201310118647 (P.T.A.B. Jan. 30, 2013) Copy Citation 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. 10/118,647 04/08/2002 Andrew Gill OIC0206C1US 7349 60975 7590 01/30/2013 CAMPBELL STEPHENSON LLP 11401 CENTURY OAKS TERRACE BLDG. H, SUITE 250 AUSTIN, TX 78758 EXAMINER OYEBISI, OJO O ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 01/30/2013 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 ANDREW GILL ____________ Appeal 2011-006608 Application 10/118,647 Technology Center 3600 ____________ Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006608 Application 10/118,647 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1, 3, 6-10, 18, and 31-521. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6(b) . The invention relates to a method of resolving an ordered list of bids in a single step, and in a manner which allocates a requested or available quantity of offered goods or services based on the maximum amount the bidder is willing to pay for the offered goods or services (Spec. 1:5-9). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A computer-implemented method comprising: electronically storing data corresponding to each of a plurality of currently pending bids for an auction, wherein the plurality of currently pending bids comprises a plurality of bids that use an optional automatic bidding feature, and a plurality of bids that do not use the optional automatic bidding feature; determining, using a processor of a server computer, for each of the currently pending bids, whether or not a corresponding bidder has selected that the bid use the optional automatic bidding feature; generating an ordered bid list by ordering the plurality of currently pending bids by criteria comprising for each currently pending bid using the optional automatic bidding feature, a maximum 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed August 10, 2010) and Reply Brief (“Reply Br.,” filed January 11, 2011), and the Examiner’s Answer (“Ans.,” mailed November 9, 2010). Appeal 2011-006608 Application 10/118,647 3 amount to which the bid may be increased via the optional automatic bidding feature, and for each currently pending bid not using the optional automatic bidding feature, a static bid amount; assigning a winning bid quantity and a winning bid amount to each bid in the ordered bid list based on an ordering of the bid list; and using an input/output section of the server computer to communicate at least one of the winning bid quantities and at least one of the winning bid amounts to a corresponding bidder. Claims 1, 3, 6-10, 18, and 31-52 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 3, 6-10,18, and 31-52 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Miller (Michael Miller, The Complete Idiot’s Guide to eBay Online Auctions, (Que, 1999)) in view of Boarman (US 6,609,112, iss. Aug. 19, 2003) and further in view of Harrington (US 6,161,099, iss. Dec. 12, 2000). We REVERSE. ANALYSIS Rejection Under 35 U.S.C. § 112, first paragraph We are persuaded the Examiner erred in asserting that the Specification does not provide written description support for “determining… for each of the currently pending bids, whether or not a corresponding bidder has selected that the bid use the optional automatic Appeal 2011-006608 Application 10/118,647 4 bidding feature,” as recited in independent claim 12 (Reply Br. 14-17, 23- 26). Page 16, lines 10-11 of the Specification disclose “determin[ing] whether the autobid feature has been activated for the bid,” which provides adequate written description support for the aforementioned aspect of independent claim 1. Rejection Under 35 U.S.C. § 103(a) We are persuaded the Examiner erred in asserting that a combination of Miller and Boarman discloses or suggests “determining… for each of the currently pending bids, whether or not a corresponding bidder has selected that the bid use the optional automatic bidding feature,” as recited in independent claim 13 (Appeal Br. 11-13; Reply Br. 18-20). The Examiner first admits that Miller does not disclose the aforementioned aspect of independent claim 1, but then asserts that column 2, lines 35-47 of Boarman discloses this aspect (Ans. 6, 15). However, we are not able to locate any mention of optional automatic bidding features in the aforementioned portion of Boarman. The Examiner then asserts that “[c]ontrary to the appellant's assertion, the ‘eBay’ auction system described by Miller gives the user the option of monitoring their bids manually (see pg 22 of Miller) or the option of monitoring their bids automatically using automatic bidding or proxy 2 As Appellants argue them together, we choose independent claim 1 as representative of independent claims 1, 10, 18, and 52. See 37 C.F.R. § 41.37(c)(1)(vii). 3 As Appellants argue them together, we choose independent claim 1 as representative of independent claims 1, 10, 18, and 52. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-006608 Application 10/118,647 5 bidding, as mentioned in pgs 34-36” (Ans. 16). However, we agree with Appellant that page 193 of Miller discloses that automated proxy bidding cannot be disabled, and thus no optional automatic bidding feature is provided for user selection, as recited in independent claim 1. DECISION The decision of the Examiner to reject claims 1, 3, 6-10, 18, and 31- 52 is REVERSED. REVERSED Klh Copy with citationCopy as parenthetical citation