Ex Parte Gill

Patent Trial and Appeal Board

Jan 30, 2013

10118647 (P.T.A.B. Jan. 30, 2013)

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

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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

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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