Ex Parte Goel

Board of Patent Appeals and Interferences

Apr 25, 2011

11021788 (B.P.A.I. Apr. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMIT GOEL
____________

Appeal 2010-009372
Application 11/021,788
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for offering an item for sale via
a fixed-price process. (Specification 2: [0007])
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. An electronic publishing system to offer an item for sale,
over a network, the system comprising:
a first section to offer a first item for sale over the network via
an auction process and a first fixed-price process; and
a second section to offer the first item for sale via a second
fixed-price process, wherein in the second fixed-price process
an item is priced below a market value.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Woolston US 2001/0007981 A1 Jul. 12, 2001
Kaminsky US 2001/0047308 A1 Nov. 29, 2001

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The following rejections are before us for review.
The Examiner rejected claims 1-3, 5-15 and 17-29 under 35 U.S.C.
§ 102(b) as anticipated by Kaminsky.
The Examiner rejected claims 4 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Kaminsky in view of Woolston.
The Examiner rejected claims 1-29 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

ISSUES
The issue of anticipation turns on whether it is reasonable to find that
each of the open order 40 or the demand price 42 processes of Kaminsky is a
“fixed price process” because it involves a fixed price offered by a purchaser
within the context of a series of shifts in current price or averaging of the lot
price of the items conducing to the product being sold at the involved
purchaser’s price when the current price matches the fixed bid price of the
purchaser.
The issue of patent eligible claims turns on whether the claims
preempt an abstract idea.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. We adopt the Examiner’s findings as set forth on pages 6-9 of the
Appeal Brief.
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2. The ordinary and customary definition of the term process as
defined by Merriam Webster’s Collegiate Dictionary is: “ a series
of actions or operations conducing to an end”.
http://www.merriam-webster.com/dictionary/process
3. Kaminsky discloses:
The user may also purchase a product by placing an open order
40. This approach is similar to the immediate price strategy,
except that the user may seek a purchase price lower than
current price 38. The user places open order 40 at a price below
current price 38, and awaits the results of shifts in price trends.
If current price 38 reaches the price submitted in open order 40
due to shifts in pricing trends, open order 40 is filled and the
user receives the product. Open order 40 is valid for the length
of time for which the product offer is open. Thus, open order 40
may be made or filled at anytime during the product offering
provided that the pricing criteria is met.

¶ [0036].
4. Kaminsky further discloses:
The interested shopper can also submit a demand
price 42. This approach permits the shopper to request and
commit to a set price below current price 38 of the item.
Demand price 42 is good for twenty-four hours, and is either
accepted or declined based on a set of business rules
determined by the particular merchant…If all of demand prices
42 do not total the amount desired by the merchant for the lot,
then only those demand prices 42 which exceed the average
price for the items in the lot will be accepted, and all others will
be declined. Each demand price 42 is evaluated at a given
point over a twenty-four hour period until expiration of the
time period for which the item is offered. Thus, each demand
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price 42 will be evaluated within twenty-four hours of when
it is submitted, and either accepted or declined based on the
criteria for demand price 42. Each buyer is isolated in their
purchases from any other demand price buyer, and is not
aware of other demand prices 42 made by other shoppers.
The number of items available for demand pricing may
change as items are sold through the above-mentioned
current price 38 and open order 40 sales approaches.
¶ [0037].
ANALYSIS
We affirm the rejection of claims 1-29.
Rejection under 35 U.S.C. § 101
The Examiner considers claims 1-29 as not patent eligible. (Answer
3).
Although independent claims 1 and 9 recite in the preamble, an
electronic publishing system, we find that they do not sufficiently thereafter
fully incorporate the term into the body of the claim so as to breathe life and
breath into it by setting forth the complete combination. Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989).
As such, claims 1 and 9, at best, are limited only by the terms first and
section sections to items taking them out of an abstract idea preemption. We
do not find that the recitation of sections is dispositive of a non-abstract
limitation because such sections could for example correspond to the
sections of one’s brain which would control the two pricing schemes.
Independent claims 12 and 18 are method claims and recite in the
body of the claim an electronic market place or publishing system. Other
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than reciting that the involved section is part of an electronic system, the
methods do not go beyond this to tie the device to the step limitations. Thus,
we agree with the Examiner that these claims are not patent eligible. This
result is similar to the facts in Benson, Gottschalk v. Benson, 409 U.S. 63
(1972), where applicant attempted to claim “a method for converting binary-
coded decimal (BCD) numbers into pure binary numbers.” Benson, at 64.
The Supreme Court viewed the claims at issue as a mere solution to a
“mathematical problem” stating only that the recited steps amounted to no
more than an algorithm. This in spite of the fact that the claims included
limitations, such as storing the binary coded decimal signals in a reentrant
shiftregister. Even so, the Court found that the claims were “not limited to
any particular technology, to any particular apparatus or machinery, or to
any particular end use.”
However, with regard to apparatus claim 24, we find that this claim
uses 35 U.S.C. 112, sixth paragraph language for all claim items. Thus we
find by definition that the limitations of claim 24 cannot be drawn to a mere
abstract idea because the use of the means plus function language causes
associated structure to be present in the claim, beyond a mere post or pre-
solution activity. This duty to link or associate structure to function is the
quid pro quo for the convenience of employing 112, paragraph 6. Medical
Instrumentation and Diagnostic Corp. v. Elekta AB, 344 F.3d 1205, 1218
(Fed. Cir. 2003).
Independent claim 27 requires a computer readable medium and is
drafted as an article claim. We thus find that it claims an article of
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manufacture covered under 35 U.S.C. § 101, and thus we will not sustain the
rejection of claim 27 and its dependents under 35 U.S.C. § 101.
Accordingly, we affirm the Examiner’s rejection of claims 1-26 under
35 U.S.C. § 101, and reverse as to claim 27-29.
The rejection under 35 U.S.C. § 102(b).
We affirm the rejection of claims 1-3, 5-15 and 17-29.
Initially, we note that the Appellant argues independent claims 1, 12,
24, and 27 together as a group. Correspondingly, we select representative
claim 1 to decide the appeal of these claims, remaining claims standing or
falling with claim 1. The Appellant does not provide a substantive argument
as to the separate patentability of claims 2-3, 5-8, 13-15, 17-23, 25, 26, 28
and 29 that depend from one of claims 1, 12, 24, and 27. Thus, claims 2-3,
5-8, 13-15, 17-23, 25, 26, 28 and 29 fall with their respective independents.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
We begin our analysis by addressing the scope of the claims.
Independent claim 1 recites “a first section to offer a first item for sale over
the network via an auction process and a first fixed-price process” and “a
second section to offer the first item for sale via a second fixed-price
process”.
We first construe the meaning of the word “fixed price process” as
used by the Appellant in the claims. We determine the scope of the claims
in patent applications in light of the specification, but in so doing are careful
not to read a particular embodiment appearing in the written description into
the claim if the claim language is broader than the embodiment. See
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Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Appellant’s Specification does not specifically define the term “fixed
price process”, nor does it utilize the term contrary to its customary
meaning. The term in question includes the word process. We find that the
customary meaning of process is: “a series of actions or operations
conducing to an end”. (FF 2). Thus we interpret the term “fixed price
process” to mean, a series of actions or operations conducing to an end
involving a fixed price.
With this understanding, we turn to Appellant’s arguments.
Appellant argues that:
[I]f the results of shifts in current price that the
user is awaiting indicate that current price will not
reach the price submitted in the open order, the
order in Kaminsky would not be filled, which is in
stark contrast with offering the item in a fixed-
price process. Therefore, in Kaminsky's approach
described in the quoted passage, there is no fixed-
price process in which an item is priced below
market value.
(Appeal Br. 13).

We disagree with Appellant. The Examiner found that Kaminsky
discloses “a buyer may submit a fixed price that is below the current
‘market’ price” and hence meets the required claim limitation. (Answer 6).
As found supra, we interpret definition of the term “fixed price
process” to mean a series of actions or operations conducing to an end
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involving a fixed price. We find that each of the open order 40 or the
demand price 42 processes of Kaminsky is a “fixed price process” because
each involves a fixed price offered by a purchaser within the context of a
series of shifts in current price or averaging of the lot price of the items
conducing to the product being sold at the involved purchaser’s fixed price
when the current price matches the fixed bid price of the purchaser.
We are further unpersuaded by Appellant’s argument that Kaminsky
at paragraph 36 fails to disclose below a market value bid because Kaminsky
explicitly discloses that the user places an open order “at a price below
current price 38…” (FF 3), which current price we find is the market value
with in the open order process.
Claim 9 recites in pertinent part, a clearance section to offer the item
for sale via a fixed-price process from the time B to a time C, wherein at the
time B the item transfers from the auction section to the clearance section
and in the fixed-price process an item is priced below a market value.
Regarding independent claim 9, Appellant argues that the limitation of
a clearance section to offer the item for sale via a fixed-price process from
the time B to a time C is not disclosed by Kaminsky. (Appeal Br. 14)
We disagree with Appellant because Kaminski discloses periods for
both open order 40 and the demand price 42 processes, each corresponding
to a clearance section, wherein the open order period time C is defined by
when the pricing criteria is met, and the demand period time C is described
as 24 hours (FF 3,4).
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We also affirm the rejections of dependent claims 4, 10, 11, 12 and 16
since Appellant has not challenged such with any reasonable specificity (see
In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-26, but
did err in rejecting claims 27-29 under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting the claims on
appeal under 35 U.S.C. § 102 (b) and 35 U.S.C. § 103(a).

DECISION
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED.

MP