09922240 (B.P.A.I. Jun. 29, 2009)

Ex Parte Greenberg et al

Board of Patent Appeals and InterferencesJun 29, 2009

09922240 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte MICHAEL A. GREENBERG, 8 CHRISTIAN A.S. PENSA, 9 and 10 PATRICK ZAOUTER 11 ____________________ 12 13 Appeal 2008-004049 14 Application 09/922,240 15 Technology Center 3600 16 ____________________ 17 18 Decided:1 June 29, 2009 19 ____________________ 20 21 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 22 ANTON W. FETTING, Administrative Patent Judges. 23 24 CRAWFORD, Administrative Patent Judge. 25 26 27 DECISION ON APPEAL28 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-004049 Application 09/922,240 2 STATEMENT OF THE CASE 1 Appellants appeal under 35 U.S.C. § 134 (2002) from a Final 2 Rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b) 3 (2002). 4 Appellants invented systems and methods for online purchasing and 5 selling of commodities from business to business (Spec. 1:14-16). 6 Claim 1, reproduced below, is further illustrative of the claimed 7 subject matter: 8 1. A method for providing a commodity 9 offer price to a buyer, comprising: 10 receiving an offer to sell a commodity 11 according to a predetermined contract at a 12 specified price; 13 adjusting the specified price based on 14 shipping costs for shipping the commodity from 15 the seller to the buyer; and 16 transferring the adjusted price to the buyer 17 over a computer network for displaying by a 18 remote client. 19 20 The prior art relied upon by the Examiner in rejecting the claims on 21 appeal is: 22 Walker US 5,794,207 Aug. 11, 1998 23 O’Neill US 6,219,653 B1 Apr. 17, 2001 24 Pool US 6,460,020 B1 Oct. 1, 2002 25 26 The Examiner rejected claims 1-3 under 35 U.S.C. § 103(a) as being 27 unpatentable over Walker in view of Pool; and rejected claims 4-30 under 35 28 U.S.C. § 103(a) as being unpatentable over O’Neill. 29 We AFFIRM-IN-PART. 30 31 Appeal 2008-004049 Application 09/922,240 3 ISSUES 1 Did the Appellants show the Examiner erred in finding motivation to 2 combine Walker and Pool to render obvious the subject matter of claims 1-3, 3 because Walker teaches away from adjusting the specified price in the offer 4 from the buyer? 5 Did the Appellants show the Examiner erred in finding that a proper 6 prima facie case has been established that O’Neill renders obvious means for 7 matching the bid to the offer to generate a transaction, as recited in 8 independent claim 13? 9 Did the Appellants show the Examiner erred in finding that O’Neill 10 discloses adjusting bids/offers/prices based on shipping costs prior to 11 completion of the sales transaction, as required by claims 4-12 and 14-30? 12 13 FINDINGS OF FACT 14 Specification 15 Appellants invented systems and methods for businesses to purchase 16 and sell commodities online (Spec. 1:14-16). 17 18 Walker 19 Walker discloses a method and apparatus for effectuating bilateral 20 buyer-driven commerce (Abstract). 21 Prospective buyers of goods or services communicate a binding 22 conditional purchase offer (CPO) globally to potential sellers over an 23 electronic network. Sellers conveniently search for relevant buyer purchase 24 offers on the electronic network and bind a buyer to a contract based on the 25 buyer’s purchase offer (col. 8, ll. 28-44). 26 Appeal 2008-004049 Application 09/922,240 4 The providers of the electronic network could derive a revenue 1 stream, for example, by charging a flat fee to the buyer for every submitted 2 CPO (col. 20, ll. 16-18). 3 The CPO may specify that the price offered is excluding tax (col. 31, 4 ll. 22, 31). 5 6 O’Neill 7 O’Neill discloses a freight calculation system and method of operation 8 (col. 1, ll. 16-18). 9 A user of buyer client 22 may review a generated market order prior 10 to communicating a buy query to platform 18. In particular, buyer client 22 11 may enter freight calculation data in Delivery Information field 494 to be 12 used by platform 18 to determine delivery costs. The buy query, including 13 the delivery information, is then communicated to platform 18 (Fig. 13H; 14 col. 26, ll. 23-40). 15 Platform 18 then generates offers from multiple seller clients 24 based 16 on the buy query. The offer may include delivery information such as 17 freight costs. The user of buyer client 22 may then initiate a buy request by 18 selecting a business location of a particular seller client 24, from which 19 buyer client 22 will buy the selected product, by activating Buy button 428 20 (Fig. 13I; col. 27, ll. 13-27). 21 22 PRINCIPLES OF LAW 23 A reference teaches away when a person of ordinary skill, upon 24 examining the reference, would be discouraged from following the path set 25 Appeal 2008-004049 Application 09/922,240 5 out in the reference, or would be led in a direction divergent from the path 1 that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 2 1994). 3 4 ANALYSIS 5 Teaching Away 6 We are not persuaded of error on the part of the Examiner by 7 Appellants’ argument that there was no motivation to combine Walker and 8 Pool to render obvious the subject matter of claims 1-3, because Walker 9 teaches away from adjusting the specified price in the offer from the buyer 10 (Appeal Br. 11-12; Reply Br. 10). While Walker does generally disclose 11 buyers submitting binding CPOs, Walker does not discourage adjusting the 12 specified price in the offer from the buyer as required for a teaching away. 13 See In re Gurley, 27 F.3d at 553. Indeed, Walker is silent about the seller’s 14 adjustment of the specified price in the CPO, and silence is not 15 discouragement. If anything, Walker acknowledges that the price may be 16 adjusted, for example, by the imposition of a user fee by the electronic 17 network or by the addition of applicable taxes to the CPO. 18 19 Matching Bids 20 We are persuaded of error on the part of the Examiner by Appellants’ 21 argument that the Examiner has not provided a proper prima facie case as to 22 how O’Neil renders obvious means for matching the bid to the offer to 23 generate a transaction, as recited in independent claim 13 (Appeal Br. 12-16; 24 Reply Br. 11-12). The Examiner has generally lumped in the rejection of 25 independent claim 13 with the rejection of claims 4-12 and 14-30 26 Appeal 2008-004049 Application 09/922,240 6 (Examiner’s Ans. 4-5, 6-7). However, independent claim 13 recites subject 1 matter different from claims 4-12 and 14-30. Specifically, independent 2 claim 13 recites “means for matching the bid to the offer to generate a 3 transaction.” The Examiner has not specifically mentioned this aspect of 4 claim 13 anywhere in the Examiner’s Answer. Accordingly, as this aspect 5 has not been specifically addressed, a prior prima facie case of obviousness 6 has not been established, and thus the rejection of independent claim 13 7 cannot be sustained. 8 9 Shipping Costs Prior to Completion of Sale 10 We are not persuaded of error on the part of the Examiner by 11 Appellants’ argument that O’Neill does not disclose adjusting 12 bids/offers/prices based on shipping costs prior to completion of the sales 13 transaction, as required by claims 4-12 and 14-30 (Appeal Br. 12-16; Reply 14 Br. 11-12). Fig. 13I of O’Neill discloses freight costs for each offer (under 15 “Weight” and above a date) prior to a user of buyer client 22 pressing Buy 16 button 428 to complete the sales transaction. 17 18 CONCLUSION 19 The Appellants have failed to show that the Examiner erred in 20 rejecting claims 1-12 and 14-30. 21 The Appellants have shown that the Examiner erred in rejecting claim 22 13. 23 Appeal 2008-004049 Application 09/922,240 7 DECISION 1 The decision of the Examiner to reject claims 1-12 and 14-30 is 2 affirmed. 3 The decision of the Examiner to reject claim 13 is reversed. 4 No time period for taking any subsequent action in connection with 5 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 6 7 AFFIRMED-IN-PART 8 9 10 11 12 13 14 15 16 hh 17 18 Frank C. Nicholas 19 CARDINAL LAW GROUP 20 Suite 2000 21 1603 Orrington Avenue 22 Evanston, IL 60201 23 24 25