Ex Parte Gross

Patent Trial and Appeal Board

Aug 29, 2013

10770804 (P.T.A.B. Aug. 29, 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.
10/770,804 02/02/2004 John N. Gross JNG 2004-2 1483
52447 7590 08/29/2013
PATENTBEST
1195 Park Avenue
Suite 202A
EMERYVILLE, CA 94608
EXAMINER
OSMAN BILAL AHMED, AFAF
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
08/29/2013 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 JOHN N. GROSS
____________

Appeal 2013-003073
Application 10/770,804
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on July 16, 2013.

STATEMENT OF THE CASE
John N. Gross (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-18 and 20-32, 34-37, and 39-40. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a New Ground of Rejection
pursuant to 37 C.F.R. § 41.50(b).1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An electronic system for distributing playable media items
from a content provider operating a first website to a subscriber
including:
(a) a subscriber queue routine operating on a first server
computing system that is controllable by the content provider
and is configured to set up a subscriber selection queue for the
subscriber, said subscriber selection queue consisting of an
ordered list of one or more playable media items to be viewed
by the subscriber; wherein said subscriber selection queue is set
up at least in part in response to item selection directions
provided by the subscriber;
(b) a subscriber queue replenishment control routine
operating on the server computing system which implements
queue replenishment rules provided by the subscriber for the
subscriber selection queue; and
(c) a queue monitoring routine operating under control of
the subscriber on a separate server computing system at a
second website and configured to monitor said subscriber
selection queue in accordance with said queue replenishment
control rules to determine information on a status of said

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 12, 2011) and Reply Brief (“Reply Br.,” filed Nov. 15,
2012), and the Examiner’s Answer (“Ans.,” mailed Sep. 20, 2012).
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subscriber selection queue, including: 1) whether said
subscriber selection queue contains any playable media items;
2) an identity of titles of any such playable media items that are
present in said subscriber selection queue; and
wherein said subscriber selection queue can be modified
by said subscriber queue replenishment control routine to
generate a new ordered list of one or more playable media items
based on a confirmation from the subscriber.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sherr
Allport
Berenson
Hastings

US 2002/0154157 A1
US 6,483,548 B1
US 2003/0131355 A1
US 7,024,381 B1
Oct. 24, 2002
Nov. 19, 2002
Jul. 10, 2003
Apr. 4, 2006
Register with Auction Sniper;
http://web.archive.org/web/20021014041913/auctionsniper.com/register.asp
x; retrieved Jul. 13, 2010. (Auction Sniper I.)
eBay AuctionWatch 1.0.4, 2000 instant DOWNLOAD; Google’s cache of
http://freedownloadcenter.com/Network_and_Internet/MISC_Web_Browser
_Tools/eBay_AuctionWatch.html; retrieved Jul. 13, 2010. (eBay
AuctionWatch.)
“[B]y Applicant's own admission on page 35, lines 6-24, monitoring of a
delivery queue by a separate web sites such as Auction Sniper (or
Bidnapper), and/ or "auction watch" is well-known, and allows subscribers
to hire such websites to assist them in securing an auction on EBay.” Ans. 6.
(Admission.)

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The following rejections are before us for review:
1. Claim 28 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
2. Claims 1-18, 20, 21, 23-25, 27-32, and 34-37 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hastings, Admission,
Auction Sniper I, and eBay AuctionWatch.
3. Claims 22, 39, and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Admission, Auction Sniper I, eBay
AuctionWatch, and Berenson.
4. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hastings, Admission, Auction Sniper I, eBay AuctionWatch, and
Sherr.

ISSUES
Has a prima facie case of a lack of written descriptive support for the
subject matter of claim 28 been made out in the first instance?
Have prima facie cases of obviousness been made out for the claimed
subject matter over the cited prior art combinations?

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).
1. The Specification states:
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The Internet is now being used for a number of
commercial purposes, including purchase and rental of movie
films in different media formats. One such popular website is
maintained by Netflix®, where subscribers can search, review
and select movie titles (in DVD media format). If a particular
title is available, the subscriber’s choice is then placed into a
rental selection “queue.” During an interactive online session, a
subscriber can select a number of titles, and then prioritize them
in a desired order for shipment within the selection queue.
Spec. 1:21-27.
2. Hastings describes that conventional rental models require a customer to
go to a video rental store to rent movies and that new release movies are
generally due back the next day. (Col. 1, ll. 30-35.)
3. In the Hastings method, “[i]n general, the decision of what items to rent
is separated from the decision of when to rent the items.” (Col. 2, ll. 42-
43.)
4. The decision of what items to rent is a matter of “item selection criteria.”
A customer provides one or more item selection criteria to the provider
indicative of the particular items the customer desires to rent from the
provider.
Item selection criteria may specify any type of item attributes
and the invention is not limited to particular item attributes.
Examples of item attributes include, without limitation,
identifier attributes, type attributes and cost attributes. Item
selection criteria may be changed at any time to reflect changes
in items that customers desire to rent from a provider.
Col. 3, ll. 28-35. The items selected are placed into a customer’s order queue
by the provider.
5. According to Hastings:
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As used [in Hastings], the term "items” refers to any
commercial goods that can be rented to customers. Examples of
items include movies, music and games stored on a non-volatile
memory such as a tape, other magnetic medium, optical
medium, read-only memory or the like, and the invention is not
limited to any particular type of item.
Col. 2, ll. 36-42.
6. Via the Hastings method, customers enter into a rental agreement with
the provider to rent items from the provider. (Col. 6, ll. 57-58). Once
customers and the provider have entered into a rental agreement and
customers have made item selection criteria, then items are rented to
customers over delivery channels “in accordance with the terms of the
rental agreement.” (Col. 7, ll. 33-42).
7. The Internet can be the delivery channel. (Col. 8, l. 16.)
8. In one embodiment, customers enter into a rental agreement with the
provider to rent items from the provider according to “MAX OUT”
and/or “MAX TURNS” approaches.
9. The “MAX OUT” approach allows a customer to simultaneously rent out
a specified number of items. (Col. 3, ll. 1-5.)
10. The MAX OUT limit can be increased to allow additional items to be
immediately mailed to the customer. (Col. 4, ll. 59-60.)
11. The “MAX TURNS” approach allows a customer to exchange up to a
specified number of items during a specified time period. (Col. 3, ll. 5-8.)
12. The MAX TURNS limit can be overridden to allow more exchanges
during the current cycle. (Col. 6, ll. 25-30.)

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16. The customer then rents out the items from the order queue to a MAX
OUT limit.
17. As the customer returns movies, additional movies from the order queue
are sent to the customer up to the MAX OUT limit. (Col. 4, ll. 1-4.)
18. The customer may exchange up to a specified number of item during a
specified time period up to a MAX TURNS limit.
19. For example, if the rental agreement sets the MAX TURNS and MAX
OUT limits to four, “a determination is made whether four or more
movies have been mailed in the current month. If not, then ... additional
movies … are mailed to customer ... to the ‘Max Out’ limit of four.” Col.
9, ll. 12-15.
20. There is no evidence on record of secondary considerations of
nonobviousness for our consideration.
21. Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claim 28 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
At issue is the claim limitation “wherein the subscriber can effectuate
a change ... .” Claim 28. Specifically, the Examiner finds that the original
Specification failed to adequately describe “wherein the subscriber can
effectuate a change.” Ans. 4.
The Appellant points to “[p]age 35, lines 12-15 of the Specification
[which] state[s] that ‘a subscriber to a media provider would simply provide
the pertinent details of their account to a monitoring service provider, and
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the latter would effectuate the steps above automatically on behalf of the
subscriber on a periodic basis, or some other basis’” (Reply Br. 2) as
adequate written descriptive support for the limitation at issue. The
Appellant argues that “the phrase ‘the steps above’ refers to all of the
method steps disclosed prior to page 35 of the Specification, which include
changes to the subscriber's queue.” Reply Br. 2.
We agree with the Appellant. In our view, the passage from the
Specification that the Appellant cites provides enough detail to convince a
person of skill in the art that the inventor possessed the invention as claimed.
“The requirement is rigorous, but not exhaustive: ‘[I]t is unnecessary to spell
out every detail of the invention in the specification; only enough must be
included to convince a person of skill in the art that the inventor possessed
the invention.’ LizardTech, 424 F.3d at 1345.” In re Alonso, 545 F.3d 1015,
1019 n.3 (Fed. Cir. 2008). “[T]he prior application need not describe the
claimed subject matter in exactly the same terms as used in the claims.”
Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995). “[T]he
specification must contain an equivalent description of the claimed subject
matter.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997).
The Examiner responded to the Appellant’s argument by arguing that
“[t]he cited portion of the specification provides a support for the
subscriber provides his/her log on information to the monitoring service
provider.” Ans. 20. We do not read the disclosure at page 35, lines 12-15 of
the Specification the same way. There is no mention of providing log on
information to a monitoring service provider. The cited portion of the
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Specification is preceded by the statement that “a subscriber to
a media provider may pay a separate service provider for the privilege of
having the latter monitor a delivery queue.” Later the Specification describes
the use of third party monitoring services for “better tailor[ing] by the
subscriber to obtain desirable selections from a particular media
provider.” Spec., p. 35, ll. 8-19. It is to this purpose the “pertinent details”
are provided. One of ordinary skill in the art reading this disclosure would
be convinced that the inventor possessed the invention whereby “the
subscriber can effectuate a change in said first server computing system at
said first website through input provided to said queue monitoring routine
operable on said separate server computing system at said second server
website.”
For the foregoing reasons, the rejection is reversed.

The rejection of claims 1-18, 20, 21, 23-25, 27-32, and 34-37 under 35
U.S.C. § 103(a) as being unpatentable over Hastings, Admission, Auction
Sniper I, and eBay AuctionWatch.
Claims 1-9, 13-18, 21, 23-25, 27, 29, 32, and 34
The claimed system comprises a first server with two routines and a
second server with a third routine.
On the first server there are (a) a subscriber queue routine and (b) a
subscriber queue replenishment control routine. On the second server there
is (c) a queue monitoring routine.
The subscriber queue routine (a)
is controllable by the content provider and is configured to set
up a subscriber selection queue for the subscriber, said
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subscriber selection queue consisting of an ordered list of one
or more playable media items to be viewed by the subscriber;
wherein said subscriber selection queue is set up at least in part
in response to item selection directions provided by the
subscriber.
Claim 1. It is not in dispute that Hastings discloses said routine. See App. Br.
26 (“Hastings fundamentally discloses a subscriber queue routine operating
on a first server computing system that is under the control of the content
provider.”)
The subscriber queue replenishment control routine (b) “implements
queue replenishment rules provided by the subscriber for the subscriber
selection queue.” Claim 1. According to the Examiner, this routine is
disclosed in Hastings at column 2, lines 49-67; column 3, lines 21-35; and,
column 7, lines 25-32. Ans. 5. The Appellant disagrees on the ground that
these passages speak to a “subscriber queue routine,” not a queue
replenishment control routine. App. Br. 27.
We agree with the Appellant that a queue replenishment control
routine is not expressly disclosed in the Hastings’ passages the Examiner
cites to. However, in evaluating Hastings it is proper to take into account not
only the specific teachings of the references but also the inferences which
one skilled in the art would reasonably be expected to draw therefrom. In re
Preda, 401 F.2d 825, 826 (CCPA 1968). The cited passages describe an
operation by which a subscriber can select items the subscriber desires to
rent via various item selection criteria. These selection criteria are sent by
the subscriber to the provider and are used by the provider to select items the
subscriber wants to rent. A subscriber’s act of sending selection criteria will
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necessarily result in items that meet the criteria being placed in the queue.
The periodic placing of items in the queue to meet the pre-chosen criteria
necessarily replenishes the queue. Choosing the selection criteria when
selecting items to replenish a queue controls how the queue is replenished. In
the normal course of practicing the Hastings method the queue is
periodically filled with items matching a subscriber’s pre-chosen criteria and
that meets the queue replenishment control routine as reasonably broadly
claimed.
We now turn to the claimed queue monitoring routine (c). This routine
is
under control of the subscriber on a separate server computing
system at a second website and configured to monitor said
subscriber selection queue in accordance with said queue
replenishment control rules to determine information on a status
of said subscriber selection queue, including: 1) whether said
subscriber selection queue contains any playable media items;
2) an identity of titles of any such playable media items that are
present in said subscriber selection queue; and
wherein said subscriber selection queue can be modified
by said subscriber queue replenishment control routine to
generate a new ordered list of one or more playable media items
based on a confirmation from the subscriber.
Claim 1. According to this routine, a subscriber (via a second
website/server) monitors the selection queue in accordance with the queue
replenishment control rules. The queue is checked to determine if there are
any playable media items and an identity of titles of any such playable media
items. Also, the “queue can be modified by said subscriber queue

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replenishment control routine to generate a new ordered list of one or more
playable media items based on a confirmation from the subscriber.”
We agree with the Examiner that monitoring per se was known in the
art at the time of the invention and the references the Examiner has cited are
evidence in support of that. But the question here is whether it would have
been obvious to provide a routine to monitor the Hastings selection queue
having the functions of (1) checking to determine if there are any playable
media items; (2) checking for an identity of titles of any such playable media
items; and, (3) modifying the subscriber queue replenishment control routine
to generate a new ordered list of one or more playable media items based on
a confirmation from the subscriber. The cited secondary references do not
expressly disclose these functions and we are not persuaded that monitoring
per se is sufficient to lead one of ordinary skill in the art to incorporate a
routine with the functions as claimed in the Hastings system.
That being said, we nevertheless find that a subscriber would perform
these functions in the normal course of practicing the Hastings method. We
pointed out that in the normal course of practicing the Hastings method the
queue is periodically filled with items matching a subscriber’s pre-chosen
criteria and that meets the queue replenishment control routine (b) as
reasonably broadly claimed. Implicit in this act of replenishment is the
determining of information on a status of the subscriber selection queue. A
subscriber decides what items to select in replenishing a queue, and when,
normally after making a prior evaluation of the queue to be re-filled.
Checking for (1) any playable media items and (2) an identity of titles of any
such playable media items and modifying (3) the subscriber queue
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replenishment control routine (i.e., modifying the selection criteria) to
generate a new ordered list are among the many manual acts one of ordinary
skill in the art would expect a subscriber to be performing in the normal
course of practicing the Hastings method.
We appreciate that element (c) of claim 1 requires the functions be
performed on a separate server computing system at a second website and
not manually by a subscriber. But it is generally obvious to automate a
known manual procedure. See Leapfrog Enters., Inc. v. Fisher-Price Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007). Automating through the use of
separate servers with separate websites to perform distinct functions was an
automation scheme well known to those of ordinary skill in the art at the
time of the invention. Employing such a scheme such that element (c) of
claim 1 is performed on a separate server computing system at a second
website would have been obvious to one of ordinary skill in the art. Cf. KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”)
For the foregoing reasons, we will affirm the rejection of claim 1. We
will affirm the rejection of claims 2-9, 13-18, 21, 23-25, 27, 29, 32, and 34
for the same reasons as these claims were not separately argued and therefor
stand or fall with representative claim 1. However, our reasoning departs
substantially from that of the Examiner. Accordingly, we denominate the
rejection as a new ground of rejection.

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The Appellant separately argues claims 10, 11, 12, 20, and 28, the
group of claims 30, 35, and 37, and the group of claims 31, 34, and 36.

Claim 10
We will affirm the rejection of claim 10 for the same reasons we used
in affirming the rejection of claim 1. The Appellant argues that Hastings
does not disclose a “trigger event . . . associated with a quantity of playable
media items remaining in said subscriber selection queue” as claimed as the
Examiner has alleged. However, in our view, a subscriber would necessarily
apply queue replenishment control rules where the “trigger event is
associated with a quantity of playable media items remaining in said
subscriber selection queue” (claim 10) in the normal course of practicing the
Hastings method. Our reasoning departs substantially from that of the
Examiner. Accordingly, we denominate the rejection as a new ground of
rejection.

Claim 11
We will affirm the rejection of claim 11 for the same reasons we used
in affirming the rejection of claim 1. The Appellant argues that Hastings
does not disclose a “trigger event . . . associated with a determination by an
item recommendation system that an additional playable media item should
be added to said subscriber selection queue as a recommended playable
media item” as claimed as the Examiner has alleged. However, in our view,
a subscriber would necessarily apply queue replenishment control rules
where a “trigger event is associated with a determination by an item
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recommendation system that an additional playable media item should be
added to said subscriber selection queue as a recommended playable media
item” (claim 11) in the normal course of practicing the Hastings method.
Our reasoning departs substantially from that of the Examiner. Accordingly,
we denominate the rejection as a new ground of rejection.

Claim 12
We will affirm the rejection of claim 12 for the same reasons we used
in affirming the rejection of claim 1. The Appellant argues that Hastings
does not disclose and teaches away from a “trigger event . . . associated
with a determination by an item recommendation system that an additional
playable media item should be added to said subscriber selection queue as a
recommended playable media item” (claim 11) “wherein said recommended
playable media item is designated as the next to be delivered from said
subscriber selection queue” as claimed as the Examiner has alleged.
However, in our view, a subscriber would necessarily apply queue
replenishment control rules where a “trigger event is associated with a
determination by an item recommendation system that an additional playable
media item should be added to said subscriber selection queue as a
recommended playable media item” (claim 11) and designate it as the next
to be delivered in the normal course of practicing the Hastings method.
Designating any media title as the next to be delivered is not a matter of
“cutting in line” (App. Br. 30) but a simple matter of choice in the title a

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subscriber wants delivered next. Our reasoning departs substantially from
that of the Examiner. Accordingly, we denominate the rejection as a new
ground of rejection.

Claim 20
Claim 20 adds “(d) a subscriber notification routine for providing a
notice to the subscriber in accordance with said notification options and in
response to an addition by said subscriber queue monitoring routine of one
or more additional titles to said subscriber selection queue.” The Examiner
relies on column 4, lines 45-49 as evidence that the claimed subject matter is
disclosed in Hastings. Ans. 9-10. The difficulty is that the notification
described there is directed to item delivery not titles added to a queue. A
prima facie case of obviousness has not been made out in the first instance
for independent claim 20 and claims 34 and 35 that depend therefrom.

Claim 28
According to claim 28, which depends from claim 1, “the subscriber
can effectuate a change in said subscriber selection queue operating on said
first server computing system at said first website through input provided to
said queue monitoring routine operable on said separate server computing
system at said second website.”
We will affirm the rejection of claim 28 (and dependent claim 29) for
the same reasons we used in affirming the rejection of claim 1 and the
following additional reasons.

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With respect to claim 1, we found that modifying (3) the subscriber
queue replenishment control routine (i.e., modifying the selection criteria) to
generate a new ordered list are among the many manual acts one of ordinary
skill in the art would expect a subscriber to be performing in the normal
course of practicing the Hastings method. To generate a new ordered list is
to effectuate a change in said subscriber selection queue. The question here
is whether it would have been obvious to provide for a system where such an
effectuation is conducted through input provided on a separate server
computing system at a second website. Automating through the use of
separate servers with separate websites to perform distinct functions was an
automation scheme well known to those of ordinary skill in the art at the
time of the invention. Employing such a scheme to effectuate a change in
said subscriber selection queue through input provided on a separate server
computing system at a second website would have been obvious to one of
ordinary skill in the art. Cf. KSR, 550 U.S. at 417 (“when a patent ‘simply
arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” “Granting patent protection to
advances that would occur in the ordinary course without real innovation
retards progress and may, in the case of patents combining previously
known elements, deprive prior inventions of their value or utility.” Id. at
419.)

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Claims 30 and 37
These claims are argued together. We take claim 30 as representative.
We will affirm the rejection of claim 30 for the same reasons we used
in affirming the rejection of claim 1. The Appellant argues that Hastings
does not disclose a “the queue monitoring routine can also be
configured to automatically remove playable media items from said
subscriber selection queue” as claimed as the Examiner has alleged.
However, in our view, a subscriber would necessarily apply queue
replenishment control rules whereby a “remov[able] playable media item[]
[is replaced] from said subscriber selection queue” (claim 30) in the normal
course of practicing the Hastings method. Our reasoning departs
substantially from that of the Examiner. Accordingly, we denominate the
rejection as a new ground of rejection.

Claims 31 and 36
These claims call for a subscriber queue monitoring routine which
“can access titles from a plurality of separate first web sites offering
playable media items.” The Examiner relies on column 9, lines 4-6 and
column 8, lines 7-13. According to the Examiner, these passages describe
accessing a provider website that meets the claimed subject matter. Ans. 15.
We disagree. The former passage discloses a network of distributed
warehouses. The latter discloses accessing a provider website for the
purpose of notifying the provider of a request for delivery of movies where

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the customer elects to not receive the maximum number of movies in the
initial delivery. We do not find that these passages disclose or would lead
one of ordinary skill in the art to the subject matter claimed.

The rejection of claims 22, 39, and 40 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Admission, Auction Sniper I, eBay
AuctionWatch, and Berenson.
The Appellant separately argues claim 22, relying on arguments
challenging the rejection of the independent claims. App. Br. 31. Claim 22
tracks claim 21 most closely because, like claim 21, the claim 22 system
includes a notification system “for notifying the subscriber and delivering
said media item to the subscriber in accordance with said subscriber
preference data.” Claim 21 was not separately argued but included in the
analysis of rejection of claim 1. Based on that analysis we affirmed the
rejection of claim 1 but denominated it as a new ground rejection. For the
same reasons, we affirm the rejection of claim 22, and claims 39 and 40 that
depend therefrom, and denominate it as a new ground of rejection.

The rejection of claim 26 under 35 U.S.C. § 103(a) as being unpatentable
over Hastings, Admission, Auction Sniper I, eBay AuctionWatch, and Sherr.
The Appellant separately argues claim 26 (App. Br. 31) but relies on
the arguments challenging the rejection of claim 1. Based on the earlier
analysis we affirmed the rejection of claim 1 but denominated it as a new
ground rejection. For the same reasons, we affirm the rejection of claim 26
and denominate it as a new ground of rejection.

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CONCLUSIONS
The rejection of claim 28 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is reversed.
The rejection of claims 1-18, 21, 23-25, 27-30, 32 and 37 under 35
U.S.C. § 103(a) as being unpatentable over Hastings, Admission, Auction
Sniper I, and eBay AuctionWatch is affirmed but denominated as a new
ground of rejection.
The rejection of claims 20, 31, 34, 35, and 36 under 35 U.S.C. §
103(a) as being unpatentable over Hastings, Admission, Auction Sniper I,
and eBay AuctionWatch is reversed.
The rejection of claims 22, 39, and 40 under 35 U.S.C. § 103(a) as
being unpatentable over Hastings, Admission, Auction Sniper I, eBay
AuctionWatch, and Berenson is affirmed but denominated as a new ground
of rejection.
The rejection of claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Admission, Auction Sniper I, eBay
AuctionWatch, and Sherr is affirmed but denominated as a new ground of
rejection.

DECISION
The Examiner’s decision to reject claims 1-18 and 20-32, 34-37, and
39-40 is affirmed-in-part. That is, the decision of the Examiner to reject
claims 1-18, 21-30, 32, 37, 39, and 40 is affirmed and the decision to reject
claims 20, 31, 34, 35, and 36 is reversed. We denominate the rejection of
claims 1-18, 21-30, 32, 37, 39, and 40 as a new ground of rejection.
Appeal 2013-003073
Application 10/770,804

22
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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