Ex Parte GrossDownload PDFPatent Trial and Appeal BoardAug 29, 201310770804 (P.T.A.B. Aug. 29, 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. 10/770,804 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). Appeal 2013-003073 Application 10/770,804 2 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). Appeal 2013-003073 Application 10/770,804 3 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.) Appeal 2013-003073 Application 10/770,804 4 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: Appeal 2013-003073 Application 10/770,804 5 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: Appeal 2013-003073 Application 10/770,804 6 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.) App App 13. T u 14. T re Figu 15. I se cu eal 2013-0 lication 10 he “MAX sed togeth his combi produced re 6 illustr n accordan ts selectio stomer’s 03073 /770,804 TURNS” er. (Col. 3 nation of below. ates a met ce with th n criteria order queu approach , ll. 8-10.) approache hod of illu “MAX TU e process specifying e. (Col. 3, 7 and the “M s is illustra strating us RNS” app illustrated the items ll. 20-35. AX OUT ted in Fig ing both t roach. in Figure a provider ) ” approac ure 6 of H he “MAX 6, the cust provides h can be astings, OUT” and omer first to a Appeal 2013-003073 Application 10/770,804 8 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 Appeal 2013-003073 Application 10/770,804 9 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 Appeal 2013-003073 Application 10/770,804 10 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 Appeal 2013-003073 Application 10/770,804 11 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 Appeal 2013-003073 Application 10/770,804 12 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 Appeal 2013-003073 Application 10/770,804 13 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 Appeal 2013-003073 Application 10/770,804 14 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. Appeal 2013-003073 Application 10/770,804 15 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 Appeal 2013-003073 Application 10/770,804 16 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 Appeal 2013-003073 Application 10/770,804 17 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. Appeal 2013-003073 Application 10/770,804 18 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.) Appeal 2013-003073 Application 10/770,804 19 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 Appeal 2013-003073 Application 10/770,804 20 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. Appeal 2013-003073 Application 10/770,804 21 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) hh Copy with citationCopy as parenthetical citation