Ex Parte Ibarra

Board of Patent Appeals and Interferences

Dec 21, 2010

10859436 (B.P.A.I. Dec. 21, 2010)

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.
10/859,436 06/02/2004 David Ibarra 2941.EXEC.PT 7121
26986 7590 12/22/2010
MORRISS OBRYANT COMPAGNI, P.C.
734 EAST 200 SOUTH
SALT LAKE CITY, UT 84102
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
12/22/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID IBARRA
____________

Appeal 2009-014483
Application 10/859,436
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014483
Application 10/859,436

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-4, 6-23, and 28-
30. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is directed to systems and methods for
automating selection and tracking of purchase options for the goods and/or
services associated with sales transactions (Spec., para. [0001]). Claim 1,
reproduced below, is further illustrative of the claimed subject matter.
1. A method for automating selection and tracking of
purchase options for property sales transactions, comprising:
determining a purchaser’s temperament so that options
can be presented in a manner that is tailored to the purchaser’s
temperament;
presenting a hierarchical list of options associated with
purchase of property to a purchaser;
reviewing each of the options within the hierarchical list
of options;
recording a purchaser’s choices among all of the options;
automatically summarizing selected options and
highlighting the new cost associated with the property
transaction; and
capturing acknowledgement from the purchaser that
mandatory disclosure items were presented to the purchaser
prior to agreement.
Claims 17, 18, 21, 29, and 30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Anabtawi (US Pub. 2003/0046179 A1, pub. Mar. 6,
2003) in view of Stillman (US Pub. 2005/0014117 A1, pub. Jan. 20, 2005)
and Official Notice (supported by Goldman (US Pub. 2004/0143543 A1,
pub. Jul. 22, 2004)); claim 20 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Anabtawi; claims 1-4, 6, 8, 10, 11, 15, 16, 19, and 28
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stand rejected under 35 U.S.C. § 103(a) as unpatentable over Anabtawi in
view of Bayer (US Pub. 2003/0200161 A1, pub. Oct. 23, 2003) and
Stillman; claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Anabtawi, Bayer, Stillman, Grove (US Pub. 2004/0133479 A1, pub.
Jul. 8, 2004), and Nabe (US Pub. 2002/0194117 A1, pub. Dec. 19, 2002);
claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Anabtawi, Bayer, Stillman, and Andersen (US Pat. 5,774,883, iss. Jun. 30,
1998).
We REVERSE and enter a NEW GROUND of rejection under 37
C.F.R. § 41.50(b) (2010).

ISSUE
Did the Examiner err in asserting that a combination of Anabtawi,
Stillman, and Official Notice renders obvious “determining a purchaser’s
temperament so that options can be presented in a manner that is tailored to
the purchaser’s temperament” and “capturing acknowledgement from the
purchaser that mandatory disclosure items were presented to the purchaser
prior to agreement” as recited in independent claims 1, 17, and 18?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact with respect to independent
claim 1, as set forth on pages 3-5 and 17-18 of the Examiner’s Answer.

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Appeal 2009-014483
Application 10/859,436

ANALYSIS
Original Rejections
We are persuaded that the Examiner erred in asserting that a
combination of Anabtawi and Stillman renders obvious “determining a
purchaser’s temperament so that options can be presented in a manner that is
tailored to the purchaser’s temperament” and “capturing acknowledgement
from the purchaser that mandatory disclosure items were presented to the
purchaser prior to agreement” as recited in independent claims 1, 17, and 18
(App. Br. 9-15). Specifically, with respect to the Official Notice concerning
the “capturing” aspect of independent claims 1, 17, and 18, on page 17 of the
Examiner’s Answer, the Examiner provided the Goldman reference for
support as requested by Appellant. Appellant did not file a Reply Brief in
response.
With respect to temperament, Stillman’s determining of a person’s
mood through analyzing their voice meets the definition of “temperament”
under a broadest reasonable interpretation. See In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). While Appellant may have
intended a more narrow or specific definition of temperament, such a
definition is not set forth in the claim. See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005).
Nevertheless, the Examiner has not clearly shown that modifying the
presentation of car options of Anabtawi to take into account temperament of
Stillman would render obvious “determining a purchaser’s temperament so
that options can be presented in a manner that is tailored to the purchaser’s
temperament,” as recited in independent claim 1, 17, and 18. The portions
of Anabtawi cited by the Examiner do not disclose that its car options menu

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Appeal 2009-014483
Application 10/859,436

can be modified or tailored in anyway. Accordingly, even if the
temperament of Stillman was introduced into Anabtawi, it is unclear what
sort of tailoring would occur. Furthermore, Stillman discloses that the
detected temperament is used to either (1) present one of a variety of
questions or (2) end the inquiry. Thus, while “tailoring” of the question may
have occurred, no options have been presented.

New Ground
We invoke our discretionary authority under 37 C.F.R. § 41.50(b) to
enter a new ground of rejection. Specifically, we enter a new ground
rejecting independent claims 1, 17, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Stillman in view of Anabtawi. Stillman discloses tailoring
the type of question presented to an individual (e.g., requires a simple or
detailed answer, or is a gender specific question) (paras. [0021], [0034]).
Anabtawi discloses presenting various options for specific questions related
to purchasing a car (e.g., various colors and accessories) (paras. [0027]-
[0028]). It would have been obvious to modify the voice analysis system of
Stillman to choose, based on the temperament of the individual, one of the
various questions disclosed in Anabtawi related to purchasing a car. As in
Anabtawi, the questions would be accompanied by options for answering the
question. The rationale for combining is to present options for answering
the question so as to confirm the option is available (paras. [0027]). Thus,
the information is gathered and processed in a more timely and efficient
manner. For example, the options would not include colors for cars that the
particular car dealer does not provide. Hence, the individual does not waste

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Appeal 2009-014483
Application 10/859,436

time choosing colors that are not available, and the car dealer does not waste
time processing color preference information that it does not have in
inventory.
For the balance of the aspects set forth in independent claims 1, 17,
and 18, we adopt the Examiner’s reasoning as set forth on pages 3-5 of the
Examiner’s Answer.
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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

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Appeal 2009-014483
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hh

MORRISS OBRYANT COMPAGNI, P.C.
734 EAST 200 SOUTH
SALT LAKE CITY, UT 84102

7