Ex Parte Kamiya

Board of Patent Appeals and Interferences

Jun 18, 2010

09782017 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte HIROSHI KAMIYA 8
___________ 9
10
Appeal 2009-010971 11
Application 09/782,017 12
Technology Center 3600 13
___________ 14
15
Decided: June 18, 2010 16
___________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. 19
FETTING, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE 1
Hiroshi Kamiya (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 1-47, the only claims pending in the application 3
on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a commodity ordering issuing and accepting 10
method, a system thereof, and a commodity order accepting apparatus to 11
those using the Internet (Specification 1:6-8). 12
An understanding of the invention can be derived from a reading of 13
exemplary claims 1, 2, and 43, which are reproduced below [bracketed 14
matter and some paragraphing added]. 15
1. A commodity order issuing and accepting method, 16
comprising: 17
[1] providing an order issuing device capable of electronic 18
communications; 19

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 15, 2008) and Reply Brief (“Reply Br.,” filed February
10, 2009), and the Examiner’s Answer (“Ans.,” mailed December 10, 2008),
and Final Rejection (“Final Rej.,” mailed January 8, 2008).
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[2] providing an order accepting device capable of electronic 1
communications; 2
[3] requesting a first electronic document comprising first 3
input fields for accepting order issuer information and for 4
accepting commodity order issuance information except for an 5
order issuer's payment date from said order accepting device; 6
[4] transmitting said first electronic document to said order 7
issuing device; 8
[5] inputting said order issuer information and said 9
commodity order issuance information except for said order 10
issuer's payment date into said first input fields on said order 11
issuing device; 12
[6] transmitting said order issuer information and said 13
commodity order issuance information except for said order 14
issuer's payment date to said order accepting device; 15
[7] retrieving a transaction condition corresponding to said 16
commodity order issuance information on said order accepting 17
device; 18
[8] transmitting a second electronic document on which said 19
transaction condition is described and which has a second input 20
field for said order issuer's payment date to said order issuing 21
device; 22
[9] inputting said order issuer's payment date into said 23
second input field on said order issuing device; and 24
[10] transmitting said order issuer's payment date to said order 25
accepting device, wherein said second electronic document 26
comprises a formula for calculating a payment price based on 27
said order issuer's payment date. 28
29
2. The commodity order issuing and accepting method as set 30
forth in claim 1, further comprising: 31
calculating a reduced price corresponding to said transaction 32
condition and said order issuer's payment date on said order 33
accepting device. 34
35
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43. The commodity order issuing and accepting method of 1
claim 1, wherein the second electronic document comprises 2
fields displaying a regular payment amount and a payment due 3
date, the regular payment amount being due on the payment due 4
date, and wherein the payment amount and the payment due 5
date are determined by the order accepting device. 6
7
THE REJECTIONS 8
The Examiner relies upon the following prior art: 9
Benton et al. US 4,926,325 May 15, 1990
O’Hagan et al. US 6,314,406 B1 Nov. 6, 2001
Walker et al. US 6,405,174 B1 Jun. 11, 2002
Murcko, Jr. US 6,578,014 B1 Jun. 10, 2003

Claims 1, 4, 7, 10, and 13-42 stand rejected under 35 U.S.C. § 103(a) as 10
being unpatentable over Murcko and Benton. 11
Claims 2-3, 5-6, 8-9, and 11-12 stand rejected under 35 U.S.C. § 103(a) 12
as being unpatentable over Murcko, Benton, and O’Hagan. 13
Claims 43-47 stand rejected under 35 U.S.C. § 103(a) as being 14
unpatentable over Murcko, Benton, and Walker. 15
16
ISSUES 17
The issue of whether the Examiner erred in rejecting claims 1, 4, 7, 10, 18
and 13-42 under 35 U.S.C. § 103(a) as unpatentable over Murcko and 19
Benton turns on whether Murcko describes a second electronic document 20
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that comprises a formula for calculating a payment price based on said order 1
issuer's payment date. 2
The issue of whether the Examiner erred in rejecting claims 2-3, 5-6, 8-3
9, and 11-12 under 35 U.S.C. § 103(a) as unpatentable over Murcko, 4
Benton, and O’Hagan turns on whether O’Hagan describes calculating a 5
reduced price, as required by claims 2 and 5. 6
The issue of whether the Examiner erred in rejecting claims 43-47 under 7
35 U.S.C. § 103(a) as unpatentable over Murcko, Benton, and Walker turns 8
on whether the Appellant’s arguments in support of the independent claims 9
is found persuasive. 10
11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to the Prior Art 15
Murcko 16
01. Murcko is directed to a method and apparatus to facilitate 17
network transactions (Murcko 1:18-20). 18
02. Murcko describes a system that enables communication 19
between buyers and sellers (Murcko 4:5-7). A seller specifies the 20
item to be sold and searches for buyers (Murcko 4:8-14). The 21
seller then provides the item or a description of the item to the 22
buyer (Murcko 4:16-19). The system assigns a unique tracking ID 23
to the item and is sent to each buyer (Murcko 4:23-25). The buyer 24
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then views the item sent and specifies payment amounts to the 1
seller or requests additional information (Murcko 4:25-29). After 2
the buyer submits payments to the system, the system sends the 3
payment to the seller (Murcko 4:29-31). 4
03. Buyers can also submit a Buyer Item Request form that allows 5
buyers to specify items they would like to buy, which sellers they 6
are interested in buying from, and other information (Murcko 7
27:20-31). Buyers can also specify or provide guidance about 8
what payment amount they will be willing to pay for the desired 9
item (Murcko 27:64-67). A buyer can further specify a cutoff 10
percentile for sellers providing items or specify a cutoff percentile 11
for each item requested (Murcko 28:1-6). A buyer would indicate 12
a cutoff percentile for sellers in order to specify which sellers will 13
accept the buyer paying an average payment of a certain amount 14
(Murcko 28:7-13). All payments will be assigned a payment date 15
and buyers will have to pay an additional fee for late payments 16
(Murcko 28:61-65). 17
Benton 18
04. Benton is directed to a unique electronic funds transfer system 19
incorporating facsimile machines both to transfer funds data 20
between buyers and sellers at a common point of sale or at remote 21
locations and to print transaction records including facsimile 22
signatures of the parties (Benton 1:13-19). 23
24
25
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O’Hagan 1
05. O’Hagan is directed to a system for optically extracting indicia 2
from a coupon and employing the extracted indicia within the 3
network to facilitate customer shopping, manufacturer marketing, 4
and store efficiency (O’Hagan 1:14-19). 5
06. O’Hagan specifically describes a system that allows a customer 6
to scan coupons at home such that the customer maintains an 7
electronic list of coupons (O’Hagan 3:13-20). The customer 8
further can create a shopping list to compliment the coupon list 9
and go to the store at a time of convenience (O’Hagan 3:20-24). 10
At the store, the customer uses a shopping cart equipped with a 11
portable device to assist the customer to shop efficiently and to 12
scan items as the customer places the items into the shopping cart 13
(O’Hagan 3:25-42). 14
07. In order to add an item on to a shopping list, a user enters or 15
scans the barcode information (O’Hagan 20:60-62). The system 16
retrieves product data and returns a confirmation page that 17
includes product information such as product price, product 18
availability, coupons, discounts, terms on coupons/discounts, etc. 19
(O’Hagan 21:11-16). After the user selects whether to add the 20
item, the home terminal connects to a merchant’s computer, 21
transmits new coupon list information, and updates the product 22
information on the confirmation page, including product price, 23
product availability, coupons, discounts, terms on 24
coupons/discounts etc. (O’Hagan 21:40-57). The customer 25
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shopping list includes information as to how long the price quote 1
will remain in effect, the time of purchase of the product, and the 2
price paid by the customer (O’Hagan 23:41-57). The customer 3
pays the lower of the price of the product being offered at the store 4
or the price quoted previously using the system (O’Hagan 28:44-5
50). 6
Walker 7
08. Walker is directed to a method and apparatus for providing 8
discounts (Walker 1:31-32). 9
ANALYSIS 10
Claims 1, 4, 7, 10, and 13-42 rejected under 35 U.S.C. § 103(a) as being 11
unpatentable over Murcko and Benton 12
The Appellant first contends that (1) Murcko, Benton, O’Hagan, and 13
Walker fails to describe “wherein said second electronic document 14
comprises a formula for calculating a payment price based on said order 15
issuer's payment date” as required by limitation [10] of claim 1 (App. Br. 16
16-19). The Appellant specifically argues that Murcko describes the buyer 17
provides the payment amount they might be willing to pay, rather than a 18
formula as claimed (App. Br. 17-18). We disagree with the Appellant. 19
First, we note that limitation [10] only requires that the formula is based on 20
the issuer’s payment date. There are no other limitations required of the 21
formula. As such, limitation [10] only requires any adjustment to the 22
payment price that is based on the issuer’s payment date. 23
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Murcko describes a system that facilitates communication between 1
buyers and sellers, where a buyer can describe the item and the price the 2
buyer is willing to pay (FF 01-02). Murcko further describes that a buyer 3
can specify a cutoff percentile for each requested item (FF 03). A buyer can 4
also specify a cutoff percentile for sellers, where the cutoff condition is for 5
sellers that will accept an average payment amount (FF 03). Payment is also 6
required on a specific date and if payment is not timely received additional 7
fees are assessed (FF 03). That is, the amount due is adjusted based on a 8
formula to account for payments that are not received on the payment date 9
and the amount due is increased by the late fee amount. 10
The Appellant further argues that the late fee, as described by Murcko, is 11
merely a fee added to the set payment amount (Reply Br. 5). Although a late 12
fee is a fee added to the payment amount, the Appellant has failed to provide 13
any rationale that distinguishes how Murcko’s description of a formulaic 14
adjustment of the payment amount based on the payment date is 15
distinguished from the claimed invention. As such, the Appellant’s 16
argument is not found persuasive. Therefore, Murcko describes more than 17
just allowing a buyer to dictate how much they are willing to pay; Murcko 18
describes that payment options are provided such that the buyer can submit a 19
formula that cutoffs off potential sellers and further describes formula to 20
adjust the amount due if payment is not received by the payment date. 21
The Appellant also argues that Benton, O’Hagan and Walker fail to 22
describe limitation [10] of claim 1 (App Br. 19). However, the Examiner 23
has relied on Murcko to describe this feature. As such, the Appellant's 24
contention does not persuade us of error on the part of the Examiner because 25
the Appellant responds to the rejection by attacking the references 26
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separately, even though the rejection is based on the combined teachings of 1
the references. Nonobviousness cannot be established by attacking the 2
references individually when the rejection is predicated upon a combination 3
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 4
(Fed. Cir. 1986). 5
The Examiner did not err in rejecting claims 1, 4, 7, 10, and 13-42 under 6
35 U.S.C. § 103(a) as unpatentable over Murcko and Benton. 7
8
Claims 2-3, 5-6, 8-9, and 11-12 rejected under 35 U.S.C. § 103(a) as 9
being unpatentable over Murcko, Benton, and O’Hagan 10
The Appellant contends that O’Hagan fails to describe “calculating a 11
reduced price corresponding to…said order issuer’s payment date on said 12
order accepting device” as required by claims 2 and 5 (App. Br. 20). We 13
disagree with the Appellant. In rejecting claims 2 and 5, the Examiner relied 14
on O’Hagan to describe this feature (Ans. 7-8). O’Hagan describes an 15
electronic shipping system that allows a user to scan coupons at home, create 16
a shopping list, and shop at the store at the user’s convenience (FF 06-07). 17
O’Hagan describes that when a user selects an item to be placed in the 18
shopping list, the system displays a confirmation that includes product 19
information (FF 07). The product information includes product price, 20
product availability, coupons, discounts, terms on coupons/discounts, etc. 21
(FF 07). Once a user selects a product to be added to the shopping list, the 22
user’s terminal connects to a merchant’s computer and updates the product 23
information (FF 07). That is, the user’s shopping cart displays and 24
calculates discounted prices based on coupons and discounts. The system 25
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further incorporates the terms and conditions of the coupons and discounts, 1
such as their time of expiration (FF 07). The Appellant agrees that O’Hagan 2
describes the confirmation page, but fails to set forth any rationale to 3
distinguish the claimed invention from O’Hagan. As such, we find that 4
O’Hagan describes this limitation of claims 2 and 5. 5
The Appellant further contends that Murcko and Benton fail to describe 6
this limitation. However, the Examiner relied on O’Hagan in the rejection 7
of these claims. As such, the Appellant's contention does not persuade us of 8
error on the part of the Examiner because the Appellant responds to the 9
rejection by attacking the references separately, even though the rejection is 10
based on the combined teachings of the references. Nonobviousness cannot 11
be established by attacking the references individually when the rejection is 12
predicated upon a combination of prior art disclosures. Id. 13
The Examiner did not err in rejecting claims 2-3, 5-6, 8-9, and 11-12 14
under 35 U.S.C. § 103(a) as unpatentable over Murcko, Benton, and 15
O’Hagan. 16
Claims 43-47 rejected under 35 U.S.C. § 103(a) as being unpatentable 17
over Murcko, Benton, and Walker 18
The Appellant contends that claims 43-47 depend from the independent 19
claims and are allowable for the same reasons provided in support of those 20
claims supra (App. Br. 20). We disagree with the Appellant. The 21
Appellant’s arguments were not found persuasive supra and are not found 22
persuasive here for the same reasons. As such, the Examiner did not err in 23
rejecting claims 43-47 under 35 U.S.C. § 103(a) as unpatentable over 24
Murcko, Benton, and Walker. 25
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1
CONCLUSIONS OF LAW 2
The Examiner did not err in rejecting claims 1, 4, 7, 10, and 13-42 under 3
35 U.S.C. § 103(a) as unpatentable over Murcko and Benton. 4
The Examiner did not err in rejecting claims 2-3, 5-6, 8-9, and 11-12 5
under 35 U.S.C. § 103(a) as unpatentable over Murcko, Benton, and 6
O’Hagan. 7
The Examiner did not err in rejecting claims 43-47 under 35 U.S.C. 8
§ 103(a) as unpatentable over Murcko, Benton, and Walker. 9
10
DECISION 11
To summarize, our decision is as follows: 12
• The rejection of claims 1, 4, 7, 10, and 13-42 under 35 U.S.C. 13
§ 103(a) as unpatentable over Murcko and Benton is sustained. 14
• The rejection of claims 2-3, 5-6, 8-9, and 11-12 under 35 U.S.C. 15
§ 103(a) as unpatentable over Murcko, Benton, and O’Hagan is 16
sustained. 17
• The rejection of claims 43-47 under 35 U.S.C. § 103(a) as 18
unpatentable over Murcko, Benton, and Walker is sustained. 19
20
No time period for taking any subsequent action in connection with this 21
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 22
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1
AFFIRMED 2
3
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5
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