Ex Parte Kumar

Board of Patent Appeals and Interferences

Sep 27, 2010

09531703 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SURESH KUMAR
____________

Appeal 2009-014027
Application 09/531,703
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 1 to 6, 8 to 32, and 40 to 47. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b) (2002).

BACKGROUND
Appellant’s invention is directed to a method and system for bidding
on multiple auctions (Spec. 1).
Claim 1 is illustrative:
1. A method performed by a computer
system for bidding on auctions, the method
comprising:
receiving an indication of a plurality of
auctions;
receiving an indication of a bidding
technique to apply to the indicated auctions; and
participating in some of the indicated
auctions in accordance with the indicated bidding
technique.
Appellant appeals the following rejections:
Claims 1, 10, 33, and 40 under 35 U.S.C. § 102(e) as anticipated by
Ausubel (US 6,021,398, iss. Feb. 1, 2000).
Claims 2 to 6, 8, 9, 11 to 32, 34 to 39, and 41 to 47 under 35 U.S.C. §
103(a) as unpatentable over Ausubel.
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ISSUES
Did the Examiner err in rejecting the claimed subject matter
because Ausubel fails to discloses receiving an indication of a plurality of
auctions and an indication of a bidding technique?
Did the Examiner err in rejecting claims 8, 13 to 16, 20, 27, 29, 30, 43
and 44 because Ausubel does not disclose or suggest taking an action at one
auction based on the result of another auction that has ended?
Did the Examiner establish the obviousness of claims 4, 6, 12, 17, 18,
21, 24 to 26, 32, 46?

FACTUAL FINDINGS
We adopt all of the Examiner’s findings in regard to the teachings of
Ausubel related to claims 1, 10, 23, and 40 as our own. (Ans. 3). In
addition, we find that Ausubel discloses that contingent bids may be made
(col. 11, ll. 34 to 35).
Appellant disclose that in one bidding technique and bid may be
contingent (Spec. 5).
The Appellant presented as evidence (submitted Aug. 19, 2005 as an
attachment to an Amendment After Final Rejection, and again with the
Appeal Brief filed Jul. 14, 2006) Vijay Krishna, Auction Theory, 165-66
(2002) (hereinafter “Auction Theory”), which states:
when multiple objects are to be sold, many
options are open to the seller. First, the seller must
decide whether to sell the objects separately in
multiple auctions or jointly in a single auction. In
the former case, the objects are sold one at a time
in separate auctions—conducted sequentially,
say—in a way that the bids in the auction for one
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of the objects do not directly influence the
outcome of the auction for another. In the latter
case, the objects are sold at one go in a single
auction, but not necessarily all to the same bidder,
and the bids on the various objects collectively
influence the overall allocation . . . . if the seller
decides to sell the objects one at a time in a
sequence of single-object auctions . . . .

(Id. at 165-66).

ANALYSIS
Multiple auctions
The Appellant's argument that Ausubel does not disclose multiple
auctions as claimed is unconvincing. We agree with the Examiner that
auctions on different objects or items may be considered different auctions,
i.e. single/separate auctions for each item. As such, when the claims are
given their broadest reasonable interpretation, the recitation of “a plurality of
auctions” is broad enough to include the auctioning of different items
disclosed in Ausubel. We have considered the evidence submitted by the
Appellant. Specifically, we have considered the pages of Auction Theory
submitted by the Appellant. Auction Theory teaches that a seller seeking to
sell a plurality of objects has the choice of selling the items in multiple
auctions or in a single auction. Auction Theory states that in a multiple
auction, the objects are sold one at a time in separate auctions, conducted
sequentially. This teaching does not preclude the interpretation advanced by
the Examiner that an auction is a way of selling an item, based on the
highest bidder and therefore the selling of one item in this way is an auction.
The Examiner is of the opinion that the selling of multiple items to the
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highest bidder is a multiple auction as broadly claimed. This interpretation
by the Examiner comports with the definition of the word “auction” found in
the online version of Merriam Webster’s Dictionary as “a sale of property to
the highest bidder” (http://www.merriam-webster.com/dictionary/auction)
(last visited Sep. 14, 2010). Therefore, the sale of each item to the highest
bidder is an auction and the sale of multiple items is multiple auctions.
To the extent that the Appellant is arguing the Ausubel does not
disclose receiving an indication of a bidding technique to apply to the
auctions, we agree with the Examiner that as Ausubel discloses a plurality of
auctions and bidding rules to apply to the auctions, Ausubel discloses this
step of Appellant’s method. We note that Ausubel discloses that a
contingent bid may be made which is one of the bidding techniques
disclosed by the Appellant.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(e). We will also sustain the Examiner’s
rejection of claims 10 and 40 for the same reasons. We will sustain the
Examiner’s rejection of claim 33 because the Appellant does not address the
separate patentability of this claim.

Obviousness
Claims 8, 13 to 16, 20, 27, 29, 30, 43, and 44 recite in various ways
that a bidding technique in which a bidder takes action on a second auction
based on the result of a first auction. The Examiner has not addressed the
specific recitations of these claims. Rather the Examiner offers a general
statement that bidding at an auction only after winning another auction, as is
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recited in claims 8 and 13, would have been obvious to one of ordinary skill
in the art because a bidder would have enough funds to use to apply at
another auction.
It is not clear why winning an auction would result in a bidder having
enough funds to use to apply to another auction. After winning an auction, a
bidder would have fewer funds available to apply to another auction because
a bidder has paid for the item won. Although, the Examiner may be correct
that a bidder may have the opportunity to place more than one bid on one or
more different items, the Examiner has not established that the specific
recitation of claims 8, 13 to 16, 20, 27, 29, 30, 43, and 44 would have been
obvious.
For instance, claim 14 recites that a bidder bids at multiple auctions in
response to winning an auction, claim 20 recites basing a decision to bid at
an auction based on results of another auction, claim 27 recites bidding at a
certain number of other auctions upon winning a certain number of auctions.
We agree with the Appellant that the Examiner has not established the
obviousness of these claims by the general statement that during an auction,
a bidder may have the opportunity to place more than one bid on one or
more different items.
The Examiner points to no interrelated teachings of multiple patents;
the effects of demands known to the design community or present in the
marketplace as support for his conclusion that there existed at the time of the
invention an apparent reason to modify the method of Ausubel so as to
include the recitations of claims 8, 13 to 16, 20, 27, 29, 30, 43, and 44. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S.398, 418 (2007); see also In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
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cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”).
As such, we find that the Examiner has failed to set forth a prima facie
case of obviousness, and we cannot sustain this rejection of claims 8, 13 to
16, 20, 27, 29, 30, 43, and 44. The Examiner has also not specifically
addressed the recitations of claims 2 to 6, 9, 11, 12, 17 to 19, 21 to 26, 28,
31, 32, 34 to 39, 41, 42, and 45 to 47. Therefore, we will not sustain the
rejection as it is directed to these claims.

DECISION
We AFFIRM the Examiner’s § 102(b) rejection of claims 1, 10, 33,
and 40 as anticipated by Ausubel.
We REVERSE the Examiner’s § 103(a) rejection of claims 2 to 6, 8,
9, 11 to 32, 34 to 39, and 41 to 47 as unpatentable over Ausubel.

TIME PERIOD
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) (2007).

AFFIRMED-IN-PART

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hh

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