Ex Parte Lam

Board of Patent Appeals and Interferences

Jan 11, 2006

09536531 (B.P.A.I. Jan. 11, 2006)

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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________

Paper No. 33

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte AMY LAM

Appeal No. 2005-0494
Application 09/536,5311

ON BRIEF

Before BARRETT, DIXON, and GROSS, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the final rejection of claims 1-22.
We affirm.

1 Application for patent filed March 28, 2000, entitled
"Computer Auction Processing System and Methods of Managing Such
System."
BACKGROUND
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This invention relates to a computer-based interactive
auction processing system. The system generates currency in
exchange for user information and allows the user to acquire
merchandise in exchange for the generated currency via an
interactive auction. The system includes a host computer and at
least one remote terminal.
Claim 1 is reproduced below.
1. An auction processing system comprising:

(a) a host computer which is capable of communication with
at least one remote computer;

(b) means for generating currency, wherein the currency is
generated in exchange for information from a user of
the remote computer by interaction with the host
computer; and

(c) means for enabling acquisition of one or more lots of
merchandise through an auction format whereby such
acquisition is through use of the generated currency.

THE REFERENCES

The examiner relies on the following references:

Godin et al. (Godin) 5,890,138 March 30, 1999
Ng 6,405,175 June 11, 2002
(filed July 27, 1999)

THE REJECTION
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ng in view of Godin.
We refer to the final rejection (Paper No. 21) (pages
referred to as "FR__") and the second examiner’s answer (Paper
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No. 30) (pages referred to as "EA__") for a statement of the
examiner's rejection, and to the brief (Paper No. 24) (pages
referred to as "Br__") and reply brief (Paper No. 27) (pages
referred to as "RBr__") for a statement of the appellant's
arguments thereagainst.
OPINION
The claims are grouped to stand or fall together (Br3).
Claim 1 is taken as representative.
There are two issues on appeal. The first issue is
appellant’s claim that the examiner's answer raises a new ground
of rejection (RBr2). The second issue deals with the obviousness
rejection of Ng in view of Godin.

No New Ground of Rejection
The question of whether the examiner's answer raises a new
ground of rejection is not within our jurisdiction. The Board's
jurisdiction is limited to rejections of claims. Nevertheless,
the examiner's answer does not raise a new ground of rejection
because it merely clarifies that the examiner used the prior art
disclosed in Godin, and not the actual Godin invention; note that
both the final rejection and the examiner's answer cite to
column 1, lines 10-17.

Rejection under 35 U.S.C. § 103(a)
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The examiner finds that Ng discloses the claimed subject
matter of claim 1 except for acquiring merchandise through an
auction system (FR2). The examiner finds that Godin teaches a
computer auction system and teaches at column 1, lines 10-17,
that auctions provide a way to obtain products at reasonable
prices and, in addition, there is the excitement and skill of the
buyer. The examiner concludes that it would have been obvious to
one having ordinary skill in the art to modify the Ng reference
with the Godin teaching by "replacing the mere converting points
for prizes or gifts with an auction in order to provide a more
exciting means of acquiring the prizes or gifts." (FR4)
First, appellant argues that there is no motivation to
combine the references. Appellant argues that "Godin does not
teach or suggest that the auctions are substitutes for other
methods of selling things over the internet, rather Godin teaches
only that its claimed auction method is superior to other auction
methods" (Br5). It is also argued that "Godin does not teach the
desirability of the modification proposed by the Examiner" (Br5)
and the sparse reference to the redemption process in Ng does not
suggest the desirability of the combination (Br6).
The issue is whether it would have been obvious to use the
generated points disclosed in Ng to acquire merchandise via a
computerized auction system, as taught by Godin. Ng discloses
that points can be "converted into prizes, such as bonus online
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time, special offers, telephone calling card minutes, hotel
nights or frequent-flyer miles, other discounts, or even cash or
stock in the database company" (col. 9, lines 25-29). Ng teaches
using the points for many things and does not restrict how a user
spends his or her points to acquire merchandise. In our opinion,
this would have suggested to one of ordinary skill in the art
that the generated points in Ng could be spent in any way that
regular currency is spent, including to bid in an auction system
as taught by Godin. Godin simply shows that computer-based
auctions were well known in the art.
Second, appellant argues that Ng and Godin do not teach the
limitation of "generating currency" because the "reward system of
Ng is largely dependent on the actions of others, while the
system of generating currency in the present claims is entirely
dependent on the actions of one person, the reward recipient"
(Br6). That is, "the systems and methods of the present
invention allow the initial person to generate their own currency
by simply providing more information, answering more questions,
evaluating more product information and the like" (Br6).
Appellant does not point out what language of claim 1 is not
met by Ng and we do not find any differences. Ng discloses
generating points, which is a form of currency, in exchange for
information from a user. Appellant's method of generating
currency is not claimed. If the method had been claimed in more
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detail the examiner might have applied an additional reference,
such as Goldhaber et al., U.S. Patent 5,794,210 (copy attached),
which shows that users can earn digital cash based on consumer
interaction (e.g., cols. 9-11), where "the compensation (e.g.,
direct cash payment) represented by a CyberCoin has generic
usefulness" (col. 11, lines 25-27).
For the reasons stated above, the rejection of claims 1-22
is sustained.
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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) (2004).
AFFIRMED

LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
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