Ex Parte Lawton

Patent Trial and Appeal Board

Oct 21, 2013

11349382 (P.T.A.B. Oct. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/349,382 02/07/2006 Daniel J. Lawton 1-1279 6614
22209 7590 10/22/2013
HOOKER & HABIB, P.C.
100 CHESTNUT STREET
SUITE 304
HARRISBURG, PA 17101
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
10/22/2013 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 DANIEL J. LAWTON
___________

Appeal 2011-010176
Application 11/349,382
Technology Center 3600
____________

Before HUBERT C. LORIN, MEREDITH C. PETRAVICK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010176
Application 11/349,382

2
STATEMENT OF THE CASE
Daniel J. Lawton (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 19-23 and 29-30. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
Claim 19, reproduced below, is illustrative of the subject matter on
appeal.
19. A system for processing the sale of goods
comprising:
a database comprising a list of goods of a
plurality of suppliers available for sale, including a
supplier sale price; and
a processor in communication with the
database, the processor comprising:
a first module for automatically receiving
up-to-date information on the goods for sale by
suppliers and updating the database to reflect the
information;
a second module for electronically
communicating with a potential customer to
receive an offer to purchase a good without
informing the potential customer of an acceptable
purchase price for such good, said acceptable

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 3, 2011) and Reply Brief (“Reply Br.,” filed May 27, 2011),
and the Examiner’s Answer (“Ans.,” mailed Mar. 31, 2011).

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Application 11/349,382

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purchase price being a price that exceeds the
supplier sale price by a predetermined sales
margin, the offer including a purchase offer price,
and for querying the database to determine if the
requested good is available for sale;
a third module for calculating the difference
between the purchase offer price and the supplier
sale price for such good to determine a sales
margin and for generating an acceptance to the
offer from the potential customer if the sales
margin exceeds said predetermined margin and for
generating a refusal of the offer if the sales margin
does not exceed the predetermined margin; and
a fourth module for generating a purchase
order to the supplier to purchase such good if the
sales margin exceeds a predetermined margin.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Cameron
Yashiro
Budish
Foo
US 5,832,459
US 2003/0033260 A1
US 2005/0273417 A1
US 2006/0240396 A1
Nov. 3, 1998
Feb. 13, 2003
Dec. 8, 2005
Oct. 26, 2006

The following rejections are before us for review:
1. Claims 19-23 and 29-30 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
2. Claims 19, 22, and 23 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Budish.
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Application 11/349,382

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3. Claims 20 and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Budish and Yashiro.
4. Claim 29 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Budish, Yashiro, and Foo.
5. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Budish and Cameron.

ISSUES
The first issue is whether the Examiner established a prima facie
showing that claims 19’s requirement that the second module communicates
with the customer “without informing the potential customer of an
acceptable purchase price for such good” lacks the required written
description support under 35 U.S.C. § 112, first paragraph.
The second issue is whether the Examiner established a prima facie
showing that Budish describes “a second module for electronically
communicating with a potential customer to receive an offer to purchase a
good without informing the potential customer of an acceptable purchase
price for such good, said acceptable purchase price being a price that
exceeds the supplier sale price by a predetermined sales margin” as required
by claim 19.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
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).
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ANALYSIS
The rejection of claims 19-23 and 29-30 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
We are persuaded by the Appellant’s argument (App. Br. 10-16) that
the Examiner erred in rejecting claims 19-23 and 29-30 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. The Examiner seems to have found that claim 19’s recitation
of “without informing the potential customer of an acceptable purchase price
for such good” lacks written description support because the Specification
does not contain this limitation verbatim. See App. Br. 8 and 12-15.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). However, the written
description requirement under § 112 does not demand (1) any particular
form of disclosure, or (2) the Specification recite the claimed invention
verbatim, although a description that merely renders the invention obvious
does not satisfy the requirement. Ariad, 598 F.3d at 1352 (citations
omitted). As stated in Ex parte Parks, however, adequate written
description “does not require literal support for the claimed invention.” Ex
parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993). As such, “a lack of
literal support does not, in and of itself, establish a prima facie case for lack
of adequate descriptive support ....” Id. “Rather, it is sufficient if the
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originally-filed disclosure would have conveyed to one having ordinary skill
in the art that an appellant had possession of the concept of what is claimed.”
Id.
While we agree with the Examiner that the Specification does not
verbatim disclose the disputed claim limitations, we believe, however, that
the portions of the Specification identified by Appellant (see App. Br. 13-
15), as well as other portions of the Specification reasonably convey,
implicitly, to one of ordinary skill in the art that Appellant had possession of
the concept. We note that the Specifications describes that the purpose of
the invention is to “efficiently maximize profit” of a distributor in a
business-to-business marked (Spec. para. [0090]), and describes repeatedly
prompting a customer for a new offer price if their previous offer price is too
low (Spec. paras. [0023-0024]). Given this, we agree with the Appellant
that the concept of not informing the customer of an acceptable purchase
price is implicitly supported by the Specification, otherwise there would be
no profit maximization for the distributor and no need to repeatedly prompt
a customer for a new offer price.
Accordingly, the rejection of claims 19-23 and 29-30 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is reversed.

The rejection of claims 19, 22, and 23 under §102(e) as being anticipated by
Budish
We are persuaded by the Appellant’s argument (App. Br. 17-19) that
the Examiner erred in rejecting claim 19 under 35 U.S.C. §102(e) as being
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anticipated by Budish. The Appellant and the Examiner dispute whether
Budish describes:
a second module for electronically communicating
with a potential customer to receive an offer to
purchase a good without informing the potential
customer of an acceptable purchase price for such
good, said acceptable purchase price being a price
that exceeds the supplier sale price by a
predetermined sales margin.

App. Br. 21, Claims Appendix. At the crux of the dispute, seems to be some
confusion regarding upon what price in Budish the Examiner is relying to
meet the claimed acceptable purchase price. Further adding to the confusion
is that the Examiner seems to be conflating a prior art negotiation agent
system, which is described in Budish’s paragraph [0085], with Budish’s
system, which is described starting at paragraph [0086]. See Ans. 8-9.
In rejecting claim 19, the Examiner seems to assert that, in Budish, a
seller mentally determines an acceptable purchase price when the seller is
deciding to accept a buyer’s bid that is lower than the previously set buy
price. Ans. 16-17. The Examiner asserts that the seller has a “goal of being
able to get a sales price that exceeds his sale price by a predetermined sales
margin” in the seller’s mental calculations. Id. at 17. The Examiner then
seems to assert that Budish’s seller would adjust the buy price to match the
buyer’s offers. Id.
However, Budish’s disclosure does not support any of these
assertions. While Budish does describe that the seller can change the set buy
price (see para. [0186]) and also discloses that the seller can accept the
buyer’s offer that is lower than the set buy price (see for example, para.
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[0093]), Budish does not contain any description as to: 1) a seller mentally
calculating an acceptable purchase price based on a predetermined margin
and 2) a seller adjusting a buy price to match a buyer’s offer. Budish is
silent as to why the seller decided to accept a lower offer. Further, Budish’s
system does not require the seller to adjust the buy price to match a buyer’s
offer in order to accept the lower bid. Adjusting of an asking price to match
a bid is describe in Budish as part of the prior art negotiation agent system.
See para. [0085].
Finally, inasmuch as the Examiner may be relying upon Budish’s buy
price to meet the claimed acceptable purchase price, we agree with the
Appellant’s argument (App. Br. 17-19) that the buyer is informed of the buy
price prior to making an offer. See for example, para. [0016].
Therefore, we find that the Examiner fails to establish a prima facie
showing of anticipation, since “[a] claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
Accordingly, the rejection of claim 19, and claims 22 and 23
dependent thereon, under 35 U.S.C. §102(e) as being anticipated by Budish
is reversed.

The rejection of claims 20 and 30 under 35 U.S.C. §103(a) as being
unpatentable over Budish and Yashiro; the rejection of claim 29 under 35
U.S.C. §103(a) as being unpatentable over Budish, Yashiro, and Foo; and
the rejection of claim 21 under 35 U.S.C. §103(a) as being unpatentable
over Budish and Cameron
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These rejections are directed to claims dependent on claim 19, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejections of claims 20, 21, 29, and 30 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.”). We note that the Examiner does not rely upon Yashiro, Foo,
or Cameron to cure the deficiency of Budish at issue above.

DECISION
The decision of the Examiner to reject claims 19-23 and 29-30 is
reversed.

REVERSED

rvb