Ex Parte Leventhal

Patent Trial and Appeal Board

Sep 17, 2013

10755569 (P.T.A.B. Sep. 17, 2013)

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.
10/755,569 01/12/2004 Jeffrey P. Leventhal 123579.0105 9161
27557 7590 09/17/2013
BLANK ROME LLP
WATERGATE
600 NEW HAMPSHIRE AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
09/17/2013 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 JEFFREY P. LEVENTHAL
____________________

Appeal 2012-007264
Application 10/755,569
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12, 14-27, 29, 30, and 37-45. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on September 12, 2013.

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellant’s invention relates generally to a system and method for
managing requests for services (Spec. 1, ll. 11-12).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A third party system for managing service requests
comprising a system memory storing executable instructions
and a processing unit for executing the instructions, wherein
executing the instructions causes the third party system to
perform steps comprising:
populating a registry with a plurality of service providers;
initiating an electronic transfer of funds from an account
of a service requestor to an account maintained by the third
party system based on at least one of a request and
authorization from the service requestor;
creating a work order from a service request received
from the service requestor, the work order specifying a needed
service and a spend limit for the needed service;
routing the work order to one or more service providers
selected from the registry for the purpose of having one or more

1 Our decision will make reference to Appellant’s Appeal Brief (“App.
Br.,” filed December 14, 2011) and Reply Brief (“Reply Br.,” filed April 2,
2012), and the Examiner’s Answer (“Ans.,” mailed February 2, 2012).
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of the selected service providers indicate an acceptance of at
least a portion of the needed service;
providing functionality for the one or more service
providers selected from the registry to request from the service
requestor an increase in the spend limit prior to beginning
performance of the needed service, the request for the increase
in the spend limit being made via message exchanges through
the third party system;
providing functionality for the service requestor to
authorize the requested increase in the spend limit;
assigning at least a portion of the needed service to an
assigned service provider selected from the registry;
annotating acceptance, assignment, and completion of the
accepted portion of the needed service; and
initiating an electronic transfer of at least a portion of the
funds in the account maintained by the third party system to an
account of the assigned service provider upon receipt of the
annotated acceptance, assignment, and completion and based on
at least one of a request and authorization from the service
requestor.

THE REJECTIONS
The following rejections are before us for review:
Claims 1-12, 14-27, 29, 30, and 37-45 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claims 1-4, 6-10, 12, 14-19, 22-25, 27, 29, 30, and 37-45 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over dePinto
(US 2002/0194112 A1, pub. Dec. 19, 2002) in view of McCormick
(US 2002/0040352 A1, pub. Apr. 4, 2002).
Claims 5, 11, and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over dePinto in view of McCormick and further in view of
Miles (US 2002/0111842 A1, pub. Aug. 15, 2002).
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Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over dePinto in view of McCormick and further in view of
Beaudoin (US 7,096,193 B1, iss. Aug. 22, 2006).

ANALYSIS
Written Description
We are not persuaded by Appellant’s arguments that the Examiner
erred in rejecting claims 1-12, 14-27, 29, 30, and 37-45, which are all the
pending claims on appeal, for failing to comply with the written description
requirement, as set forth in 35 U.S.C. § 112, first paragraph (App. Br. 10-12
and Reply Br. 1-2).
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566
(Fed. Cir. 1997) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991)). While there is no in haec verba requirement, claim
limitations must be supported in the specification through express, implicit,
or inherent disclosure. The fundamental factual inquiry is whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, an applicant was in possession of the invention
as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64.
Here, independent claims 1, 15, and 30 recite “providing functionality
for the one or more service providers . . . to request from the service
requestor an increase in the spend limit prior to beginning performance of
the needed service . . . .” Yet this functionality is not described in the
Specification in a way that would reasonably convey to one skilled in the
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relevant art that Appellant, at the time the application was filed, had
possession of the claimed invention (Ans. 4-5 and 13-15).
As the Examiner observes, requesting an increase in the spend limit is
not described in the written Specification at all. Instead, this concept only
appears in the flow diagrams of Figures 2A-2D, where the request for an
increased spend limit is shown as occurring after performance of the needed
service has begun, e.g., the technician judges whether the spend limit is
sufficient “[a]s the Work Order is performed” (see Spec. fig. 2B).
The Specification does not “convey[ ] with reasonable clarity to those
skilled in the art” that Appellant was in possession of the claimed invention,
including requesting an increase in the spend limit prior to beginning
performance of the needed service, at the time the application was filed.
See Vas-Cath, Inc., 935 F.2d at 1563-64. Therefore, we will sustain the
Examiner’s rejection of claims 1-12, 14-27, 29, 30, and 37-45 under
35 U.S.C. § 112, first paragraph.
Obviousness
Independent claims 1, 15, and 30
Appellant argues independent claims 1, 15, and 30 together (App.
Br. 12). We select claim 1 as representative. Claims 15 and 30 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant first argues that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because dePinto fails to teach or suggest
“providing functionality for the one or more service providers . . . to request
. . . an increase in the spend limit,” as recited in claim 1 and, in fact, teaches
away from such functionality (App. Br. 12-13). That argument is not
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persuasive at least because the Examiner relies on McCormick, not dePinto,
as disclosing this feature (Ans. 6 and 15).
There also is no basis for any finding of a “teaching away.” Appellant
argues that dePinto describes that “service providers only have the choice to
‘accept and perform the job in the job request’ or not accept it because
‘higher rated [service providers] may not be willing to accept a job at the
price the [service requestor] is willing to pay’ dePinto at ¶ [0208]” (App.
Br. 12-13). But Appellant’s argument is not persuasive because Appellant
does not point to any passage in dePinto that criticizes, discredits, or
otherwise discourages providing functionality for a service provider to
request a price increase from a service requester. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (A teaching away occurs when a reference
discourages one skilled in the art from following the claimed path, or when
the reference would lead one skilled in the art in a direction divergent from
the path that was taken by the applicant); see also In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of the
alternatives when the disclosure does not criticize, discredit, or otherwise
discourage the solution claimed).
Appellant’s further arguments that McCormick fails to disclose or
suggest allowing a service provider to request an increase in the spend limit
from the service requester, i.e., “providing functionality for the one or more
service providers . . . to request from the service requestor an increase in the
spend limit,” are likewise unpersuasive.
Appellant maintains that McCormick adopts its own definition of the
terms “negotiable” and “negotiation” to describe trading processes that do
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not allow the service provider to request an increase in a price set by the
customer (App. Br. 14-15). However, we agree with the Examiner that the
“negotiation in McCormick is a back-and-forth messaging of pricing and
other terms of service,” consistent with the commonly understood meaning
of that term (Ans. 15-16). In this regard, we note, in particular, that
McCormick describes that:
[T]he Customer 2025 can enter into individual trading sessions
with multiple Service Providers 2045. These trading sessions
provide for an unlimited number of offers/counter offers
between Customer 2025 and Service Provider 2045 in trying to
agree on the terms surrounding the inclusion of a product
within the Customer’s 2025 final Solution.
(McCormick, para. [0496]).
We also are not persuaded of error on the part of the Examiner by
Appellant’s further argument that none of the offers and counter-offers in
McCormick includes functionality for a service provider to request an
increase in the spend limit set by a service requestor (App. Br. 16-17).
A service provider’s counter-offer, in and of itself, constitutes a request by
the service provider for an increase in the spend limit, i.e., the price set forth
in the requestor’s offer.
Moreover, as the Examiner observes at pages 16-17 of the Answer,
McCormick provides a specific example in paragraphs [1258] and [1259] in
which a customer posts a product need with a price of $100 and the service
provider responds with two offers – one for $100 with matching product
characteristics as specified by the customer and a second for $110 with
additional product features, i.e., a request for an increase in the spend limit.
Appellant argues that the higher price (i.e., $110) is “a substitute
price for a substitute product rather than a request for an increased price
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for the requested product” (App. Br. 17). But, as the Examiner notes, both
the original solution and more expensive solution are disclosed as meeting
the requestor’s needs (Ans. 17). There also is nothing in claim 1 that
requires the original and renegotiated service to consist of the exact same
service and/or product descriptions (Ans. 17).
Finally, Appellant’s argument that the combination of dePinto and
McCormick is inappropriate cannot be sustained at least because it is
predicated on a finding that dePinto teaches away from the claimed
invention (App. Br. 17-18). As set forth above, there is no basis for a
finding that dePinto teaches away from allowing a service provider to
request an increase in the price set by a service requestor.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 15 and 30, which stand or fall with claim 1.
Dependent claims 2-12, 14, 16-27, 29, and 37-45
Appellant did not present any arguments for the separate patentability
of dependent claims 2-12, 14, 16-27, 29, and 37-45 except to assert that the
secondary references relied on in rejecting claims 5, 11, 20, 21, and 26 do
not cure the alleged deficiencies of dePinto and McCormick, and that all of
the dependent claims are allowable based on their dependency on
independent claims 1, 15, or 30 (App. Br. 18-20).
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting claims 1, 15, and 30 under 35 U.S.C. § 103(a).
Therefore, we will sustain the Examiner’s rejections of claims 2-12, 14,
16-27, 29, and 37-45 under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejection of claims 1-12, 14-27, 29, 30, and 37-45
under 35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner’s rejections of claims 1-12, 14-27, 29, 30, and 37-45
under 35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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