Ex Parte Liew et al

Board of Patent Appeals and Interferences

Dec 29, 2010

10456410 (B.P.A.I. Dec. 29, 2010)

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.
10/456,410 06/06/2003 Roger Liew ORB-6 6836
26689 7590 12/29/2010
WILDMAN HARROLD ALLEN & DIXON LLP
225 WEST WACKER DRIVE, SUITE 2800
CHICAGO, IL 60606
EXAMINER
SALIARD, SHANNON S
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
12/29/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER LIEW, DAVID SHEMENSKI,
GREG BALL, WARREN NISLEY,
JOHN SOKEL, STEVE HOFFMAN, and LEON CHISM
___________

Appeal 2009-014609
Application 10/456,410
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, 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.
Appeal 2009-014609
Application 10/456,410

2
STATEMENT OF THE CASE
Roger Liew et al. (Appellants) seek our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-5 and 14-20. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
This invention is “a system and method for booking air travel
itineraries on multiple host environments.” Specification 1:6-7.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of booking an air travel itinerary on
one of a plurality of different host ticketing
environments, comprising the steps of:
[A] providing a plurality of host adaptor
modules, each host adaptor module being
configured to interact with one of said host
ticketing environments;
[B] providing a booking engine for determining
an appropriate host ticketing environment for
processing commands based on predefined criteria;
[C] performing a low fare search for air travel
itineraries and displaying search results of air

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 12, 2009) and Reply Brief (“Reply Br.,” filed Jul. 28, 2009),
and the Examiner’s Answer (“Answer,” mailed May 28, 2009).

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travel itineraries from the low fare search;
[D] receiving a command at said booking engine
related to re-pricing said air travel itinerary upon
determining the air travel itinerary selected from
the search results of air travel itineraries;
[E] said booking engine determining a first
appropriate host ticketing environment for
processing the command related to re-pricing the
selected air travel itinerary;
[F] said booking engine forwarding said
command related to re-pricing the selected air
travel itinerary to a first host adaptor module
associated with said first host ticketing
environment;
[G] said first host adaptor module issuing said
command related to re-pricing the selected air
travel itinerary to said first host ticketing
environment;
[H] said first host adaptor module receiving a
response to said command related to re-pricing the
selected air travel itinerary from the first host
ticketing environment; and
[I] said booking engine forwarding said
command related to re-pricing the selected air
travel itinerary to a second host adaptor module
associated with a second host ticketing
environment if said response does not comport
with an expected response, if said response does
comport with the expected response then
information associated with the air travel itinerary
selected is displayed.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Keller
Carberry
Schiff
Parsons
US 2001/0053989 A1
US 2002/0156629 A1
US 2003/0004760 A1
US 2003/0097274 A1
Dec. 20, 2001
Oct. 24, 2002
Jan. 2, 2003
May 22, 2003
The Examiner took official notice “that it is old and well known in the
reservation industry that if a user does not receive an itinerary that is within
a predetermined price range that the user submits another request to the
same host to determine if an itinerary that more closely meets the user’s
criteria is available.” Answer 10. [Hereinafter, Official Notice.]
The following rejections are before us for review:
1. Claims 1 and 2 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Carberry, Parsons, and Chen.
2. Claim 3 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Carberry, Parsons, and Official Notice.
3. Claim 4 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Carberry, Parsons, Official Notice, and
Schiff.
4. Claim 5 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Carberry, Parsons, Official Notice, Schiff,
and Chen.
5. Claim 14 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Carberry and Keller.
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6. Claims 15-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Carberry, Keller, and Chen.

ISSUES
The first issue is whether claim 1 is unpatentable under 35 U.S.C.
§ 103(a) over Carberry, Parsons, and Chen. Specifically, the issue turns on
whether Parsons teaches a command related to re-pricing the air travel
itinerary upon determining the air travel itinerary selected from the search
results of air travel itineraries as required by steps D-I above. The rejections
of claims 2-5 under 35 U.S.C. § 103(a) also turn on this issue.
The second issue is whether claim 14 is unpatentable under 35 U.S.C
§ 103(a) over Carberry and Keller. Specifically, the issue turns on whether
Keller teaches a command related to re-pricing the air travel itinerary upon
determining the air travel itinerary selected from the search results of air
travel itineraries as required by steps D-I. The rejections of claims 15-20
under 35 U.S.C. § 103(a) also turn on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) 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).
Parsons
1. Parsons’ paragraph [0044] states:
A negative determination at decision block 414
means that the lower fare is older than the newer
fare and will only exist until the originating
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database performs its next update. Generally, this
time period is less than one hour. Therefore,
progression flows to process block 416 where the
fare is tagged as a temporary fare so that the end
user can be notified that the fare will not be
available much longer. Progression then flows to
process block 418 where the fare is validated.

2. Parsons’ paragraph [0045] states:
Upon a positive determination at decision block
414, flow progresses to process block 418 where
the fare is validated. For example, as previously
discussed, certain airports within close proximity
to one another potentially cause glitches in the
reservation systems. Therefore, if an origin or
destination location falls within one of the
locations having potential problems with airports,
the system suitably validates the fare by querying
the originating RS for the number of flights on the
day of the fare from the selected origin airport to
the selected destination airport. If the originating
RS returns zero nonstops, zero onestops, and zero
connection flights between the two airports, the
fare is invalid. Otherwise, the fare is valid. After
returning from a query and validating at least one
fare, progression flows to process 420 where fare
selection occurs.

Keller
3. Keller’s paragraph [0038] states:
If the search results fail to find an airfare that
meets or is lower than the consumer’s target price,
the booking server at step 405 selects the two
lowest fare and the lowest fare shop fare (i.e.,
published fare), and displays them along with the
itinerary to the consumer. The server at step 406
then prompts the consumer (client) as to the
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consumer’s desire to have the server keep
searching for possible lower airfares for the subject
itinerary.

4. Keller’s paragraph [0039] states:
According to the invention, the server will store
the consumer's itinerary together with the
consumer's personal information including the
consumer's e-mail address, and will request
additional searches for a predetermined number of
days subsequent to the original search. It is well
known in the airline industry that changes in flight
fares, conditions, restrictions, etc. are made daily
and literally tens of thousands (or more) of fare
changes are made and published each day.

ANALYSIS
The rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as being
unpatentable over Carberry, Parsons, and Chen.
Claims 1 and 2
The Appellants and the Examiner dispute centers on the meaning of
“re-pricing” as recited in the limitations labeled D-I above and whether
Parsons’ description of validating a fare in paragraphs [0044] and [0045]
teaches these limitations. See App. Br. 15-19, Reply Br. 4-5, and Answer
22. The Examiner’s position is that “re-pricing” is defined as “re-checking
to see if a fare is valid” based on the Specification (Answer 18), and given
this definition, the Examiner found that Parsons’ description of validating an
air travel itinerary by determining there are flights on the selected day
between the selected airports teaches the recited limitations related to re-
pricing an air travel itinerary (Answer 18-20).
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During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed.Cir.1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
We find that the Examiner has unreasonably broadly construed “re-
pricing” to encompass the Parsons’ description of validating the fare.
Paragraphs [0044] and [0045] of Parsons describe validating a flight
itinerary by determining the number of flights on the day of the fare from the
selected origin airport to the selected destination airport. FF 1-2. This does
not teach “re-pricing” as asserted by the Examiner. The price of the selected
flight is not re-priced. Therefore, we find that the Examiner has failed to
establish a prima facie showing of obviousness. Accordingly, we find that
the Appellants have overcome the rejection of claim 1, and claim 2,
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dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over
Carberry, Parsons, and Chen.

The rejection of claim 3 under 35 U.S.C. § 103(a) as being unpatentable
over Carberry, Parsons and Official Notice.
Like claim 1, claim 3 recites a method with steps similar to steps D-H
of claim 1. In rejecting claim 3, the Examiner again relies upon Parsons to
teach re-pricing of a selected itinerary. Answer 9. For the same reasons as
discussed above with regards to the rejection of claim 1, we find that the
Appellants have overcome the rejection of claim 3 under 35 U.S.C. § 103(a)
as being unpatentable over Carberry, Parsons, and Official Notice.

The rejection of claim 4 under 35 U.S.C. § 103(a) as being unpatentable
over Carberry, Parsons, Official Notice, and Schiff.
Claim 4 depends upon claim 3, whose rejection we have reversed
above. For the same reasons, we will not sustain the rejections of claim 4
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 did not
rely upon Schiff to cure the deficiency in the rejection of claim 3 discussed
above. See Answer 10-11. Accordingly, we find that the Appellants have
overcome the rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Carberry, Parsons, Official Notice, and Schiff.

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The rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable
over Carberry, Parsons and Official Notice, Schiff, and Chen.
Claim 5 depends from claim 4 and indirectly depends upon
independent claim 3, whose rejection we have reversed above. For the same
reasons, we will not sustain the rejections of claim 5 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 did not rely upon Chen to cure
the deficiency in the rejection of claim 3 discussed above. See Answer 11-
12. Accordingly, we find that the Appellants have overcome the rejection of
claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Carberry,
Parsons, Official Notice, Schiff, and Chen.

The rejection of claims 14 under 35 U.S.C. § 103(a) as being unpatentable
over Carberry and Keller
Claim 14 recites “the application server configured to determine that
an air travel itinerary has been selected by a user from a plurality of air
travel itineraries displayed as search results, the application server sends a
command to re-price the selected air travel itinerary to the booking engine.”
The Appellants argue that Keller does not teach an application sever having
a structure with such a configuration. App. Br. 26-27. The Examiner relies
upon paragraphs [0038] and [0039] of Keller to teach this limitation.
Answer 29-30.
We agree with the Appellants. See App. Br. 27. Claim 14 requires
that the itinerary that is being re-priced is the “selected air travel itinerary.”
The selected air travel itinerary was selected by the user from a plurality of
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air travel itineraries displayed as search results. Paragraphs [0038] and
[0039] do not teach re-pricing a selected air travel itinerary. These passages
instead describe continuing to request searches, if the consumer does not
select one of the displayed air travel itineraries. See FF 3-4.
Accordingly, we find that the Appellants have overcome the rejection
of claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Carberry
and Keller.

The rejection of claims 15-20 under 35 U.S.C. § 103(a) as being
unpatentable over Carberry, Keller, and Chen.
Claims 15-20 directly or indirectly depend upon independent claim
14, whose rejection we have reversed above. For the same reasons, we will
not sustain the rejections of claims 15-20 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 did not rely upon Chen to cure
the deficiency in the rejection of claim 14 discussed above. See Answer 14-
17. Accordingly, we find that the Appellants have overcome the rejection of
claim 15-20 under 35 U.S.C. § 103(a) as being unpatentable over Carberry,
Keller, and Chen.

DECISION
The decision of the Examiner to reject claims 1-5 and 14-20 is
reversed.
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Application 10/456,410

12
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) (2010).

REVERSED

mev

WILDMAN HARROLD ALLEN & DIXON LLP
225 WEST WACKER DRIVE, SUITE 2800
CHICAGO IL 60606