Ex Parte Lopez et al

Board of Patent Appeals and Interferences

Mar 30, 2011

10664820 (B.P.A.I. Mar. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUS LOPEZ and JOEL R. SPIEGEL
____________

Appeal 2009-006281
Application 10/664,820
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-006281
Application 10/664,820

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STATEMENT OF THE CASE
Gus Lopez, et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1, 3-10, 62, 65, 66, and 68-71. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We AFFIRM.1
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method in a computer system for generating transaction price
data for an item, the method comprising:
providing an item classification/attribute mapping data structure
that maps item classifications to attributes, each item classification
mapping to a set of attributes specific to that item classification;
receiving a selection of an item classification from a user's
computer system;
identifying the set of attributes specific to the selected item
classification by retrieving the set of attributes from the item
classification/attribute mapping data structure;
providing a display of an indication of the identified attributes
to the user's computer system;
receiving an input value for at least one attribute within the set
of identified attributes from the user's computer system;
retrieving records of transactions for items that are classified
within the selected item classification and that match the received
input value of the one or more identified attributes;
analyzing the retrieved records to generate transaction price
data for the item;
and
sending to the user's computer system the generated transaction
price data as a suggested bid price in an auction.

The Examiner relies on the following as evidence of unpatentability:

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sep. 6, 2007) and Reply Brief (“Reply Br.,” filed Feb. 13, 2008),
and the Examiner’s Answer (“Answer,” mailed Mar. 20, 2008).
Appeal 2009-006281
Application 10/664,820

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Mori
Ching
Odom
Fisher
Walker
Boesjes

US 6,044,363
US 6,078,901
US 6,393,426 B1
US 6,411,960 B1
US 6,415,264 B1
US 6,799,165 B1

Mar. 28, 2000
Jun. 20, 2000
May 21, 2002
Jun. 25, 2002
Jul. 2, 2002
Sep. 28, 2004

Claims 1, 3, 6, 8, 9, 62, 65, 66, and 68-71 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Fisher and Walker.
Claim 4 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Fisher, Walker, and Mori.
Claim 5 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Fisher, Walker, and Ching.
Claim 7 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Fisher, Walker, and Boesjes.
Claim 10 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Fisher, Walker, and Odom.

ISSUE
Did the Examiner err in rejecting the claims under 35 U.S.C. §103(a)
as being unpatentable over at least Fisher and Walker because (a) Walker's
price data is sent to a seller's rather than a user's computer and (b) Walker's
price data is not a "suggested bid price in an auction" (claim 1)?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Examiner’s
Answer. Additional findings of fact may appear in the Analysis below.
Appeal 2009-006281
Application 10/664,820

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ANALYSIS
The rejection of claims 1, 3, 6, 8, 9, 62, 65, 66, and 68-71 under 35 U.S.C.
§103(a) as being unpatentable over Fisher and Walker.
The Appellants argued claims 1, 3, 6, 8, 9, 62, 65, 66, and 68-71 as a
group (App. Br. 6-12). We select claim 1 as the representative claim for this
group, and the remaining claims 1, 3, 6, 8, 9, 62, 65, 66, and 68-71 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner's position is that Fisher discloses all the claim
limitations but for the last 4 steps recited in claim 1 (i.e., the "receiving,"
"retrieving," "analyzing," and "sending" steps) for which Walker is relied
upon. Answer 4-5. According to the Examiner it would have been obvious
to one of ordinary skill in the art to combine the Fisher and Walker
disclosures and thereby arrive at the claimed invention.
The Appellants disagree for various reasons.
"First, Walker's price data is sent to the seller's computer, while
Appellants' transaction price data is sent to the user's (i.e., buyer's) computer
system." App. Br. 9. We are not persuaded by this argument. We do not see,
and the Appellants do not fully explain, the difference between Walker's
"seller" computer and the claimed "user" computer. Simply identifying a
computer as a "user" computer does not, without more in terms of structure,
distinguish it from a "seller" computer. Moreover, the fact that someone
would use Walker's "seller" computer necessarily means it is also an "user"
computer as that claim term is reasonably broadly construed. (We find no
basis in the claim or in the Specification for narrowing the scope of the
claim term "user" to "buyer" as the Appellants have argued.)
"Second, Walker's price data does not correspond to Appellants'
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Application 10/664,820

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‘suggested bid price in an auction.’" App. Br. 9. See also Reply Br. 4-5. We
are not persuaded by this argument either. We do not see, and the Appellants
do not fully explain, the difference between Walker's price data and "the
generated transaction price data as a suggested bid price in an auction"
(claim 1). Simply identifying price data as being "a suggested bid price in
an auction" does not, without more in terms of structure, distinguish it from
Walker's price data. To the extent the Appellants mean to argue that the data
generated via the claimed method is provided with sufficient information for
one of ordinary skill in the art to understand that the claimed price data is "a
suggested bid price in an auction," the argument would nevertheless still not
be a persuasive one because, absent evidence of a structural distinction (of
which there is none on this record), the difference between Walker's price
data and the claimed price data as a "suggested bid price in an auction"
would merely be one of nonfunctional descriptive material which, as such,
would not be patentably consequential.
Lastly, the Appellants argue that the Examiner has failed to provide an
apparent reasoning to combine the Fisher and Walker disclosures to arrive at
the claimed method. App. Br. 12. We disagree. The Examiner addressed
every limitation in the claim and showed where in the cited prior art, via
column and line number, where these limitations are disclosed. Then the
Examiner explained why one of ordinary skill in the art would have found it
obvious to the combine the disclosures to arrive at the claimed method. See
Answer 4-5. We are satisfied the Examiner has made out a prima facie case
of obviousness with the requisite reasoning.
Thus, the Appellants have the burden on appeal to the Board to
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demonstrate error in the Examiner's position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)). In that regard, the Appellants simply criticize
the Examiner's explanation of why one of ordinary skill in the art would
have found it obvious to the combine the disclosures to arrive at the claimed
method as being "not a reasoned explanation" (App. Br. 12). But the logical
underpinning of that explanation has not been challenged. Furthermore, it
remains that the Examiner found, without error, all the elements of the
claimed method to be disclosed in the cited prior art. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 415-416 (2007). In that regard, there is insufficient evidence
on the record of an unexpected result from the combination of these familiar
elements as claimed.

The rejection of claim 4 under 35 U.S.C. §103(a) as being unpatentable over
Fisher, Walker, and Mori.
The rejection of claim 5 under 35 U.S.C. §103(a) as being unpatentable over
Fisher, Walker, and Ching.
The rejection of claim 7 under 35 U.S.C. §103(a) as being unpatentable over
Fisher, Walker, and Boesjes.
The rejection of claim 10 under 35 U.S.C. §103(a) as being unpatentable
over Fisher, Walker, and Odom.
We also shall sustain the standing 35 U.S.C. § 103 rejections of
Appeal 2009-006281
Application 10/664,820

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dependent claims 4, 5, 7, and 10 since the Appellants have not challenged
such with any reasonable specificity, thereby allowing claims 4, 5, 7, and 10
to stand or fall with parent claim 1 (see In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987)). The Appellants have relied on the arguments raised in
challenging the rejection of claim 1, which arguments have been found
unpersuasive as to error in the rejection. App. Br. 13-15.

DECISION
The rejection of claims 1, 3-10, 62, 65, 66, and 68-71 is affirmed.

AFFIRMED.

MP