Ex Parte Marks et al

Patent Trial and Appeal Board

Sep 13, 2013

12009033 (P.T.A.B. Sep. 13, 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.
12/009,033 01/15/2008 Peter Marks PA4513US 3464
22830 7590 09/16/2013
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
09/16/2013 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 PETER MARKS
and DUANE P. O’BRIEN
____________

Appeal 2011-008378
Application 12/009,033
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008378
Application 12/009,033

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-20.1 We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to real-time pricing of shipping
vendors (Spec., para. [0002]).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method for real-time pricing of shipping
vendors, the method comprising:
maintaining vendor information in memory concerning a
plurality of shipping vendors, the vendor information
concerning querying each shipping vendor;
querying each of the plurality of shipping vendors with
one or more shipping specifications, each query being specific
to the shipping vendor;
receiving real-time pricing information associated with
the one or more shipping specifications from one or more of the
plurality of shipping vendors, the real-time pricing information
including a price generated by the one or more of the plurality
of shipping vendors in response to the query;
executing instructions stored in memory, wherein
execution of the instructions by a processor generates a menu
display of the received real-time pricing information from the
one or more of the plurality of shipping vendors;
receiving a designation concerning a chosen shipping
vendor, the shipping vendor chosen from the menu display; and
generating a shipping label specific to the chosen
shipping vendor based on at least the one or more shipping
specifications.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 20, 2010) and the Reply Brief (“Rep. Br.,” filed
February 4, 2011), and the Examiner’s Answer (“Ans.,” mailed December 6,
2010).
Appeal 2011-008378
Application 11/935,150

3

Claims 1-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Williams (US Pub. 2002/0032573, pub. Mar. 14, 2002)
and Xiao (US Pub. 2007/0043651, pub. Feb. 22, 2007).

We REVERSE.
ANALYSIS
We are persuaded the Examiner erred in asserting that a combination
of Williams and Xiao discloses or suggests “querying each of the plurality of
shipping vendors with one or more shipping specifications, each query being
specific to the shipping vendor,” as recited in independent claim 1 (App. Br.
13-15; Reply Br. 3-4) (emphasis omitted). Independent claims 9 and 16
recite similar limitations. The Examiner asserts that “databases [22]
containing information about each supported Carrier,” disclosed at
paragraph [0336] of Williams, corresponds to the recited shipping vendor
(Ans. 4, 10-11). We disagree. Even if we were to agree with the Examiner
that any database at any location having some relationship with the shipping
vendor was, in effect, the recited shipping vendor, paragraph [0338] of
Williams discloses that database 22 is a part of a system that “does not use
any carriers’ Application Program Interface (API) functions to get rate
information. All of carrier rate data is stored in the System database 22.”
Id. In other words, it does not appear that database 22 has any relationship
with the shipping vendor. While database 22 may store information about
the shipping vendor, possessing information alone is not sufficient to make
database 22 the equivalent of the recited shipping vendor, especially where
the Examiner has not shown how database 22 acquired the information about
the shipping vendor, given that the claims explicitly recite “receiving real-
Appeal 2011-008378
Application 11/935,150

4
time pricing information associated with the one or more shipping
specifications from one or more of the plurality of shipping vendors, the
real-time pricing information . . . in response to the query.” App. Br.,
Claims App’x, Reply Br. 3 (emphasis omitted).
DECISION
The decision of the Examiner to reject claims 1-20 is REVERSED.

REVERSED

rvb