10898396 (B.P.A.I. Mar. 20, 2011)

Ex Parte McKelvey

Board of Patent Appeals and InterferencesMar 20, 2011

10898396 (B.P.A.I. Mar. 20, 2011)

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. 10/898,396 07/23/2004 Nathan W. McKelvey CHARTER-10260 4481 23535 7590 03/21/2011 MEDLEN & CARROLL, LLP 101 HOWARD STREET SUITE 350 SAN FRANCISCO, CA 94105 EXAMINER AIRAPETIAN, MILA ART UNIT PAPER NUMBER 3625 MAIL DATE DELIVERY MODE 03/21/2011 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 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte NATHAN W. MCKELVEY 8 ___________ 9 10 Appeal 2009-011597 11 Application 10/898,396 12 Technology Center 3600 13 ___________ 14 15 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 16 MOHANTY, Administrative Patent Judges. 17 FETTING, Administrative Patent Judge. 18 DECISION ON APPEAL1 19 20 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 2009-011597 Application 10/898,396 2 STATEMENT OF THE CASE2 1 2 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed June 30, 2008) and the Examiner’s Answer (“Ans.,” mailed December 10, 2008), and Final Rejection (“Final Rej.,” mailed January 29, 2008). Nathan W. McKelvey (Appellant) seeks review under 35 U.S.C. § 134 2 (2002) of a final rejection of claims 1-53, the only claims pending in the 3 application on appeal. We have jurisdiction over the appeal pursuant to 4 35 U.S.C. § 6(b) (2002). 5 The Appellant invented a system and method for a private charter 6 aircraft auction. Specification 1:6-7. 7 An understanding of the invention can be derived from a reading of 8 exemplary claim 22, which is reproduced below [bracketed matter and some 9 paragraphing added]. 10 22. A method for auctioning private charter aircraft using 11 aircraft availability information, where a customer enters a trip 12 itinerary request online and aircraft providers submit bids on 13 the trip itinerary, the method comprising: 14 [1] receiving, at an online auction interface, a trip itinerary 15 request from a customer; 16 [2] obtaining, from an aircraft availability database 17 comprising aircraft availability information, a set of available 18 Appeal 2009-011597 Application 10/898,396 3 aircraft and corresponding available aircraft providers to serve 1 said trip itinerary request; 2 [3] eliminating some of said set of available aircraft and 3 providers based on suitability criteria to produce a set of 4 candidate aircraft providers and a set of eliminated aircraft 5 providers; 6 [4] alerting said candidate aircraft providers without alerting 7 said eliminated aircraft providers; and 8 [5] receiving, at an online bidding interface, a set of bid 9 submissions from said candidate aircraft providers voluntarily 10 choosing to respond to said alert by accessing said online 11 bidding interface. 12 13 The Examiner relies upon the following prior art: 14 Cornwell US 2002/0013718 A1 Jan. 31, 2002 Britten US 2002/0116307 A1 Aug. 22, 2002 Rosenblatt US 6,711,548 B1 Mar. 23, 2004 Scott US 2004/0073507 A1 Apr. 15, 2004 15 Claims 1-27 and 30-53 stand rejected under 35 U.S.C. § 103(a) as 16 unpatentable over Scott and Cornwell. 17 Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 18 Scott, Cornwell, and Britten. 19 Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 20 Scott, Cornwell, and Rosenblatt. 21 22 Appeal 2009-011597 Application 10/898,396 4 ISSUES 1 The issue of whether the Examiner erred in rejecting claims 1-27 and 30-2 53 under 35 U.S.C. § 103(a) as unpatentable over Scott and Cornwell turns 3 on whether Scott and Cornwell describe limitations [1], [3], and [4] of claim 4 22 and whether the Appellant’s declaration that provides secondary evidence 5 supports a determination of nonobviousness. 6 The issue of whether the Examiner erred in rejecting claim 28 under 35 7 U.S.C. § 103(a) as unpatentable over Scott, Cornwell, and Britten turns on 8 whether the Appellant’s arguments in support of claim 22 are found to be 9 persuasive. 10 The issue of whether the Examiner erred in rejecting claim 29 under 35 11 U.S.C. § 103(a) as unpatentable over Scott, Cornwell, and Rosenblatt turns 12 on whether the Appellant’s arguments in support of claim 22 are found to be 13 persuasive. 14 15 FACTS PERTINENT TO THE ISSUES 16 The following enumerated Findings of Fact (FF) are believed to be 17 supported by a preponderance of the evidence. 18 Facts Related to the Prior Art 19 Scott 20 01. Scott is directed to conducting commercial transactions and 21 auctions. Scott ¶ 0001. Scott describes that the transaction 22 method begins with an organization or a buyer identifying an item 23 Appeal 2009-011597 Application 10/898,396 5 to purchase and preparing a request for quote (RFQ) for the item. 1 Scott ¶’s 0033, 0035, and 0037. 2 02. Buyers and pole personnel identify suppliers for participating in 3 the auction. Scott ¶ 0041. The most obvious suppliers are those 4 that have already been “qualified.” Scott ¶ 0041. Suppliers are 5 approved to participate in the auction or can be receive a 6 preapproval by submitting additional information. Scott ¶ 0042. 7 Qualification is a process of validating that a specific item or 8 material a supplier proposes to provide under a bid is acceptable. 9 Scott ¶ 0045. 10 03. A team then schedules an auction. Scott ¶’s 0039 and 0050. 11 The team ensures that the suppliers have the web-tools and access 12 to the auction to participate in the auction. Scott ¶ 0039. The 13 buyer prepares a draft purchase order and/or an RFQ to set the 14 requirements of the purchase order and distributes the RFQ to 15 identified suppliers. Scott ¶’s 0052-0054 and 0057. The results of 16 the auction are tabulated and the buyer determines which supplier 17 orders are to be filled. Scott ¶ 0059. 18 Cornwell 19 04. Cornwell is directed to a computerized on-line aircraft charter 20 reservation and scheduling method and system that enable 21 consumers to specify an itinerary, to either specify a price or 22 receive a price from that itinerary for at least one aircraft and 23 reserve an aircraft for completing the specified itinerary. 24 Cornwell ¶ 0001. Upon the consumer selecting an aircraft, the 25 Appeal 2009-011597 Application 10/898,396 6 user is enabled to request a reservation. Cornwell ¶ 0047. The 1 system automatically notifies and confirms this reservation by 2 electronic means. Cornwell ¶ 0047. An email containing the 3 terms and conditions of the reservation is also sent to the charter 4 operator. Cornwell ¶ 047. 5 05. Information concerning a plurality of charter aircrafts is stored 6 and maintained in a character aircraft information database. 7 Cornwell ¶ 0011. An itinerary request is received from a user and 8 a suitable charter aircraft is identified using the received itinerary 9 and aircraft information. Cornwell ¶’s 0012-0013. 10 06. The system further eliminates charter aircrafts that have a 11 negative status, which includes aircrafts having inappropriate 12 flight characteristics and the location of the aircraft. Cornwell ¶ 13 0013. Aircrafts with a positive status are identified and selected. 14 Cornwell ¶ 0013. 15 Britten 16 07. Britten is directed to advertising on the sides of trucks, where 17 the advertisements are in the form of a banner that is affixed to the 18 side of the truck. Britten ¶ 0001. Britten describes a system 19 where truck body owners manage a fleet of trucks that are 20 available for advertising and advertisers can access truck body 21 information to purchase advertising space. Britten ¶’s 0026-0027. 22 Britten describes the use of a database that includes data about the 23 truck body owner, including the name, address, and contact 24 information. Britten ¶ 0024. 25 Appeal 2009-011597 Application 10/898,396 7 Rosenblatt 1 08. Rosenblatt is directed to an air travel flight scheduling system 2 best accessed using a distributed computer network. Rosenblatt 3 1:9-12. 4 5 ANALYSIS 6 Claims 1-27 and 30-53 rejected under 35 U.S.C. § 103(a) as 7 unpatentable over Scott and Cornwell 8 The Appellant first contends that Scott is non-analogous art and the 9 Examiner has failed to provide a motivation to combine Scott and Cornwell. 10 App. Br. 9-10 and 12. The Appellant specifically argues that Scott is not 11 reasonably pertinent to the problem the claimed invention seeks to solve. 12 App. Br. 9. We disagree with the Appellant. Scott describes a system for 13 receiving a request for a product and creating an auction for suppliers to 14 compete to provide that product to the buyer. FF 01-03. The claimed 15 invention is also directed towards creating an auction for suppliers of charter 16 aircrafts to compete to provide service to the customers. Although the 17 claimed invention is directed towards private charter aircrafts, the claimed 18 invention is also directed towards an auctioning method. Since Scott is 19 concerned with the aspects of the claimed invention directed towards 20 auctioning products and services, Scott is reasonably pertinent to the 21 problem the claimed invention seeks to solve. Cornwell is directed towards 22 providing identifying and selecting charter aircraft services. FF 04. Since 23 Scott describes a system that auctions products and services and Cornwell 24 Appeal 2009-011597 Application 10/898,396 8 describes a specific service, a person with ordinary skill in the art would 1 have found it obvious to combine Scott and Cornwell and such a 2 combination would have predictable results. The Examiner further found 3 that a person with ordinary skill in the art would have found it advantageous 4 to combine Scott and Cornwell in order to rapidly and easily research charter 5 aircraft services. Ans. 4-5. The strongest rationale for combining references 6 is a recognition, expressed or implied in the prior art or drawn from a 7 convincing line of reasoning based on established scientific principles or 8 legal precedent, that some advantage or expected beneficial result would 9 have been produced by their combination. In re Sernaker, 702 F.2d 989, 10 994-95 (Fed. Cir. 1983). As such, the Examiner explicitly articulates a 11 rational underpinning to support the Examiner’s finding of obviousness. 12 The Appellant further argues that a person with ordinary skill in the art 13 of providing character air travel would not look to how an individual who is 14 purchasing items for production handles suppliers, as supported by the 15 Declaration by Nathan W. McKelvy. App. Br. 10 and Declaration ¶ 7. 16 However, as discussed supra, a person with ordinary skill in the art of 17 providing charter air travel through the use of auctions would look to how an 18 individual procures items for production through the use of auctions. The 19 Declaration of Nathan W. McKelvey provides opinion and not factual 20 evidence as to whether the Scott and Cornwell are properly combined. 21 Declaration ¶ 7. 22 While objective factual evidence going towards a § 23 103 determination is preferable to statements of opinion on the 24 issue, the nature of the matter sought to be established, as well 25 as the strength of the opposing evidence, must be taken into 26 consideration in assessing the probative value of expert opinion. 27 Appeal 2009-011597 Application 10/898,396 9 In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As such, the Declaration is not 1 found to be persuasive on this issue. 2 The Appellant further contends that Scott and Cornwell fail to describe 3 limitations [1] [3], and [4] of claim 22 and as recited by independent claims 4 1, 45, and 52. App. Br. 10-11 and 13. The Appellant specifically argues 5 that the Examiner has misconstrued the term “customer” as recited in the 6 claims. We disagree with the Appellant. Limitation [1] requires receiving 7 an itinerary request from a customer. The Specification and the Claims fail 8 to further limit the scope of the term “customer.” As such, the Examiner 9 construction of a customer to encompass a person that purchases a product 10 or service (Final Rej. 10) is both reasonable and consistent with the claimed 11 invention; and it is in keeping with its the plain and ordinary meaning. Scott 12 describes that a buyer identifies a needed item and starts the process for 13 procuring that item through an auction. FF 01-03. That is, a buyer is a 14 customer since the buyer is identifying a product or service to purchase. 15 Cornwell further describes receiving an itinerary request from a customer. 16 FF 04-06. As such, Scott and Cornwell describe receiving a request for a 17 product and receiving an itinerary from a customer, as required by limitation 18 [1]. 19 Limitation [3] further requires eliminating a set of aircraft providers 20 based on criteria to produce a set of candidate aircraft providers and a set of 21 eliminated aircraft providers. Scott describes that only qualified suppliers 22 may participate in the auction. FF 02. New suppliers may go through a 23 qualification process to determine whether the suppliers are qualified. FF 24 02. That is, suppliers who are not qualified are a set of eliminated suppliers 25 and qualified suppliers are a set of candidate suppliers. Cornwell further 26 Appeal 2009-011597 Application 10/898,396 10 describes distinguishing between aircrafts with a positive status and a 1 negative status, where aircrafts with a negative status are a set of eliminated 2 aircrafts and aircrafts with a positive status are a set of candidate aircrafts. 3 FF 06. As such, Scott and Cornwell describe limitation [3]. 4 Limitation [4] requires alerting the candidate aircraft providers without 5 alerting the eliminated providers. Scott describes that only the qualified 6 suppliers or the candidate set of suppliers are contacted to participate in the 7 auction. FF 02-03. Cornwell further describes that only aircrafts with a 8 positive status, the candidate set, are selected in ultimately reserving the 9 aircraft. FF 04-06. As such, the combination of Scott and Cornwell also 10 describe limitation [4]. 11 The Appellants additionally contend that Cornwell fails to describe a 12 system where aircraft providers are invited to submit prices after a trip 13 itinerary has been received. App. Br. 12. We disagree with the Appellant. 14 The Examiner found that Scott describes receiving a set of bid submissions 15 after receiving a request from a buyer and did not rely on Cornwell to 16 describe this feature. Ans. 4-5. As such, the Appellant’s contention does 17 not persuade us of error on the part of the Examiner because the Appellant is 18 responding to the rejection by attacking the references separately, even 19 though the rejection is based on the combined teachings of the references. 20 Nonobviousness cannot be established by attacking the references 21 individually when the rejection is predicated upon a combination of prior art 22 disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 23 1986). 24 Appeal 2009-011597 Application 10/898,396 11 The Appellants further contend the provided secondary evidence that the 1 Examiner ignored renders the claims nonobvious. App. Br. 13-15. The 2 Appellants specifically contend that the provided Declaration demonstrates 3 1) commercial success, 2) failure of others, and 3) copying by others. App. 4 Br. 14. We disagree with the Appellant. The Declaration filed under 35 5 U.S.C. § 132 by Nathan W. McKelvey has been fully considered but is not 6 found to be persuasive to show nonobviousness after evaluating and 7 weighing all of the evidence relied upon by the Examiner and provided by 8 the Appellant. There must be a demonstrated “nexus” between the merits of 9 the claimed invention and the evidence of secondary considerations before 10 that evidence is accorded substantial weight in an obviousness 11 determination. Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 12 F.2d 1573, 1575 (Fed. Cir. 1984), cert. denied 471 U.S. 1065 13 (1985); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 14 1983); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996); In re 15 Fielder, 471 F.2d 640, 646 (CCPA 1973). “Nexus” is a legally and factually 16 sufficient connection between the objective evidence and the claimed 17 invention, such that the objective evidence should be considered in 18 determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing 19 Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). In the absence of an established 20 nexus with the claimed invention, secondary consideration factors such as 21 commercial success, satisfaction of a long-felt but unresolved need, 22 licensing and copying by others are not entitled to much, if any, weight and 23 generally have no bearing on the legal issue of obviousness. See In re 24 Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985). 25 Appeal 2009-011597 Application 10/898,396 12 Here, the Declaration of Nathan W. McKelvey fails to provide a 1 sufficient nexus between the claimed invention and the secondary 2 consideration such that the objective evidence renders the claimed invention 3 nonobvious. As discussed supra, the Declaration provides opinion and fails 4 to set forth factual evidence. With respect to commercial success, the 5 Declaration states that sales had jumped to $10.1 million after the addition of 6 the alert mechanism (Declaration ¶’s 17-18), but fails to set forth any 7 objective evidence that demonstrates that the increase in sales was connected 8 to the alert mechanism feature. With respect to the long-felt but unresolved 9 need or failure of others, the Declaration again states that competitors 10 attempted to solve the same problem and failed due to overhead expenses 11 and ill-conceived business models (Declaration ¶ 18) without setting forth 12 any objective evidence connecting the failure of others with the success of 13 the claimed invention. With respect to copying by others, the Declaration 14 states that other competitors have copied the claimed invention (Declaration 15 ¶ 19), but fails to set forth any objective evidence demonstrating that the 16 claimed invention has in fact been copied. After evaluating and weighing all 17 of the evidence relied upon by the Examiner and provided by the Appellant, 18 we find that the Appellant’s evidence is not sufficient to rebut the 19 Examiner’s prima facie case of obviousness. 20 21 Claim 28 rejected under 35 U.S.C. § 103(a) as unpatentable over Scott, 22 Cornwell, and Britten 23 The Appellants contend that Britten fails to cure the deficiencies of Scott 24 and Cornwell as argued in support of claim 22 and claim 28 is allowable for 25 Appeal 2009-011597 Application 10/898,396 13 the same reasons. App. Br. 13. We disagree with the Appellant. The 1 Appellant’s arguments in support of claim 22 were not found to be 2 persuasive supra and are not found to be persuasive here for the same 3 reasons. 4 The Appellant also contends that Britten is non-analogous art. App. Br. 5 13. We disagree with the Appellant. Britten is concerned with the 6 management of a fleet of trucks. FF 07. The system includes a database 7 consisting of truck information and truck operator contact information. FF 8 07. Cornwell is also concerned with the management of aircrafts and 9 describes the use of a database to manage aircraft information. FF 04-05. 10 As such, both Cornwell and Britten are attempting to solve the same 11 problem of managing a fleet of transportation bodies. Since both Cornwell 12 and Britten are concerned with solving the same problem, a person with 13 ordinary skill in the art would have been lead to combine these references. 14 A person with ordinary skill in the art would have been led to combine these 15 references with Scott for the same reasons discussed supra. 16 We further note that the feature the Examiner relied on Britten to 17 describe in claim 28, the database contains aircraft provider’s contact 18 information, is also described by Cornwell. Cornwell describes that upon 19 the consumer’s completion of a reservation, the system transmits an email to 20 the charter operator with the terms and conditions of the reservation. FF 04. 21 As such, Cornwell describes that the system includes the charter operator’s 22 email address, which is contact information for the charter operator. 23 24 Appeal 2009-011597 Application 10/898,396 14 Claim 29 rejected under 35 U.S.C. § 103(a) as unpatentable over Scott, 1 Cornwell, and Rosenblatt 2 The Appellants contend that Rosenblatt fails to cure the deficiencies in 3 Scott and Cornwell as argued in support of claim 22 and claim 29 is 4 allowable for the same reasons. App. Br. 13. We disagree with the 5 Appellant. The Appellant’s arguments in support of claim 22 were not 6 found to be persuasive supra and are not found to be persuasive here for the 7 same reasons. 8 9 CONCLUSIONS OF LAW 10 The Examiner did not err in rejecting claims 1-27 and 30-53 under 35 11 U.S.C. § 103(a) as unpatentable over Scott and Cornwell. 12 The Examiner did not err in rejecting claim 28 under 35 U.S.C. § 103(a) 13 as unpatentable over Scott, Cornwell, and Britten. 14 The Examiner did not err in rejecting claim 29 under 35 U.S.C. § 103(a) 15 as unpatentable over Scott, Cornwell, and Rosenblatt. 16 17 DECISION 18 To summarize, our decision is as follows. 19 • The rejection of claims 1-27 and 30-53 under 35 U.S.C. § 103(a) as 20 unpatentable over Scott and Cornwell is sustained. 21 • The rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable 22 over Scott, Cornwell, and Britten is sustained. 23 Appeal 2009-011597 Application 10/898,396 15 • The rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable 1 over Scott, Cornwell, and Rosenblatt is sustained. 2 3 No time period for taking any subsequent action in connection with this 4 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 5 § 1.136(a)(1)(iv) (2007). 6 7 AFFIRMED 8 9 10 11 mev 12 13 Address 14 MEDLEN & CARROLL, LLP 15 101 HOWARD STREET, SUITE 350 16 SAN FRANCISCO CA 94105 17