09895457 (P.T.A.B. Sep. 23, 2013)

Ex Parte Morimoto

Patent Trial and Appeal BoardSep 23, 2013

09895457 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NOBUYOSHI MORIMOTO ____________ Appeal 2012-000337 Application 09/895,457 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MEREDITH C. PETRAVICK, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000337 Application 09/895,457 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-44 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed to a system and method for negotiating improved terms for products and services being purchased over the Internet (Spec. 1, ll. 14-15). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. A method for negotiating improved terms of sale for a product or service being purchased using an Internet web site, the method comprising: using one or more computers to perform: [1] receiving information indicating one or more default standards for a purchaser, wherein said default standards specify product or service characteristics that are preferred by said purchaser; [2] subsequent to said receiving, detecting an issuance of a commitment to purchase, by said purchaser, said product or service according to initial terms of sale; [3] making an offer to said purchaser to negotiate said improved terms of sale for said product or service within a specified amount of time; [4] in response to said purchaser accepting said offer: [5] searching for sale offers for said product or service; Appeal 2011-000337 Application 10/682,663 3 [6] comparing terms of sale for sale offers located from said searching to said initial terms of sale and to said default standards; and [7] based on said comparing, presenting one of the sale offers located from said searching to the purchaser, wherein the presented sale offer includes said improved terms of sale and meets said default standards; [8] wherein said searching, comparing and presenting occur within said specified amount of time. THE REJECTION The Examiner relies upon the following as evidence in support of the rejection: Lustig US 2002/0002531 A1 Jan. 3, 2002 Seymour US 6,871,190 B1 Mar. 22, 2005 The following rejection is before us for review: 1. Claims 1-44 rejected under 35 U.S.C. § 103(a) as unpatentable over Lustig and Seymour. FINDINGS OF FACT We find that the findings of fact used in the Analysis section below are supported at least by a preponderance of the evidence.1 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-000337 Application 10/682,663 4 ANALYSIS Claims 1-28 and 43 The Appellant argues that the rejection of claim 1 is improper because the cited prior art fails to disclose claim limitation [1] (App. Br. 12-14; Reply Br. 4-6). In contrast, the Examiner has determined that the cited limitation is shown in Lustig at paragraphs [0070] – [0073] (Ans. 5-6, 16). Specifically, the Examiner states that “the original offer and the selected indicator submitted by the user is considered to be equivalent to the default standard for a purchaser in the claimed invention” (Ans. 5-6). We agree with the Appellant. Claim 1 requires “receiving information indicating one or more default standards for a purchaser, wherein said default standards specify product or service characteristics that are preferred by said purchaser.” Claim 1 also requires receiving “initial terms of sale” which are separate from the “default standards” in claim 1. (see Claim 1, limitation [2]). Thus, the claim requires in part a set of “default standards” and “initial terms of sale” which are compared before presenting one of the sale offers that “includes said improved terms of sale and meets said default standards,” as further recited by limitations [6], [7], and [8] of claim 1. Here, the citations in the prior art to Lustig at paragraphs [0070] – [0073] along with the Examiner’s explanation simply do not show receiving “default standards” which are separate from “initial terms of sale.” The citations to Lustig largely describe the user submitting an original offer and selecting an indicator button (i.e., hyperlink) to indicate that the user commits to accepting a better offer from Lustig’s system (paragraphs [0070] – [0073]. Lustig does describe that the original offer includes two Appeal 2011-000337 Application 10/682,663 5 parameters with the first parameter being price and the second being any combination of other product-related attributes such as quality, delivery time, color, or size (paras. [0043], [0073]). However, these parameters are all related to the original offer to purchase, and as such fail to disclose or suggest receiving “default standards,” as required by limitation [1] of claim 1. For these reasons, the rejection of independent claim 1 and its dependent claims is not sustained. Independent claim 14 contains a similar limitation and the rejection of independent claim 14 and its dependent claims is not sustained for these same reasons as well. Claims 29-42 and 44 The Appellant argues that the rejection of claim 29 is improper because the Examiner failed to establish a prima facie rejection of independent claim 29 by grouping the rejection of claim 29 with the rejection of claim 1, and as such, failed to address the differences between claim 29 and claim 1 (App. Br. 21-22). The Appellant additionally argues that Lustig fails to disclose “purchasing the particular item or service for the purchaser at the better price and charging the purchaser a new price between the particular price and the better price,” as recited by claim 29 (App. Br. 22- 23; Reply Br. 14-16). In contrast, the Examiner has determined that the rejection is proper (Ans. 9, 16-17). We agree with the Appellant. Claim 29 requires “purchasing the particular item or service for the purchaser at the better price and charging the purchaser a new price between the particular price and the better price.” Appeal 2011-000337 Application 10/682,663 6 Thus, the claim in part requires that the system purchase the particular item at the better price and charge the purchaser a new price between the original price and the better price. The rejection of record fails to show a citation in the references where this claim limitation is found (Ans. 9). The Examiner’s Answer at pages 16-17 states: Lustig teaches each offer includes at least two parameters: identified the product, price, quality, delivery time; for example, Offer 1 (original offer) includes product ID, price 1, good quality; Offer 2 includes: same product as Offer 1, better price than Offer 1, same quality as offer 1; Offer 3 includes: same product as Offer 1, better price than Offer 2, bad quality. If the system accepts the Offer 2 as the better offer, the user will be charged the price between the price of the Offer 1 and the Offer 3 (better price) [sic]. Here, the Examiner has failed to show a specific portion of Lustig that discloses the limitation at issue. Rather, the Examiner offers a scenario where the Examiner speculates that the middle offer price in Lustig, between a higher and lower offer price, would be the price between the particular price and the better price (Ans. 17). However, the Examiner’s reasoning still fails to identify a portion of Lustig or Seymour that discloses charging the purchaser a new price, and as such, fails to disclose “purchasing the particular item or service for the purchaser at the better price and charging the purchaser a new price between the particular price and the better price,” as claim 29 requires. For these reasons, the rejection of independent claim 29 and its dependent claims is not sustained. Independent claims 41 and 44 contain a similar limitation and the rejection of independent claims 41 and 44, and claim 43, dependent on claim 41, is not sustained for these same reasons as well. Appeal 2011-000337 Application 10/682,663 7 CONCLUSION OF LAW We conclude that the Appellant has shown that the Examiner erred in rejecting the claims as listed in the rejection section above. DECISION The Examiner’s rejection of claims 1-44 is reversed. REVERSED mls