Ex Parte Morris

Patent Trial and Appeal Board

May 16, 2013

11161899 (P.T.A.B. May. 16, 2013)

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.
11/161,899 08/22/2005 Robert P. Morris I333/US 2898
49277 7590 05/17/2013
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
05/17/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte ROBERT P. MORRIS 7
___________ 8
9
Appeal 2011-004330 10
Application 11/161,899 11
Technology Center 3600 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
JOSEPH A. FISCHETTI, Administrative Patent Judges. 17
18
FETTING, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL22
Appeal 2011-004330
Application 11/161,899

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STATEMENT OF THE CASE1 1
Robert P. Morris (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 32-49, the only claims pending in the application on 3
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 4
The Appellant invented a way of conducting a business transaction 5
using a pub/sub protocol. (Spec., para. 2). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 32, which is reproduced below [bracketed matter and some 8
paragraphing added]. 9
32. A method for conducting a sale or auction using a pub/sub 10
protocol, the method comprising: 11
[1] receiving, 12
from a seller principal, 13
a first pub/sub protocol publish message 14
for publishing sale information 15
about an item for sale or auction; 16
[2] receiving, 17
from a remote endpoint, 18
a second pub/sub protocol publish message 19
for publishing bid information 20
for the item 21
to a pub/sub tuple 22
associated with the published sale 23
information; 24
[3] updating the pub/sub tuple 25
with the bid information; 26
[4] generating a pub/sub notification message 27

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 26, 2009) and the Examiner’s Answer (“Ans.,” mailed Oct.
5, 2010).
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Application 11/161,899

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including the bid information; 1
and 2
[5] providing the pub/sub notification message 3
to the seller principal. 4
5
The Examiner relies upon the following prior art: 6
Philonenko US 2003/0009530 Al Jan. 9, 2003 7
Mallya US 2006/0031080 Al Feb. 9, 2006 8
9
Claims 41 and 46 stand rejected under 35 U.S.C. § 112, second 10
paragraph, as failing to particularly point out and distinctly claim the 11
invention. 12
Claims 32-49 stand rejected under 35 U.S.C. § 103(a) as unpatentable 13
over Mallya and Philonenko. 14
15
DISPOSITION OF THE APPEAL 16
The Examiner entered a new ground of rejection in the Examiner’s 17
Answer against claims 41 and 46 under 35 U.S.C. § 112, second paragraph, 18
as being indefinite. Ans. 3-6. The Examiner properly gave notice of the 19
new ground of rejection (Ans. 15) and the Technology Center Director 20
approved it. Answer 17. As the Answer indicated (Ans. 15-16), the 21
Appellant was required to respond to the new grounds within two months in 22
either of two ways: 1) reopen prosecution (see 37 C.F.R. § 23
41.39(a)(2)(b)(1)); or 2) maintain the appeal by filing a reply brief as set 24
forth in 37 C.F.R. § 41.41 (see 37 C.F.R. § 41.39(a)(2)(b)(2) ), “to avoid sua 25
sponte dismissal of the appeal as to the claims subject to the new ground of 26
rejection.” Ans. 15-16. According to the record before us, neither option 27
appears to have been exercised. 28
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Accordingly, the appeal as to claims 41 and 46, subject to the new 1
ground of rejection under § 112, second paragraph, as being indefinite stands 2
dismissed. 3
Upon return of the application to the Examiner, the Examiner should 4
(1) cancel claims 41 and 46 subject to the new ground of rejection and (2) 5
notify the Appellant that the appeal as to claims 41 and 46, subject to the 6
new ground of rejection under § 112, second paragraph, as being indefinite, 7
is dismissed and claims 41 and 46 are cancelled. See Manual of Patent 8
Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 9, Aug. 2012. 9
Given that the appeal as to claims 41 and 46 stands dismissed, the 10
rejections before us for review are reduced to as follows: 11
Claims 32-40, 42-45, and 47-49 stand rejected under 35 U.S.C. § 12
103(a) as unpatentable over Mallya and Philonenko. 13
14
ISSUES 15
The issues of obviousness turn primarily on the scope of the terms 16
“sale information” and “bid information,” and whether data communicated 17
regarding the sales and bids by instant messaging during an auction are 18
within their scope. 19
20
FACTS PERTINENT TO THE ISSUES 21
The following enumerated Findings of Fact (FF) are believed to be 22
supported by a preponderance of the evidence. 23
Facts Related to Claim Construction 24
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01. A pub/sub protocol refers to a publish/subscribe protocol and is an 1
asynchronous communications protocol. Spec., para. 7. 2
Facts Related to Appellant’s Disclosure 3
02. For purposes of illustration, aspects of the subject matter 4
described in the Specification are described by reference to the use 5
of a presence protocol as an exemplary pub/sub protocol. Spec., 6
para. 48. 7
Facts Related to the Prior Art 8
Mallya 9
03. Mallya is directed to registering an interest in a subject having 10
dynamically changing characteristics and receiving updates and 11
registering for updates to an auction item or category in which a 12
consumer has expressed an interest. Mallya, para. 0002. 13
04. Immediate Messaging and Presence Services (IMPS) includes 14
Instant Messaging and Presence Protocol (IMPP) and variants 15
such as APEX, PRIM, SIP/SIMPLE, XMPP, AOL IM, AIM, 16
Yahoo, Wanadoo, and MSN Messenger. Using IMPS technology, 17
people can sign up to send messages to other participants on a list 18
of known participants. People can be added to conversations by 19
selecting their corresponding name, email address, or instant 20
messaging address from a list or via manually inputting the 21
appropriate information. Such addresses are generally considered 22
to be references to people and are thus valid for a long period of 23
time and may be considered persistent identifiers (as opposed to 24
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transient identifiers). Mallya, para. 0005. As such IMPS is a 1
pub/sub protocol exemplar. 2
Philonenko 3
05. Philonenko is directed to providing communication capability 4
using an instant message and presence protocol between members 5
of the communication center including automata of the center. 6
Philonenko, para. 0002. 7
8
ANALYSIS 9
We are not persuaded by the Appellant’s argument that 10
Mallya and Philonenko in combination fails to disclose or 11
suggest the use of pub/sub protocol for conducting a sale or 12
auction as defined in independent claims 32, 35, 39-42, 46 and 13
47. 14
Appeal Br. 15. Mallya shows the use of IMPS, a messaging and presence 15
protocol that is a form of pub/sub protocol in an auction environment. 16
Philonenko shows the use of the similar IMPP, a messaging and presence 17
protocol that is a form of pub/sub protocol in an auction environment. Both 18
references show communicating presence information as part of the auction 19
procedure or conduct. 20
As to the argument that 21
the pub/sub protocol is used to conduct the sale or auction 22
without requiring the use of other protocols in addition to 23
pub/sub 24
(App. Br. 16), this argument is not commensurate with the scope of the 25
claims. Appellant’s argument that 26
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[a]s admitted by the Office in the FOA, Mallya does not teach 1
or suggest the use of a pub/sub protocol for conducting a sale or 2
auction (see FOA, page 4), 3
is similarly not commensurate with the Examiner’s findings, which are that 4
Mallya teaches a method and system for online auctions using a 5
number of protocol message formats (see Mallya, par. 41), but 6
is silent on using only one protocol format such as pub/sub 7
protocol or presence protocol. 8
Ans. 7. 9
The real issue is whether it was predictable to include sale and bid 10
information in the messaging both Mallya and Philonenko use, as that is 11
what the claim recites. Here we take notice that the claim does not specify 12
or narrow what information is within the scope of sale and bid information. 13
Presumably the arguments are based on these data being the bid and sale 14
amount themselves expressed during the actual transaction itself. The claim 15
is far broader in scope. Sale and bid information include anything related to 16
a sale or bid including parties, dates, context, intentions, and remarks. 17
Clearly these forms of sale and bid data would be exactly the type of 18
information communicated in the messaging that uses IMPP and IMPS in 19
the references. 20
This same reasoning shows why the combination of the references is 21
proper. They are actually cumulative as to the use of a pub/sub protocol in 22
the auction context. 23
24
CONCLUSIONS OF LAW 25
The rejection of claims 32-40, 42-45, and 47-49 under 35 U.S.C. § 26
103(a) as unpatentable over Mallya and Philonenko is proper. 27
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DECISION 1
The rejection of claims 32-40, 42-45, and 47-49 is affirmed. 2
Upon return of the application to the Examiner, the Examiner should 3
(1) cancel claims 41 and 46 subject to the new ground of rejection and (2) 4
notify the Appellant that the appeal as to claims 41 and 46, subject to the 5
new ground of rejection under § 112, second paragraph, as being indefinite, 6
is dismissed and claims 41 and 46 are cancelled. 7
No time period for taking any subsequent action in connection with 8
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2011). 10
11
AFFIRMED 12
13
14
15
hh 16