Ex Parte Sakai

Board of Patent Appeals and Interferences

Jul 29, 2009

10105133 (B.P.A.I. Jul. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIDEO SAKAI
____________

Appeal 2009-001127
Application 10/105,133
Technology Center 3600
____________

Decided:1 July 29, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001127
Application 10/105,133

STATEMENT OF THE CASE
Hideo Sakai (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM 2 and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).

THE INVENTION
The invention is a method of auctioning tickets for seat at an event.
(Spec. 5:5-7). Three types of tender are allowed: single tender, complete
group tender, and incomplete group tender. For a complete group tender,
each of the ticket is purchased only if seats are available for the entire group.
(Spec. 6:21-27). For an incomplete group tender, tickets are purchased even
if they are only available for a part of the group. Id.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An auction method comprising the steps of:
transmitting data of a tender screen in
response to a request from a purchase applicant to
bid for a seat ticket, said tender screen including a
seating table associated with tendering conditions
of seats, the tendering conditions including

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 5, 2007) and Reply Brief (“Reply Br.,” filed Apr. 22, 2008),
and the Examiner’s Answer (“Ans.,” mailed Feb. 21, 2008).
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collective offer for seats wherein the seats are to be
paid by two or more different individuals;
receiving, based upon said tendering
conditions, tender data input to said tender screen;
and
determining a successful bidder in
accordance with a single or multiple sets of said
tender data.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wilder
Brett
Brown
Young
US 5,408,417
US 6,023,685
US 6,167,386
US 7,003,485 B1
Apr. 18, 1995
Feb. 8, 2000
Dec. 26, 2000
Feb. 21, 2006

Susan Olp, “Metra, Bair Modernize Ticket System.” The Billings
Gazette, Billings, Mont: Apr. 30, 1999, pg. 18. (Herein after Olp).

The following rejections are before us for review:
1. Claims 1-15 are rejected under 35 U.S.C. § 112, 1st paragraph
as failing to contain a written description of the invention.
2. Claims 1, 4, 5, 7, 8, and 11-15 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Brett and Brown.
3. Claims 2 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brett, Brown, and Wilder.
4. Claims 3 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brett, Brown, and Olp.
5. Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brett, Brown, and Young.
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ARGUMENTS
The rejection of claims 1-15 under § 112, 1st paragraph.
The Examiner rejected claims 1-15 under 35 U.S.C. § 112, 1st
paragraph for filing to comply with the written description requirement.
The Examiner contends that the Specification does not support independent
claims 1, 8, and 15 which recite “the tendering conditions including
collective offer for seats wherein the seats are to be paid by two or more
different individuals.” (Ans. 3-4). Specifically, the Examiner contends that
the Specification does not describe that “the seats are to be paid by two or
more different individuals.” (Ans. 11).
The Appellant traverses the Examiner’s rejection and cites to the
Specification’s description of a tender of the “complete group” type and the
method of successful bidding, which determines whether multiple complete
group tenders for an entire group are the highest bidder before accepting a
single complete group tender for a single seat. (App. Br. 6-7 and Reply Br.
2-3). The Appellant states:
Since other members in the group bid separately, it
is implied that the members that bid and have a
winning bid will pay separately since the
cornerstone of auctions is that when a person bids
on an item, the person is expected to pay for the
item if the bid of the person is the winning bid.

The rejection of claims 1-15 under § 103(a).
The Appellant traverses the rejection of claims 1, 3, 5, 8, 12 and 15
under 35 U.S.C. § 103 as unpatentable over Brett and Brown (App. Br. 8-
12), but do not separately traverse the rejection of dependent claims 4, 7, 11,
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and 13-14 and make no mention of the rejections of dependent claims 2, 3,
6, 9, and 10.
Claims 1, 8, and 15
The Appellant argues that the combination of Brett and Brown does
not teach “the tendering conditions including collective offer for seats
wherein the seats are to be paid by two or more different individuals” as
recited in claims 1, 8, and 15. (App. Br. 10). Further, the Appellant argues
that there is no reason for anyone skilled in the art to combine the teachings
of Brett with those of Brown. (App. Br. 9). The Appellant states
“[n]owhere in the disclosure of Brett et al. (or the disclosure of Brown for
that matter) is there a teaching or suggestion to make a collective offer for (a
plurality of) seats for which two or more different individuals are to pay
upon winning the bid.” (App. Br. 9).
The Examiner responds that Brett discloses a method and a computer
program product for transmitting bid data from a bid screen, where the
screen includes a seating table associated with bidding conditions of the seat,
and Brown teaches a method that permits individual bidders to pool their
bids in order to accumulate a collective bid for a property while charging
each individual bidders account. (Ans. 13). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify Brett to
include the pooled bidding of Brown, in order to accumulate a collective bid
so that an individual bidder could own a portion of an expensive property or
to obtain a group discount. (Ans. 6).
Claim 5 and 12
The Appellant argues that the combination of Brett and Brown does
not teach any of the steps of the method of claim 5 or the limitations of the
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system of claim 12. (App. Br. 10-11 and Reply Br. 3-7). Further, the
Appellant argues that Brett’s description of ending the seat assignment
algorithm is not equivalent to the claimed step of abandoning a tender for all
members of a complete group. (Reply Br. 7).
In the Answer, the Examiner responds that the Appellant has only
made a general allegation of patentability in the Appeal Brief. (Ans. 14).
The Examiner does not respond to the Appellant’s arguments in the Reply
Brief.
Claim 13
The Appellant argues that the combination of Brett and Brown,
including Fig. 4 and col. 9, ll. 9-13 of Brett cited by the Examiner, does not
teach the means for determining recited in claim 13. (App. Br. 11-12).
In response the Examiner, cites Figs. 4 and 9-13 and col. 8, ll. 22-33
of Brett to show this feature. (Ans. 14-15).

ISSUES
The issues are:
1. Does the Specification describe “tendering conditions including
collective offer for seats wherein the seats are to be paid by two
or more different individuals” in such a way as to convey to one
of ordinary skill in the art that the inventor at the time the
application was file, had possession of the claimed invention?
2. Would one of ordinary skill in the art have been led by Brett
and Brown to an auction method where the tendering conditions
include a collective offer for seats wherein the seats are to be
paid by two or more different individual as recited in claim 1?
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3. Would one of ordinary skill in the art have been led by Brett
and Brown to an auction system including a means for
generating a seating table auction with tender conditions where
the tendering conditions include a collective offer for seats
wherein the seats are to be paid by two or more different
individual as recited in claim 8?
4. Would one of ordinary skill in the art have been led by Brett
and Brown to an article that includes a means for enabling the
processor to transmit tender screen data including a seating
table associated with tendering conditions, where the tendering
conditions include a collective offer for seats wherein the seats
are to be paid by two or more different individual as recited in
claims 15?
5. Would one of ordinary skill in the art have been led by Brett
and Brown to the method recited in claim 5?
6. Would one of ordinary skill in the art have been led by Brett
and Brown to the auction system recited in claim 12?
7. Would one of ordinary skill in the art have been led by Brett
and Brown to the auction system includes a means for
determining as recited in claim 13?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
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Claim construction
1. Claim 1 recites a method including “the tendering conditions
including collective offer for seats wherein the seats are to be paid
by two or more different individuals.”
2. Claim 5 recites:
wherein said tender data includes one of three
tender types, a personal tender, a tender from a
complete group, and a tender from an incomplete
group, and wherein said step of determining said
successful bidder includes:

a first determination step of determining whether
the tender type of a highest tenderer is said
personal tender or said tender from said
incomplete group;

a step of, on condition that said first determination
is true, determining that said highest tenderer is a
successful bidder;

a second determination step of, on condition that
said first determination is false, determining
whether each member of said complete group is a
non-successful bidder; and

a step of, on condition that is said second
determination is true, abandoning a tender for all
the members of said complete group.

3. Claim 8 recites a system including
means for generating a seating associated with
tender conditions for seats and transmitting a
tender screen data including said seating table, in
response to a request from a purchase applicant for
said seat ticket, to a computer system of said
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purchase applicant, the tendering conditions
including collective offer for seats wherein the
seats are to be paid by two or more different
individuals.
4. Claim 15 recites a computer program product having computer
program logic comprising a computer usable medium and:
means for enabling the processor to transmit tender
screen data in response to a request from a
purchase applicant for said seat ticket, said tender
screen data including a seating table associated
with tendering conditions for seats, the tendering
conditions including collective offer for seats
wherein the seats are to be paid by two or more
different individuals.
The Specification
5. The Specification at page 5, lines 21-25 states “[f]urther, instead of
offering a tender for each seat, a so-called dutch auction can be
performed whereby a tender is offered for multiple seats as a single
unit, i.e., a collective offer made for multiple seats.”
6. The Specification does not describe whether the collective offer for
seats is to be paid for by two or more different individuals.
7. The Specification describes a purchaser submitting a tender by
designating a seat position, a tender price and a tender type. (Spec
18:1-3).
8. The Specification describes that after a tender period expires a
successful bid determination process is performed for each seat.
(Spec. 18:9-17).
9. The Specification at page 19, lines 4-10 states:
When the purchase type of the highest price
tenderer is neither a personal tender nor an
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incomplete group tender, i.e., the purchase type is
a complete group tender, a check is performed to
determine whether the other members of the
complete group are outbid (step 85). When the
other members of the complete group are outbid,
the bids can not be successful for all the members
of the group.
10. The Specification at page 11, lines 10-13 states “[a] purchase by
the unit of a complete group is a tender form whereby the purchase
of tickets is desired only when multiple seats are available for all
the members of a group, such as family members.”
11. The Specification at page 11, lines 19-20 states “[a] purchase by
the unit of an incomplete group is a tender form whereby available
multiple seats are purchased even when seats for all the members
are not available.”
12. The Specification at page 11, lines 8-10 states “[a] purchase by the
unit of an individual is a form whereby a tender is submitted for
one seat, without being associated with other seats.”
The scope and content of the prior art
Brett
13. Brett describes a computer controlled event ticket auctioning
system which allows for bidding on one or more seats. Col. 3, ll.
60-67.
14. Brett’s Figure 11 is reproduced below.
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Figure 11 depicts a participant interface with a display of a seating
section including current bidding amounts.
15. Brett describes the system checking to see if the bid exceed the
standing minimum bid, and if the bid does not, then the bid is not
recorded. (Col. 7, ll. 59 – 66).
16. Brett then describes the system checking to see if the less than an
established maximum, which is a credit card authorization amount,
and if the bid does, the bid is not recorded. (Col. 8, ll. 1-10).
17. Brett describes finalizing seat assignments with an algorithm. (Col.
9, ll. 1-3).
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18. Brett describes the algorithm determining if the number of seats
required by the bid is greater than the number of seats remaining in
the section and asking the bidder to accept the reduced number of
seats. (Col. 9, ll. 23-30).
19. Brett describes the algorithm ending if no response is received or
the reply is negative. (Col. 9, ll. 27-31).
Brown
20. Brown describes a method for conducting an on-line bidding
session to accumulate a collective bid for a property. (Col. 3, ll.
22-24).
21. Brown solves the problem of individual bidders not having
sufficient funds to bid on expensive property. (Col. 1, ll. 30-39).
22. Brown solves the problem by allowing bidders to pool their bids.
(Col. 3, ll. 8-11).
23. Brown describes individual bidders forming a bidding group and
adding their individual bids to form a collective bid. (Col. 3, ll.
33-44).
24. Brown describes charging individual bidder accounts for each of
the individual bids if the bidding is successful. (Col. 3, ll. 56-63).
Any differences between the claimed subject matter and the prior art
25. Brett does not describe tendering conditions including a collective
offer for seats wherein the seats are to be paid by two or more
different individuals.
The level of skill in the art
26. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of electronic auctions. We will
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therefore consider the cited prior art as representative of the level
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need
for testimony is not shown’”) (Quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
27. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Written Description
“What is claimed by the patent application must be the same as what
is disclosed in the specification; otherwise the patent should not issue.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736
(2002). All that is necessary to satisfy the description requirement is to
show that one is “in possession” of the invention. The decision in Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the
test. “One shows that one is “in possession” of the invention by describing
the invention, with all its claimed limitations, not that which makes it
obvious. Id. (“[T]he applicant must also convey to those skilled in the
art that, as of the filing date sought, he or she was in possession of the
invention. The invention is, for purposes of the ‘written description’
inquiry, whatever is now claimed.”) (emphasis in original). One does that
by such descriptive means as words, structures, figures, diagrams, formulas,
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etc., that fully set forth the claimed invention. Although the exact terms
need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038
(Fed. Cir. 1995). (“[T]he prior application need not describe the claimed
subject matter in exactly the same terms as used in the claims . . . ”), the
specification must contain an equivalent description of the claimed subject
matter.” Lockwood v. Am. Airlines, Inc., 107 F.3d at 1572. Compliance
with the written description requirement is a question of fact. Ralston
Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
Definiteness
The test for compliance is whether the claims set out and circumscribe
a particular area with a reasonable degree of precision and particularity when
read in light of the application disclosure as they would be interpreted by
one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
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unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) The Court in Graham further
noted that evidence of secondary considerations “might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-15 under § 112, 1st paragraph.
Claims 1-7
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We find that the Specification does not show that the inventor was in
possession of the claimed method which includes a step of transmitting data
of a tender screen, which includes a seating table associated with tendering
conditions, which include a collective offer for seats wherein the seats are to
be paid for by two or more different individuals as recited in claim 1 (FF 1).
(FF 6). The Appellant’s argument is directed to the Specification’s
description of a “complete group tenders” (App. Br. 6-7 and Reply Br. 2-3),
and not to the Specification’s description of a “collective offer.” The
Appellant states, “Since individuals in a group unit are bidding separately
for their own seats, the individuals are paying for their own seats
separately.” (App. Br. 7). However, the decision in Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the test. “One
shows that one is “in possession” of the invention by describing the
invention, with all its claimed limitations, not that which makes it obvious.
Id. We find that the Specification describe both a collective offer FF 5 and a
complete group tender FF 7-10, however the Specification does not show
that the inventor was in possession of a method as recited in claim 1, where
the collective offer for seats are to be paid for by two or more different
individuals.
We agree with the Examiner that the Specification does not provide a
written description for a collective offer for seats wherein the seats are to be
paid by two or more different individuals. Accordingly, we find that the
Appellant has not shown that the Examiner erred in rejecting claim 1, and
claims 2-7 dependent thereon, under 35 U.S.C. § 112, 1st paragraph.

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Claims 8-14
For the same reasons as given above with regards to claim 1, we find
that the Specification does not show that the Appellant was in possession of
the claimed apparatus which includes a means for generating a seating table
associated with tender conditions, where the tendering conditions include
collective offer for seats wherein the seats are to be paid by two or more
different individuals as recited in claim 8 (FF 3). We agree with the
Examiner that the Specification does not provide a written description for a
collective offer for seats wherein the seats are to be paid by two or more
different individuals. (FF 6). Accordingly, we find that the Appellant has
not shown that the Examiner erred in rejecting claim 8, and claims 9-14
dependent thereon, under 35 U.S.C. § 112, 1st paragraph.
Claim 15
For the same reasons as given above with regards to claim 1, we find
that the Specification does not show that the Appellant was in possession of
the claimed apparatus which includes a means for enabling the processor to
transmit tender screen data, which includes a seating table associated with
tendering conditions, where the tendering conditions include collective
offer for seats wherein the seats are to be paid by two or more different
individuals as recited in claim 15 (FF 4). We agree with the Examiner that
the Specification does not provide a written description for a collective
offer for seats wherein the seats are to be paid by two or more different
individuals. (FF 6). Accordingly, we find that the Appellant has not shown
that the Examiner erred in rejecting claim 15 under 35 U.S.C. § 112,
1st paragraph.

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The rejection of claims 1, 4, 5, 7, 8, and 11-15 under § 103(a) as being
unpatentable over Brett and Brown.
Claims 1, 4, and 7
Claim 1 recites a method including the step of transmitting data of a
tender screen. (FF 1). The claim requires the tender screen to include a
seating table that associated with tendering conditions of seats. Id. The
tendering conditions include a collective offer for seats wherein the seats
are to be paid by two or more different individuals. Id. We find that the
Specification describes a collective offer as a tender for multiple seats as a
unit. (FF 5). Therefore, we construe claim 1 to require a seating table
associated with tendering conditions of seats and the tendering conditions
including a tender for multiple seats as a unit that are to be paid by two or
more different individuals.
The Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
Id. (citing Graham, 383 U.S. at 12 (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR at 414. The operative question
in this “functional approach” is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” KSR at 415.
Like the Examiner (Ans. 5), we find that Brett describes a participant
interface for an auction system that shows a diagram of a seating section
showing the current bids. (FF 13-14). We also find that Brett describes a
person bidding on multiple seats, but is silent as to who pays for the multiple
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seats. (FF 13 and 25). Brown also describes an online system and further
describes a system that allows bidders to pools their bids into one total bid
while still paying individually. (FF 20-24). Brett describes that this system
advantageously allows bidders to purchase expensive property. (FF 21-22).
We find that modifying the auction system of Brett to allow more than one
individual to pay for a bid on multiple seats is no more than the predictable
use of prior art elements according to their established function. Therefore,
we find that the combing the bid pooling feature of Brown with the online
auction system of Brett is obvious and does not more than yield a predictable
result.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 1 and claims 4 and 7 dependent thereon,
under 35 U.S.C. § 103(a) as unpatentable over Brett and Brown.
Claims 5
Claim 5 recites that the tender data includes one of a personal tender,
a tender from a complete group, and a tender from an incomplete group. (FF
2). The Specification provides express definitions for these three tender
types. (FF 10-12). Claim 5 also recites first and second determination steps,
which require a determination of a tender type. (FF 2).
We find that Brett does not describe the steps recited in claim 5,
including in columns 3-4 and 9-10 cited by the Examiner. Further, the
Examiner does not assert that Brown describes these steps nor that one of
ordinary skill in the art would be led by Brett and Brown to these steps.
(Ans. 7). Therefore, we find that the Examiner has failed to establish a
prima facie showing of obviousness. Accordingly, we find that the
Appellant has shown that the Examiner erred in rejecting claim 5.
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Claims 8 and 11- 15
As further explained below, we will enter a new ground of rejection
on claims 8 and 11-15 under 35 U.S.C. § 112, second paragraph, on the
ground that claims 8 and 11-15 are indefinite. Therefore, the prior art
rejection must fall because they are necessarily based on speculative
assumption as to the meaning of the claim. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962).

The rejection of claims 2 and 9 under § 103(a) as being unpatentable over
Brett, Brown, and Wilder.
The Appellant makes no arguments against the rejection of claim 2
under 35 U.S.C. § 103(a) as unpatentable over Brett, Brown, and Wilder.
Therefore, the rejection is sustained.
As further explained below, we will enter a new ground of rejection
on claim 9 under 35 U.S.C. § 112, second paragraph, on the ground that
claim 9 is indefinite. Therefore, the prior art rejection must fall because it is
necessarily based on speculative assumption as to the meaning of the claim.
See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).

The rejection of claims 3 and 10 under § 103(a) as being unpatentable over
Brett, Brown, and Olp.
The Appellant makes no arguments against the rejection of claim 3
under 35 U.S.C. § 103(a) as unpatentable over Brett, Brown, and Olp.
Therefore, the rejection is sustained.
As further explained below, we will enter a new ground of rejection
on claim 10 under 35 U.S.C. § 112, second paragraph, on the ground that
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claim 10 is indefinite. Therefore, the prior art rejection must fall because it
is necessarily based on speculative assumption as to the meaning of the
claim. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).

The rejection of claim 6 under § 103(a) as being unpatentable over Brett,
Brown, and Young.
The Appellant makes no arguments against the rejection of claim 6
under 35 U.S.C. § 103(a) as unpatentable over Brett, Brown, and Young.
Therefore, the rejection is sustained.

NEW GROUND
We reject claims 8-15 under 35 U.S.C. § 112, second paragraph, as
indefinite.
Independent claims 8 and 15 recite means-plus-function limitations.
Claim 8 recites “means for generating a seating table associated with tender
conditions for seats and transmitting a tender screen data …, the tendering
conditions including collective offer for seats wherein the seats are to be
paid by two or more different individuals.” (FF 3). Claim 15 recites “means
for enabling the processor to transmit tender screen data …, said tender
screen data including a seating table associated with tendering conditions for
seats, the tendering conditions including collective offer for seats wherein
the seats are to be paid by two or more different individuals.” (FF 4).
A means-plus-function limitation is construed to cover the
corresponding structure, materials, or acts described in the written
description of the Specification and equivalents thereof. However, as
discussed above with regards to the rejection under 35 U.C.S. § 112, 1 st
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paragraph, the Specification does not provide a written description of the
structure corresponding to these claimed functions. Therefore, we cannot
construe the limitation and the claims are indefinite. “If there is no structure
in the specification corresponding to the means-plus-function limitation in
the claims, the claim will be found invalid as indefinite.” Biomedino, LLC v.
Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
Accordingly, claims 8-15 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting:
claims 1-15 under 35 U.S.C. § 112, 1st paragraph as failing to contain
a written description of the invention;
claims 1, 4, and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Brett and Brown;
claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Brett,
Brown, and Wilder;
claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Brett,
Brown, and Olp; and
claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Brett, Brown, and Young.
We conclude that the Appellant has shown that the Examiner erred in
rejecting:
claims 5, 8, and 11-15 under 35 U.S.C. § 103(a) as being
unpatentable over Brett and Brown.
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claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Brett,
Brown, and Wilder; and
claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Brett,
Brown, and Olp.
A new ground of rejection has been applied to claims 8-15 under
35 U.S.C. § 112, second paragraph.

DECISION
The decision of the Examiner to reject claims 1-15 is affirmed, and we
enter a new ground of rejection of claims 8-15 under 35 U.S.C. § 112,
second paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an
appropriate amendment of the claims so
rejected or new evidence relating to the claims
so rejected, or both, and have the matter
reconsidered by the examiner, in which event
the proceeding will be remanded to the
examiner . . . .

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Appeal 2009-001127
Application 10/105,133

• (2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the
Board upon the same record . . . .
AFFIRMED; 37 C.F.R. § 41.50(b)

JRG

IBM CORPORATION
INTELLECTUAL PROPERTY LAW
11501 BURNET ROAD
AUSTIN, TX 78758
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