Ex Parte Thurlow et al

Patent Trial and Appeal Board

Jun 20, 2017

12027792 (P.T.A.B. Jun. 20, 2017)

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.
12/027,792 02/07/2008 STEPHEN H. THURLOW W115 1060.1 5502
92548 7590
Travelport
Attn: Linda Rutherford
300 Galleria Parkway, NW
Atlanta, GA 30339
06/21/2017 EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
06/21/2017 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 STEPHEN H. THURLOW, BRIAN A. PAVELKA,
and SUZANNE R. CALLAWAY
Appeal 2016-005945
Application 12/027,7921
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and JAMES W. DEJMEK,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—12, 31, 33—43, and 45. Appellants have canceled
claims 13—30, 32, and 44. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Travelport, LP. App.
Br. 1.
Appeal 2016-005945
Application 12/027,792
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions "relate[] generally to
verification of prices for travel itineraries and, more particularly, to an
automated process for considering and applying variances in the numerous
factors that affect ticket pricing and ticket reissues." Spec. 11.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A method for a fare verification system to perform
air fare verification and auditing for a travel itinerary associated
with a ticketing transaction that was conducted, at least in part,
with a computer reservation system, comprising the steps of:
receiving at the fare verification system a request via a
communications network to verify that the air fare for the
travel itinerary has been priced correctly by an agent;
determining, using a computer processor of the fare
verification system, if the air fare for the travel itinerary is in a
fares database;
validating a plurality of rules and restrictions that is
applicable to the air fare;
determining, using the computer processor, if the air fare
passes each of the plurality of rules and restrictions and
verifying the air fare has been priced correctly by the agent if
each of the plurality of rules and restrictions is satisfied;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 13, 2015); Reply Brief ("Reply Br.," filed May 20, 2016); Examiner's
Answer ("Ans.," mailed Mar. 21, 2016); Final Office Action ("Final Act.,"
mailed Mar. 18, 2015); and the original Specification ("Spec.," filed
Feb. 7, 2008).
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determining, using the computer processor, a failure
reason associated with the air fare, if the air fare does not
satisfy each of the plurality of rules and restrictions;
providing a verification response for the air fare
verification request via the communications network, wherein
the verification response provides a notification to a requestor
of any pricing error made by the agent during the ticketing
transaction', and
automatically providing an audit report following
completion of the ticketing transaction via the communications
network for each ticket having a pricing error that is based on
the plurality of rules and restrictions, the audit report including
an indication of any pricing error made by the agent and a
discrepancy amount.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Rabideau et al.
("Rabideau")
US 2002/0010664 Al Jan. 24, 2002
Bolduc et al.
("Bolduc")
US 2006/0026014 Al Feb. 2, 2006
Baggett et al.
("Baggett")
US 2006/0053052 Al Mar. 9, 2006
Phillips US 2007/0061174 Al Mar. 15,2007
Williamson et al.
("Williamson")
US 2008/0010101 Al Jan. 10, 2008
Wofford et al.
("Wofford")
US 2008/0319808 Al Dec. 25, 2008
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Application 12/027,792
Rejections on Appeal
Rl. Claims 1—12, 31, 33—43, and 45 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 3; Ans. 2.
R2. Claims 1—6, 10-12, 33—35, 38, 39, 42, 43, and 45 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Williamson, Phillips, and Rabideau. Final Act. 4; Ans. 2.
R3. Claims 7 and 31 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Williamson, Phillips, Rabideau, and
Bolduc. Final Act. 7; Ans. 2.
R4. Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Williamson, Phillips, Rabideau, Bolduc, and
Baggett. Final Act. 8; Ans. 2.
R5. Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Williamson, Phillips, Rabideau, and Baggett. Id.
R6. Claims 36 and 37 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Williamson, Phillips, Rabideau, Bolduc,
and Baggett. Final Act. 9; Ans. 2.
R7. Claims 40 and 41 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Williamson, Phillips, Rabideau, and
Wofford. Final Act. 9; Ans. 3.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 3—5), we decide the appeal
of non-statutory subject matter Rejection Rl of claims 1—12, 31, 33—43,
and 45 on the basis of representative claim 1. Based upon Appellants'
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further arguments (App. Br. 6—10), we decide the appeal of obviousness
Rejection R2 of claims 1—6, 10-12, 33—35, 38, 39, 42, 43, and 45 on the
basis of representative claim 1.
Remaining claims 7—9, 31, 36, 37, 40, and 41 in Rejections R3
through R7, not argued separately or substantively, stand or fall with the
respective independent claim from which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1—12,
31, 33—43, and 45, and we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellants' arguments. We incorporate such
findings, reasons, and rebuttals herein by reference unless otherwise noted.
However, we highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. $ 101 Rejection R1 of Claims 1—12, 31, 33—43. and 45
Issue 1
Appellants argue (App. Br. 3—5; Reply Br. 1—2) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the claims as a whole, as represented
by claim 1, do not amount to significantly more than an abstract idea and
therefore are directed to non-statutory subject matter?
Analysis
Appellants contend:
[The] Examiner has failed to establish a prima facie case,
as part of Step 2A [of the Alice4 analysis], firstly because
Examiner has missated and thus misapplied applicable law in
his evaluation of the claims. In the March 18, 2015 Final Office
Action ("Final OA"), Examiner states that "there is not a
distinction" between whether a claimed invention involves an
abstract idea as opposed to whether the claimed invention is
directed towards making a claim over the abstract idea. Final
OA at 2. This is not the law. Per the Interim Eligibility
Guidance, "[a]n invention is not rendered ineligible for patent
simply because it involves an abstract concept." Interim
Eligibility Guidance, Fed. Reg. 74628, 74622 at n. 9. As the
USPTO explains, "[c]ourts tread carefully in scrutinizing such
claims because at some level all inventions embody, use,
reflect, rest upon, or apply a law of nature, natural phenomenon
or abstract idea." The key question is whether the claim is
directed to or recites the judicial exception in the claim. Id. at
74622. See also 2013 Interim Guidance of Patent Subject
4 See Alice Corp. PtyLtd. v. CLS BankInt'l, 134 S. Ct. 2347, 2355 (2014).
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Matter Eligibility Computer Based Training at Slide 11 ("If the
invention is merely based on or involves an exception, but the
exception is not set forth or described in the claim, the claim is
not directed to an exception (Step 2A: NO) and is eligible.")
Here, the claims involve the idea of pricing errors, but
the claims are clearly not directed to "tie" up the concept of
determining pricing errors. The claims recite multiple
limitations, focusing on air fare verification and auditing for a
travel itinerary associated with a ticketing transaction that was
conducted, at least in part, with a computer reservation system.
There is nothing within the claims that would suggest that the
whole concept of determining pricing errors is claimed.
Consequently, the present claims are at least eligible for the
streamlined analysis of Part I.B.3 of the Interim Eligibility
Guidance, which provides the analogous example of the robotic
arm wherein an abstract concept is involved, but not the subject
of the claims.
App. Br. 3^4. Appellants further argue the claims are directed to
"significantly more" than the abstract idea because they recite "a particular
machine, in this case, a computer reservation system and a fare verification
system." App. Br. 5.
We first note Decisions of the Board are based upon relevant case law
as set forth by the Federal Circuit and the Supreme Court, and do not rely
upon examination guidelines provided by the Office to assist Patent
Examiners in determining subject matter eligibility during prosecution of
patent applications.5
In response to Appellants' contentions "the claims involve the idea of
pricing errors, but the claims are clearly not directed to 'tie' up the concept of
determining pricing errors," (App. Br. 4), the Examiner finds "the abstract
5 Cf. App. Br. 3^4 (discussing streamlined analysis in Part I.B.3 of USPTO
Interim Subject Matter Eligibility Examination Guidelines).
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idea of determining pricing errors in air fares is plainly recited in the claim,"
and "[t]he claims only manipulate abstract data elements and the data
processing functionality is directed to the abstract idea itself." Ans. 3.
In response, the Examiner further finds:
Rather than being a "particular" machine, these [claim]
elements are merely general purpose hardware elements
containing instructions to implement the abstract idea. The
Specification describes the "air fare verification system" as
"includ[ing] a data storage device, a processor, and a plurality
of components that perform the steps of the method when
operated on the processor." 10009 of the published application.
Rather than reciting a particular machine, this is similar to the
generic hardware elements in the ineligible claims of Alice.
Ans. 4.
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. v. CLSBankInt'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotations omitted). First, we "determine
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whether the claims at issue are directed to a patent-ineligible concept." Id.
at 2355. If so, we "examine the elements of the claim to determine whether
it contains an 'inventive concept' sufficient to 'transform' the claimed abstract
idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S.
at 72, 79). While the two steps6 of the Alice framework are related, the
"Supreme Court's formulation makes clear that the first-stage filter is a
meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the
Supreme Court "has not established a definitive rule to determine what
constitutes an 'abstract idea'" for the purposes of step one. Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S.
Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353—54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
6 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
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Turning to the claimed invention, claim 1 recites a "method for a fare
verification system to perform air fare verification and auditing for a travel
itinerary associated with a ticketing transaction that was conducted, at least
in part, with a computer reservation system." Claim 1 (preamble). The
claim limitations also require the steps of verifying that the air fare for a
travel itinerary has been correctly priced by an agent, and providing a
notification of any incorrect fare pricing.
Appellants allege:
Here, the claims involve the idea of pricing errors, but
the claims are clearly not directed to "tie" up the concept of
determining pricing errors. The claims recite multiple
limitations, focusing on air fare verification and auditing for a
travel itinerary associated with a ticketing transaction that was
conducted, at least in part, with a computer reservation system.
There is nothing within the claims that would suggest that the
whole concept of determining pricing errors is claimed.
Consequently, the present claims are at least eligible for the
streamlined analysis of Part I.B.3 of the Interim Eligibility
Guidance, which provides the analogous example of the robotic
arm wherein an abstract concept is involved, but not the subject
of the claims.
App. Br. 4.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Alice, 134 S. Ct. at 2354.
(citation omitted). If the concept is directed to a patent-ineligible concept,
we proceed to the "inventive concept" step. For that step we must "look
with more specificity at what the claim elements add, in order to determine
'whether they identify an 'inventive concept' in the application of the
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ineligible subject matter' to which the claim is directed." Affinity Labs of
Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1258 (quotingElec. Power
Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Under step one, we agree with the Examiner that the claimed
invention is "directed to the abstract idea of determining pricing errors, a
fundamental economic practice and method of organizing human activities."
Final Act. 3; see also Ans. 3. As the Specification itself observes, the
invention "relates generally to verification of prices for travel itineraries and,
more particularly, to an automated process for considering and applying
variances in the numerous factors that affect ticket pricing and ticket
reissues." Spec.^f 1. We find this type of activity, i.e., verifying prices for
travel itineraries, while taking into account variances of factors affecting
ticket pricing includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human
with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson").7
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts that merely price a product for sale.
For example, in OlP Technologies, the Federal Circuit concluded the
concept of price optimization after analyzing statistics about customer
responses ("offer based pricing") is abstract under step one. OIP
1 Our reviewing court further guides that "a method that can be performed
by human thought alone is merely an abstract idea and is not patent-eligible
under § 101." Cybersource, 654 F.3d at 1373.
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Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (2015),8 see also
Versata Dev. Grp. v. SAP Am., 793 F.3d 1306, 1333—34 (Fed. Cir. 2015)
(price-determination method involving arranging organizational and product
group hierarchies). Here, in agreement with the Examiner, we find the
claimed validation of correct air fare pricing is similarly abstract.
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus, transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
8 In OIP, our reviewing court held:
This concept of "offer based pricing" is similar to other
"fundamental economic concepts" found to be abstract ideas by
the Supreme Court and this court. See, e.g., Alice, 134 S.Ct. at
2357 (intermediated settlement); Bilski v. Kappos, 561 U.S. 593,
611, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010) (risk hedging);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (using advertising as an exchange or currency); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l
Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (data collection);
Accenture Global Servs., GmbHv. Guidewire Software, Inc., 728
F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an
insurance organization). And that the claims do not preempt all
price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (collecting cases); Accenture, 728 F.3d at 1345.
OIP Technologies, 788 F.3d at 1362—63.
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more than "well-understood, routine, conventional activity." Mayo, 556
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an "inventive concept" that
transforms the abstract idea of determining pricing errors into a patent-
eligible application of that abstract idea. Ans. 3—5. We agree with the
Examiner because, as in Alice, we find the recitation of a computer
reservation system and a fare verification system that includes a processor
that receives a request and provides notifications via a communications
network is simply not enough to transform the patent-ineligible abstract idea
here into a patent-eligible invention. See Alice, 134 S. Ct. at 2357
("[Cjlaims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention.").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to non-statutory subject matter. Therefore, we sustain the
Examiner's non-statutory subject matter rejection of independent claim 1,
and grouped claims 2—12, 31, 33—43, and 45 which fall therewith. See
Claim Grouping, supra.
2. $ 103 Rejection R2: Claims 1—6, 10-12, 33—35, 38, 39, 42, 43, and 45
Issue 2
Appellants argue (App. Br. 6—10) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of
Williamson, Phillips, and Rabideau is in error. These contentions present us
with the following issues:
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(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests "[a] method for a fare verification system to perform air
fare verification and auditing for a travel itinerary associated with a ticketing
transaction that was conducted, at least in part, with a computer reservation
system" that includes, inter alia, the limitations of:
receiving at the fare verification system a request ... to verily
that the air fare for the travel itinerary has been priced correctly
by an agent . . . determining, using the computer processor, if
the air fare passes each of the plurality of rules and restrictions
and verifying the air fare has been priced correctly by the agent
. . . [and] providing a verification response . . . [that] provides a
notification to a requestor of any pricing error made by the
agent during the ticketing transaction,
as recited in claim 1?
(b) Did the Examiner err in combining the cited prior art because
Williamson teaches away from the claims and is not a proper prior art
reference for obviousness?
(c) Did the Examiner err in combining the cited prior art because
Williamson teaches away from the claims such that there is no suggestion or
motivation to modify Williamson in view of Phillips and Rabideau?
Analysis
Issue 2(a) — All Limitations are Taught or Suggested
Appellants contend Williamson is concerned with a process for
determining pricing associated with new or reissued tickets and, in contrast,
"the present claim limitations involve verifying that the air fare, which is
associated with a ticketing transaction that was conducted, at least in part,
with a computer reservations system, has been priced correctly." App. Br. 7.
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Appellants emphasize, Williamson "actually discloses receiving requests for
a change to the ticket, not a request for verification, as called for by the
claims .... The ticket reconstruction logic [of Williamson] does not seek to
find pricing errors from tickets already issued." Id. Further, Appellants
allege " Williamson does not teach providing a notification of pricing error
that was made during the ticketed transaction, as called for by the claims."
App. Br. 8.
The predecessor to our reviewing court has held "one cannot show
non-obviousness by attacking references individually where ... the
rejections are based on combinations of references." In re Keller, 642 F.2d
413, 426 (CCPA 1981). "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference .... Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art." Id. at 425.
The Examiner finds, and we agree, the claims "read on verification of
pricing for any airline ticket and, as such, read on the verifications in
Williamson." Ans. 5 (emphasis added). Contrary to Appellants' argument,
we find the claims do not preclude verification of changed tickets, i.e.,
tickets that have already been issued. Consequently, we find Appellants'
"arguments fail from the outset because . . . they are not based on limitations
appearing in the claims." See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants further argue Rabideau does not teach that for which the
Examiner offers it, i.e., "that price verification is for a pricing done by an
agent and that the pricing error has been made by the agent." App. Br. 9
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(citing Final Act. 5). Further in this regard, Appellants argue Rabideau "does
not meet the claim limitation that there be indications or notifications of any
pricing errors made by the agent because the batch processing [of Rabideau]
would, by design, miss errors due to its sampling nature." App. Br. 9.
In response, the Examiner finds:
The claims do not exclude the possibility of missing errors.
Moreover, they merely require providing an audit report for a
single ticketing transaction faring verification . . . Rabideau
suggests sampling in order to limit large amounts of data
processing—a concern that one of ordinary skill would
recognize does not apply when only auditing a single ticketing
transaction.
Ans. 5. Accordingly, we agree with the Examiner's findings regarding the
teachings of the prior art combination, including Rabideau, in teaching or
suggestion the contested limitations of claim 1.
Issue 2(b) — Williamson does not Teach Away
Appellants contend " Williamson explicitly teaches that 'user 16 or the
administrator might instruct the ticket reconstruction logic 52 (FIG. 2) to
waive certain conditions or force a manual pricing of one or more candidate
solutions that had been eliminated'" (App. Br. 8 (quoting Williamson | 67)),
and further allege this type of action is purportedly described by the
Specification (13) as being what Appellants' invention is designed to
identify. Appellants allege the "Examiner has not made any reasoned
explanation as to why a system that causes pricing errors would be
considered by one skilled in the art to render claims that involve finding
those errors as obvious, and thus, the Examiner's burden of demonstrating
obviousness has not been met." Id.
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"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
The Examiner responds to Appellants' allegations of teaching away by
finding Williamson's option to waive conditions or force manual pricing is
merely an option, and this extra functionality "does not mean that it fails to
teach any of the claim [limitations] or that it teaches away from the
invention." Ans. 5. Teaching an alternative or equivalent method does not
teach away from the use of a claimed method. See In re Dunn, 349 F.2d
433, 438 (CCPA 1965).
Issue 2(c) — The Examiner Provided Proper Motivation to Combine
Appellants contend "Williamson cannot be combined with those
systems or modified by any of the ideas expressed by Phillips or Rabideau,
because Williamson teaches that agents can modify the fares to suit the
travelers' needs, (Williamson at | 67), thus creating opportunities for pricing
errors." App. Br. 8—9.
Our reviewing courts have held the relevant inquiry is whether the
Examiner has set forth "some articulated reasoning with some rational
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underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
With respect to the motivation to combine the references in the
manner suggested, the Examiner finds:
It would have been prima facie obvious to one having ordinary
skill in the art to incorporate . . . [creating an audit report for
errors based on the plurality of rules and restrictions] for the
same reason it is useful in Phillips-namely, to quickly catch
pricing errors and prevent lost revenue. Moreover, this is
merely a combination of old elements in the art of travel
planning. In the combination, no element would serve a purpose
other than it already did independently, and one skilled in the
art would have recognized that the combination could have
been implemented through routine engineering producing
predictable results.
Ans. 5. The Examiner further finds:
It would have been prima facie obvious to one of ordinary skill
in the art at the time of invention to incorporate the[ ] features
[of providing an indication of any pricing error made by the
agent and a discrepancy amount] for the same reason they are
useful in Rabideau-namely, to assist in reviewing travel
document records for accuracy and for collecting balances due
from agents. Moreover, this is merely a combination of old
elements in the art of travel planning. In the combination, no
element would serve a purpose other than it already did
independently, and one skilled in the art would have recognized
that the combination could have been implemented through
routine engineering producing predictable results.
Id.
We find these stated reasons meet the articulated reasoning/rational
underpinning requirement of KSR. Moreover, Appellants have not
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Appeal 2016-005945
Application 12/027,792
demonstrated that the Examiner's proffered combination of references would
have been "uniquely challenging or difficult for one of ordinary skill in the
art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor have Appellants
provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2—6, 10-12, 33—35, 38, 39, 42, 43, and 45 which fall therewith. See
Claim Grouping, supra.
3. Rejections R3—R7 of Claims 7—9, 31,36, 37, 40, and 41
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 through R7 of claims 7—9, 31, 36, 37, 40, and
41 under § 103 (see App. Br. 1), we sustain the Examiner's rejection of these
claims. Arguments not made are waived.9
9 Appellants merely argue, "[f]or purposes of this Appeal, Appellants] will
address Examiner's rejections in the context of claim 1 with the intent that
all claims are argued as a group." App. Br. 1.
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Appeal 2016-005945
Application 12/027,792
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1—2) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
CE.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to non-statutory subject
matter Rejection R1 of claims 1—12, 31, 33—43, and 45 under 35 U.S.C.
§101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R7 of claims 1—12, 31, 33—43, and 45 under 35
U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—12, 31, 33—43,
and 45.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
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