Ex Parte Toompere

Patent Trial and Appeal Board

Apr 11, 2016

12704016 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121704,016 02/11/2010 Ragnar Toompere
20306 7590 04/12/2016
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10-007 5305
EXAMINER
LEIVA, FRANK M
ART UNIT PAPER NUMBER
3717
MAILDATE DELIVERY MODE
04/12/2016 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 RAGNAR TOOMPERE
Appeal2014-002590
Application 12/704,016
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1, 3-9, 11-21, 23-33, 35-39, 41--47, 49-59, 61-71, and
73-76. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, and enter a NEW GROUND OF REJECTION
pursuant to our authority under 3 7 C.F .R. § 41. 50(b ).
Appeal2014-002590
Application 12/704,016
THE INVENTION
Appellant's invention relates to on-line gaming for games such as
poker. Spec. 4. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A method, performed by a gaming server,
wherein an account is associated with a first alias,
the method comprising:
the gaming server allowing a client entity using
the first alias to access the gaming server;
the gaming server receiving a first request from
the client entity to join a first instance of a game
hosted by the gaming server and to use a second
alias during the first instance of the game;
in response to receiving the first request, the
gaming server including the client entity in the first
instance of the game;
during play of the first instance of the game,
the gaming server using the first alias to represent
the account to the client entity, while using the
second alias to represent the account to other client
entities involved in the first instance of the game;
the gaming server recording a first set of
events occurring during the first instance of the
game, wherein the recorded events in the first set
represent the account with both the first alias and
the second alias;
the gaming server determining that the client
entity has won the first instance of the game; and
after completion of the first instance of the
game, the gaming server providing a first version
of the first set of events to one of the other client
entities, wherein the first version of the first set of
events uses the second alias to represent the
account.
2
Appeal2014-002590
Application 12/704,016
THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejections:
Kelly US 2009/0104960 Al Apr. 23, 2009
Ask MetaFilter, eBay usernames with ***between to
characters ... fraud? snipes? what is this?
(http://ask.metafilter.com/105209/ebay-usemames-with-
between-to-charactersfraud-snipes-what-is-this) (last accessed
Mar. 6, 2012) ("eBay Usemames").
eBay, Bid History
(http:// offer. ebay. com/ws/ eBayISAPI. dll ?View Bids&_trksid=
p4340.12565&rt=nc&item=150771571637) (last accessed Mar.
4, 2012) ("eBay Bid History").
eBay, eBay Auction ended
(http://www.ebay.co.uk/itm/Marzocco-Linea-2-Group-
Espresso-CoffeeMachine-/321007024964) (posted Oct. 28,
2012) (last accessed Mar. 27, 2013) and
eBay, eBay Auction ended bid history
(http://offer.ebay.co.uk/ws/eBayISAPI.dll?ViewBi
ds&_trksid=p2047675.12565&rt=nc&item=321007024964)
(posted Oct. 28, 2012) (last accessed Mar. 27, 2013)
(collectively "eBay Auction ended").
Claims 1, 3-9, 11-21, 23-33, 35-39, 41--47, 49-59, 61-71, and 73-76
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kelly,
eBay U semames, eBay Bid History, and eBay Auction Ended (the eBay
Usemames, eBay Bid History, and eBay Auction Ended documents shall
hereinafter be collectively referred to as the "eBay Documents"). 1
1 The heading of the rejection indicates that claims 1-76 are rejected under
this ground. Final Act. 3; Ans. 2. However, claims 2 and 40 have been
cancelled (id. at 2), and the Examiner indicated that claims 10, 22, 34, 48,
60, and 72 stand objected to, and would be allowable if rewritten to include
3
Appeal2014-002590
Application 12/704,016
OPil'.rION
Unpatentability of Claim 1
The Examiner finds that Kelly discloses all of the elements of claim 1
except for using different alias identifiers when reporting results to the client
entity. Final Action 3--4. The Examiner relies on the eBay Documents as
disclosing the claim elements missing from Kelly. Id. at 4. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Kelly with the teachings of the
eBay Documents to achieve the claimed invention. Id. According to the
Examiner, a person of ordinary skill in the art would have been motivated to
do this so that a player would be able to easily identify his score, yet still be
able to maintain anonymity with respect to the other players. Id.
In traversing the rejection, Appellant raises only one argument.
Appellant argues that two of the three eBay documents (eBay Bid History
and eBay Auction Ended) post-date the filing date of Appellant's application
and, therefore, do not constitute prior art to the claimed invention. Appeal
Br. 9-14. Consequently, Appellant argues that the Examiner failed to make
out a prima facie case ofunpatentability. Id. at 14.
In response, the Examiner states that the Final Office Action grounds
of rejection should have characterized eBay Bid History and eBay Auction
Ended as "evidence" instead of "applied references." Ans. 5. The Examiner
states that use of evidence that post-dates the date of invention is permitted
under Aianual of Patent Examining Procedure (MPEP) § 2124 and In re
Wilson, 311F.2d266 (CCPA 1962). Id. The Examiner takes the position
all of the limitations of the base claim and any intervening claims. Final
Action 1 (Office Action Summary), 17.
4
Appeal2014-002590
Application 12/704,016
that post-dated documentary evidence may be relied on to show that
characteristics of prior art products were known. Id.
In reply, Appellant argues that reliance on MPEP § 2124 to use post-
filing date documentary evidence to establish characteristics of prior art
products is limited to invariable physical or chemical properties. Reply
Br. 6. In essence, Appellant contends that MPEP § 2124 and Wilson cannot
be relied on as supporting evidence of a historical fact or event. 2 Id.
Appellant also argues that it is well known that information displayed by
internet web sites may change frequently. Id. at 6.
Apart from the contention that two of the three eBay documents fail to
establish the disclosed factual conditions prior to their date of the invention,
Appellant presents no evidence that tends to controvert the Examiner's
findings of fact with respect to the contents of the eBay documents. The
question presented to us, therefore, is whether the Examiner made out a
prima facie case of unpatentability that is unrebutted by Appellant.
The Federal Circuit explains that "[ t ]he concept of prima facie
obviousness in ex parte patent examination is but a procedural mechanism to
allocate in an orderly way the burdens of going forward and of persuasion as
between the examiner and the applicant." In re Piasecki, 745 F.2d 1468,
1471-72 (Fed. Cir. 1984).
As adapted to ex parte procedure, Graham is interpreted as
continuing to place the "burden of proof on the Patent Office
which requires it to produce the factual basis for its rejection of
an application under sections 102 and 103". In re Warner, 379
F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967). After a
2 This would presumably include post-filing date documentary evidence that
tended to show that a sale or public use occurred before the filing date. We
do not reach or resolve this issue in our decision.
5
Appeal2014-002590
Application 12/704,016
prirna facie case of obviousness has been established, the
burden of going forward shifts to the applicant.
Id. If rebuttal evidence of adequate weight is produced, the holding of prima
facie obviousness, being but a legal inference from previously
uncontradicted evidence, is dissipated. Id. "If examination at the initial
stage does not produce aprimafacie case ofunpatentability, then without
more the applicant is entitled to grant of the patent." In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992).
On appeal to the Board, an appellant my attempt to overcome an
examiner's obviousness rejection by submitting arguments and/or evidence
to show that the examiner made an error in either ( 1) an underlying finding
of fact upon which the final conclusion of obviousness is based; or (2) the
reasoning used to reach the legal conclusion of obviousness. Ex parte Frye
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). However, the Board
will generally not reach the merits of any issues not contested by an
appellant. Id.
We agree with Appellant that it was improper for the Examiner to rely
on two eBay internet web pages that post-date Appellant's filing date. We
find persuasive Appellant's argument that information displayed by web
pages may change frequently. Appeal Br. 6. The Examiner's rejection lacks
evidence that tends to establish that what is disclosed in eBay Bid History
and eBay Auction Ended accurately reflects a condition that existed at or
before the filing date. For this reason, we determine that the Examiner failed
to set forth a prima face case ofunpatentability. Consequently, the burden
of production never shifted to Appellant to come forward with evidence that
controverts the Examiner's findings of fact.
6
Appeal2014-002590
Application 12/704,016
For the foregoing reasons, we do not sustain the Examiner's rejection
of claim 1.
Unpatentability of Claims
3-9, 11-21, 23-33, 35-39, 41-47, 49-59, 61-71and73-76.
Claims 16, 28, 39, 54, and 66
Claims 16, 28, 39, 54, and 66 are independent claims. Claims App.
As with claim 1, the Examiner relies on eBay Bid History and eBay Auction
Ended to support the rejection of these claims. Final Action 5-11. The
rejection of these claims suffers from the same infirmity that we have
identified with respect to the rejection of claim 1. For the same reasons, we
do not sustain the rejection of claims 16, 28, 39, 54, and 66.
Claims 3-9, 11-15, 17-21, 23-27, 29-33, 35-38, 41-47, 49-53, 55-59,
61-65, 67-71, and 73-76
These claims depend, directly or indirectly from independent
claims 1, 16, 28, 39, 54, or 66. Claims App. The rejection of these claims
suffers from the same infirmity that we have identified with respect to the
rejection of the independent claims. For the same reasons, we do not sustain
the rejection of claims 3-9, 11-15, 17-21, 23-27, 29-33, 35-38, 41--47, 49-
53, 55-59, 61-65, 67-71, and 73-76.
New Ground of Rejection
Independent Claims 1, 16, 28, 39, 54, and 66
Notwithstanding the foregoing, we take Official Notice of the fact that
eBay.com is a well-known online auction and shopping website in which
people and businesses buy and sell a broad variety of goods and services.
We note that there is a considerable amount of information concerning
eBay auction and bidding procedures available on the Internet Archive's
7
Appeal2014-002590
Application 12/704,016
\Vayback ~v1achine, which information is accessible on the internet at
https://web.archive.org. MPEP § 2128 (9th Ed., Mar. 2014) instructs that
"[p]rior art disclosures on the Internet or on an on-line database are
considered to be publicly available as of the date the item was publicly
posted." Electronic documents are archived on the Wayback Machine and
are dated as of the archived date of the website. 3 A relatively small sample
of the available literature on eBay auction procedures is attached as Exhibits
to this Decision in the accompanying Appendix. We find that each of the
Exhibits contained in the Appendix was publicly accessible prior to the
filing date of Appellant's invention. We further find that the Exhibits
contained in the Appendix are evidence of public use of eBay buyer-seller
transactions that took place prior to the filing date of Appellant's invention
and took place in accordance with the procedures described therein.
Appendix Exhibit A entitled "Getting Started on eBay" explains that,
in order to buy and sell on eBay, a user must register as a member.
Appendix Exhibit B entitled "How will eBay protect my privacy" explains
that eBay uses a variety of techniques to safeguard the identity of members
and data that is shared between users including that only the seller is allowed
to view a user's user ID. Appendix Exhibit C entitled "How do I buy an
item" explains that a user can buy an item on eBay by finding an item,
3 "Electronic documents that are not themselves dated and have no posting
date, but are/were available as links on a website that is archived on the
Wayback Machine, are dated as of the archived date of the website." See
Wynn W. Coggins, Prior art in the Field of Business Method Patents -
When is an Electronic Document a printed Publication for Prior Art
Purposes? AIPLA (Fall 2002) (USPTO)
(http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp ).
8
Appeal2014-002590
Application 12/704,016
reading a description of the item, bidding on an item, and paying for the
item. Id. Appendix Exhibit D entitled "Bidding Overview" explains that:
eBay limits how your bid history information is displayed by
using anonymous names. When the highest bid, reserve or Buy
It Now price on an item reaches or exceeds a certain level, other
members cannot view your member-specific information-such
as your User ID--on the Bid History page. Your complete User
ID is shown to the seller of this item only. Bidders are assigned
anonymous names, such as a***b. These anonymous names are
used consistently across all auctions that exceed a certain level.
Id. at 2. Appendix Exhibit E entitled "How do I pay for my item?" explains
how buyers and sellers arrange for making payment of the purchase price
and arranging for shipment and delivery of the purchased item. Finally,
Appendix Exhibit F entitled "Receiving payment" explains procedures for
exchanging the purchase price between the buyer and seller.
We find that Exhibits A through F in the accompanying Appendix
cure the deficiencies that the Appellant raises with respect to the publication
dates of eBay Bid History and eBay Auction Ended in the Appeal Brief and
Reply Brief. We further find that such Appendix Exhibits satisfy the
limitations for which the Examiner relied on the eBay Documents in the
Final Office Action for each of the independent claims.
We conclude that it would have been obvious for a person of ordinary
skill in the art at the time of the invention to combine Kelly with the eBay
user registration, auction, bidding, payment, and account management
procedures that were in public use and otherwise available to the public prior
to the filing date of the application, as evidenced by the accompanying
Appendix Exhibits, to achieve the invention claimed in each of independent
claims 1, 16, 28, 39, 54, or 66. A person of ordinary skill in the art would
9
Appeal2014-002590
Application 12/704,016
have done this for essentially the same reasons that the Examiner articulated
in the rejection of claims 1, 16, 28, 39, 54, and 66 in the Final Office Action.
The Dependent Claims
No inference should be drawn from the failure to make a new ground
of rejection of other claims. Should there be further prosecution before the
Examiner, we leave to the Examiner to determine whether to make a new
ground of rejection of any other claims. 4
DECISION
The decision of the Examiner to reject claims 1, 3-9, 11-15, 17-21,
23-27, 29-33, 35-38, 41--47, 49-53, 55-59, 61-65, 67-71, and 73-76 as
unpatentable over Kelly and eBay documents is REVERSED.
We enter a NEW GROUND OF REJECTION rejecting claims 1, 16,
28, 39, 54, or 66 as unpatentable under 35 U.S.C. § 103(a) over Kelly and
the evidence of prior public use of eBay auction procedures described in
Exhibits A through F of the accompanying Appendix.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 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
4 See 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure
(MPEP), 8th ed., rev. 8, July 2010, § 1213.02. Under 37 C.F.R. § 41.50(b),
the Board may, in its decision, make a new rejection of one or more of any
of the claims pending in the case. Because the exercise of authority under
37 C.F.R. § 41.50(b) is discretionary, no inference should be drawn from the
decision to exercise that discretion with respect to some but not all of the
claims on appeal.
10
Appeal2014-002590
Application 12/704,016
T\VO ~v10NTHS FRO~v1 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
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 41.50(b)
11
Appeal2014-002590
Application 12/704,016
APPENDIX~
Exhibit A. Getting Started on eBay
(https://web.archive.org/web/20091212004527 /http://pages.ebay.com/help/
account/ gettingstarted.html).
Exhibit B. How will eBay protect my privacy
(https://web.archive.org/web/20091212015104/http:/lpages.ebay.com/help/
account/ questions/protectpri vacy .html).
Exhibit C. How do I buy an item
(https://web.archive.org/web/20091211231857 /http://pages.ebay.com/help/
buy/ questions/buyitem.html).
Exhibit D. Bidding Overview
(https://web.archive.org/web/20071011005128/http://pages.ebay.com/help/
buy/bidding-ov.html).
Exhibit E. How do I pay for my item
(https://web.archive.org/web/200912120211 OO/http://pages.ebay.com/help/
buy I questions/paymentoptions. html).
Exhibit F. Receiving payment
(https://web.archive.org/web/20091211220104/http://pages.ebay.com/help/
pay/receivingpayment.html).
5 The documents listed in this Appendix were accessed on April 4 and 8,
2016.
12
EXHIBIT A
4/8/2016
Getting started on eBay
Registration & signing in
Managing your account
Sharing with eBay members
Protecting your account
Rules & policies
eBay glossary
eBay acronyms
A-Z index
Getting started
: http://pages.ebay.com/help/accounUgetting-started.html : Go :
{..;..;..;..;..;..;..;..;..;~'
Register
Read information for new members
Learn about trust and safety on eBay
Start buying and selling
Weicome to eBay. This is yo:.1r place lo buy what you want. seli wha:. y:;u
have, and make a fsw friends while you're al it Here's how to get slE.ded:
~'-1;
Y:;u can brotJ-...se for ;tei·:is as 8 quest butt:; buy and sen, you need to
rsD~ster. As '-' rnE.1mber you c3n:
Buy and seli i:.erns on eBay.
Track up to 200 items at a time.
Create revie\NS Bnd post to ou: cornrnun;ty bGards.
Us•J My •J8ay lo manage your buyi:1g and selli:11oi activitios.
Wher: you"re ready, register lo ~im slarled.
When you registsr you"ll be asked to read and aqree lG our User
Agreement.
Lec.:m: hcN.,1 to get the help you ne~Jdby :...1sin~1 our on!ine he!p system.
Stay ;n touch vv~th ou:" corn:nu;1ity. VV0 hc.rve 3 numbe: of community
resources to help you slay infor:r1od about the latest evrn1ls, ;irograrns.
ar:d r.evv'>.
Us~> My ~>Bay to help yo:J trS~'ill1'l'>, ~lin by searching or browsing fo:
itmr:s you're in!er(;~'tGd in. Thme ar~> loh of wG third-party privacy certification programs likG TRUST~> to h~ilp
rnak'l sum cur privacy pmdic~is are c:onsis!ent with our lfllPI obligatim:s
and indt;stry bm;t pmctices.
~~('=' VVs g~ve you control. in r\.1y eBay preferences, ovsr hovv vve uss your
persona! :n"forrn8ti:;n :...:r contact you.
Vi/e use soph;sticB.ts-d safE.1guc.,tds !:kE.1 fo'G\·vans, E.1ncrypt:on c_:md Secu:"e
Socket Layers !o help protect your personal information from loss, thdt,
and :...1nautho:"ized accE.1ss and disc!osure.
V1/G us(; a vmiflty of tGchniqum; lo ~'afoguard your ID ar.d hfllp protrn:t data
:hat is sharer: betwee:i users. For exarnple:
Or:ly !he sofor is allowed to view your user ID whrn1 you bid on w1 i!e:n.
O\r1(;r bidder~' sGe m:ly ar.onyrnous IDs.
Your (;mail addrm;s is disclos,id only tc rnrnnbers with whorn you ar~>
invo!v,id in m1 GBay transaclim:.
You can co1:tact other rnernbers oniy fo: the purpose of fBcil::ating
tra1:sactio:is.
https://web.archive.org/web/20091212015104/http://pages.ebay.com/help/account/questions/protect-privacy.html
Privacy Policy
Minimizing unwantGd email
Cookies, web beacons, and
your privacy
,, Tnist and safety tutorials
Security Center
1/1
EXHIBIT C
4/8/2016 How do I buy an item?
http://pages.ebay.com/help/buy/questions/buy-item.html jiiJ
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'ome ~~ IL~> .C'N .) c .V'>' d 11(" ',I·'
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Buying basics
Ail about bidding
Managing your buying activity
Resolving buying prob!ems
eBay giossary
eBay acronyms
A-Z index
You can sh:;p for aimost a:iyt:ling o:i eBay. Ge:. started using these steps:
1. Find ;m ii.'ilffi. Enter keywords :nto tl:e search bo1< located at the t:;p ot
any page, or browse lhmugh our iist of ca!eg:;ries on the horr.e pags.
2. L~:.~rn ab\..':u~. th\3 :t~:~n ~/o:..: f\..':unti. Rsad the item description carefully. If
ycu :mv~2 any qw2st:ons about the :ts-m, you can ask thE.1 s•2n~2~· by cncki;1g
th~J l!P ... sk s•Jl;~Jt 3 qw2stion° link.
3. ~~ev:H~.._ .. thH ~en~:r~s F~3~db;~ck. v:evv the seller's busi;1ess r~Jputation by
!ool\ing at hi'> or tmr Feedback Score, and r(> corr.rnrnit'> :dt by
pmviou'> buyer'> to be SUf'l that !his is a 5e::er you foel ycu cm1 !rm't.
4. E~ki Qf Buy ~t NQ'.-~··, Chf~ck thf: ~tern pa•JG tc· 2;ee vi/hat p:Jrcha~;n Gption~;
are ava:lab:e. You c:an eitha1· place a bid on an iten1 Gr pt:1·chase it
instantly '1sin[J Buy It Now. Ramsrnba1·, ail bids are activs 'mtil the m:cti:;n
ends. :f yot: wi1: a listing, you're obkjaled to con::i:e!e tile transaction.
5. ~:~a~/ f\..':r th~: :t~::n. After y0Ll\1e vvon or bought the ;:.ei·:i, send your
payrnsr.t to the ssllsr within t:1ree days. If you wa1·:t to pay with one Gf !he
electr;.:1·:ic: payment methods offered by the seiler, click Uie Pay Now
bullm: en tho i!ern page m email r:mificatim:. Otherwise. the sdm· wili let
yGL' knovv how and who"e to send yoc1r pay:nenl. If yoc1'm pick:ng up the
'tern, you car: pay by any rn'J!hod the seller accepts (:ncl:Jdir:f,1 cash).
Ba sure lo pay using one of !he methods spec:fisd by the seller.
Checks, money orders, and bank vv:rs tr8nsfers aren:t alk:wed fr;r most
purchasos. E:xceptio:1s inc:ude ·,;ehicles, capital ar:d business equ:prr:o:1!,
real 'Jslate. ilerr:s in the A.r_kilt On:y category. and local pickup. Fm specifics
about payrnent rr.ethods, see our Accepted Payments policy.
https://web.archive.org/web/20091211231857/htlp://pages.ebay.com/help/buy/questions/buy-item.html
Buyer tips
Ail about buying
Different ways of buying
1/1
EXHIBIT D