Ex Parte VegaDownload PDFPatent Trial and Appeal BoardSep 11, 201411857168 (P.T.A.B. Sep. 11, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LILLY MAE VEGA __________ Appeal 2012-007081 Application 11/857,1681 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lilly Mae Vega (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1, 9, and 10. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 1 The Appellants identify Lilly Mae Vega as the real party in interest. App. Br. 3. Appeal 2012-007081 Application 11/857,168 2 SUMMARY OF DECISION We AFFIRM but denominate the affirmance as a NEW GROUND OF REJECTION.2 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer-implemented method for facilitating a services marketplace between multiple buyers and sellers of services, comprising: defining a set of service classification and material terms; registering, by a computer, a plurality of participants of the service marketplace; compiling, by the computer, offers to sell services and requests to buy services provided by said participants, wherein the offers and the requests are described in said set of service classification and material terms; automatically evaluating and matching the offers and the requests, by the computer, based upon the degree of identicalness of said set of service classification and material terms recited in the offers and the requests; communicating, by the computer, to matched participants of the result generated by the evaluating and matching step; the offers being unknown to service buyers and requests being unknown to service sellers prior to the communicating step; 2 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Oct. 28, 2011) and Reply Brief (“Reply Br.,” filed Mat. 27, 2012), and the Examiner’s Answer (“Ans.,” mailed Feb. 28, 2012). Appeal 2012-007081 Application 11/857,168 3 data-mining, by the computer, the offers and the requests to discover at least one transactional attribute of one, a portion, or all of the participants; and simulating, by the computer, the marketplace based upon the results of the data-mining step and operational constrains of one of said participants, wherein the operational constrains include asset, cash, capital, inventory, labor, staff, debt, liability, intellectual property, customer preference, competitors' actions and plans, suppliers' actions and plans so as to determine an optimized business action or plan from an integrated and long term perspective. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Morrisey Lupien Summers US 5,418,844 US 5,689,652 US 6,236,955 B1 May 23, 1995 Nov. 18, 1997 May 22, 2001 The following rejections are before us for review: 1. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Lupien and Summers. 2. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lupien, Summers, and Morrisey. ISSUE Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Lupien and Summers and claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Lupien, Summers, and Morrisey? Appeal 2012-007081 Application 11/857,168 4 FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Lupien and Summers. As a preliminary matter, we observe that the position the Examiner has taken in the Examiner’s Answer is not the same as the one taken in the Final Rejection. In the Final Rejection, it was stated that “Lupien is directed toward buying and selling of stocks rather than services as in the instant application.” Final Rej. 5. Then it was stated that “Official notice is take[n] that services as items to be bought and sold are old and well-known.” Id. In the Examiner’s Answer, it is repeated that “Lupien is directed toward buying and selling of stocks rather than services as in the instant application.” Ans. 5. But then it gives a definition for “Stock,” adding: “Note that a stock may include certain services, among them the right to vote in the election of directors.” Ans. 6. Although both the Final Rejection and Answer present the same statement of the rejection the Appeal Brief correctly characterizes the grounds of rejection on appeal as “[w]hether Claim 1 is unpatentable under 35 U.S.C. § 103(a) over Lupien in view of Summers and Official Notice.” App. Br. 10 (emphasis added). Notwithstanding the change in course, we understand the dispute to be over whether it would have been obvious to substitute services for the goods disclosed in Lupien. There appears to be no dispute that Lupien is directed towards buying and selling stocks rather than services. But, according to the Appeal 2012-007081 Application 11/857,168 5 Appellant, “a good (such as a stock) is not the same as a service.” App. Br. 11. As a challenge to the rejection, the basic argument that the prior art is directed to goods rather than services is not a persuasive argument. Where, as here, there is insufficient evidence that the claimed process yields unexpected results, substituting known services for the goods in Lupien would have been obvious. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.) But a careful reading of the claim reveals that it is directed to using a computer. As claimed, a computer is used to perform certain functions; those functions being registering, compiling, automatically evaluating and matching, communicating, data-mining, and simulating. The Examiner found Lupien discloses using a computer to perform all the functions claimed but for simulating and Summers discloses using a computer for simulating. See Ans. 4–6. These findings are not disputed. Given these undisputed findings, it is reasonable to conclude that, absent unexpected results—of which there is insufficient evidence on the record—using a computer to perform all the steps claimed (i.e., registering, compiling, automatically evaluating and matching, communicating, data-mining, and simulating) would have been obvious over Lupien and Summers to one of ordinary skill. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appeal 2012-007081 Application 11/857,168 6 As to the dispute over whether it would have been obvious to substitute services for the goods disclosed in Lupien, this goes to the descriptive material in the data the computer is processing via the steps claimed (i.e., registering, compiling, automatically evaluating and matching, communicating, data-mining, and simulating). The difference between data representing features of a marketplace for stocks (as in Lupien) and features of a marketplace, for example, a services marketplace (as claimed) is a difference in the descriptive material in the data the computer is processing. Neither the computer nor the steps claimed (i.e., registering, compiling, automatically evaluating and matching, communicating, data- mining, and simulating) are functionally affected by the data representing features of a services marketplace as opposed to, for example, a marketplace for stocks. Such descriptive material about a services marketplace does not functionally affect either the computer or the data. Changing the descriptive material in the data will not change how the computer performs the steps as claimed. From that perspective, the claim limitations that feature the business of a services marketplace add no novelty to the computer-enabled method as claimed. Cf. King Pharms, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278 (Fed. Cir. 2010) (“The ‘informing’ limitation adds no novelty to the method, which is otherwise anticipated by the prior art . . . . This relationship, however, is not functional. Informing a patient about the benefits of a drug in no way transforms the process of taking the drug with food.”) Even if we assume arguendo that there is an effect in processing data having content specifically descriptive of a services marketplace, the effect Appeal 2012-007081 Application 11/857,168 7 is at best limited to the conveying of a type of information. There is no evidence that the effect is a consequence of a structural or functional change in the computer or in the steps that process data as claimed. The “services marketplace” difference between the claimed computer-enabled method and the goods marketplace of the prior art amounts to a difference in the type of information the computers are directed to process. This sort of difference in the type of information to be processed is a difference in descriptive material. Patentable weight need not be given to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582–83 (Fed. Cir. 1994) and In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). The Appellant has not come forward with evidence sufficient to show that the structure of the claimed computer or the data-processing steps claimed are functionally affected by processing data for a “services marketplace” as opposed to a goods marketplace. Absent such evidence, it is reasonable to conclude that the claim limitations directed to a “services marketplace” are nonfunctional and as such fall into the category of patentably inconsequential subject matter. See Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative). Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d at 1339. Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Appeal 2012-007081 Application 11/857,168 8 For the foregoing reasons, we are not persuaded as to error in the rejection on the ground that the claimed process is directed to a services marketplace. The reasons also apply with respect to such descriptive material as “intellectual property” and “supplier’s actions and plans” which the Appellant specifically mentions are not disclosed. See App. Br. 15. However, our reasoning departs from that of the Examiner. Accordingly, we denominate the affirmance as a new ground of rejection. Accordingly, we sustain the rejection of the claim 1 under § 103 as being unpatentable over Lupien and Summers but because our reasons depart from those of the Examiner, we will denominate the rejection as a NEW GROUND OF REJECTION. The rejection of claims 9 and 10 under 35 U.S.C. §103(a) as being unpatentable over Lupien, Summers, and Morrisey. Claims 9 and 10 depend from claim 1. The Appellant argues that the rejection should be reversed because one of ordinary skill in the art “would not look to Morrisey to reach the subject matter of claims 9 & 10.” App. Br. 16. “The Final Office Action states that the subject matter of claims 9 & 10 are obvious because all three references are in the field of electronic transactions and one would be motivated by a desire for greater accuracy in making a choice to buy a service.” Id. “[O]nee of ordinary skill in the art would not look to Morrisey [for routing calls] when faced with the problems of enhancing a service marketplace to determine indications of a participant's social intelligence.” App. Br. 17. We are not persuaded by this argument as to error in the rejection. Appeal 2012-007081 Application 11/857,168 9 The Examiner has taken a position that the claims are directed to computer-enabled processing of electronic data. That is a reasonably broad construction of the claims and consistent with our reading of claim 1 as explained above. Given this construction, Morrisey, which is also directed to computer-enabled processing of electronic data, is in the field of the Appellant’s endeavor. The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). Further, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Appellant also argues that Morrisey does not disclose the claim 10 limitation “in conjunction with the at least one transactional attribute of one, a portion, or all the participants.” App. Br. 17. But the Specification defines an “attribute” of the participants as information “such as consumption profiles, habits and preferences.” Specification ¶102. In light of the Specification, said claim limitation to an “attribute” is reasonably broadly construed to cover nonfunctional descriptive material. Given this construction, for the same reasons discussed above with respect to the difference between services and goods in the context of the computer- Appeal 2012-007081 Application 11/857,168 10 enabled process for performing the steps claimed, the distinction over Morrisey because of a conjunction with an “attribute” is one of nonfunctional descriptive material and as such it cannot alone render the claimed subject nonobvious. Accordingly, the rejection is sustained. Our reasoning builds on the reasoning used in affirming the rejection of claim 1 and it similarly departs from that of the Examiner. Thus, the affirmance of claims 9 and 10 is also denominated as a NEW GROUND OF REJECTION. CONCLUSIONS The rejection of claim 1 under 35 U.S.C. §103(a) as being unpatentable over Lupien and Summers is affirmed but denominated as a new ground of rejection. The rejection of claims 9 and 10 under 35 U.S.C. §103(a) as being unpatentable over Lupien, Summers, and Morrisey is affirmed but denominated a s new ground of rejection. DECISION The decision of the Examiner to reject claims 1, 9, and 10 is affirmed but the grounds are denominated as new grounds of rejection. Appeal 2012-007081 Application 11/857,168 11 NEW GROUNDS This decision contains new grounds 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 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 . . . . (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). AFFIRMED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation