Ex Parte Walker et alDownload PDFPatent Trial and Appeal BoardNov 14, 201711926769 (P.T.A.B. Nov. 14, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/926,769 10/29/2007 Jay S. Walker 058407/426802 4999 826 7590 11/16/2017 ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER BROWN, LUIS A ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 11/16/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAY S. WALKER, JOSE A. SUAREZ, T. SCOTT CASE, MICHIKO KOBAYASHI, and ANDREW P. GOLDEN Appeal 2016-005177 Application 11/926,769 Technology Center 3600 Before JOSEPH L. DIXON, JOHN A. JEFFERY, and LARRY J. HUME, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-005177 Application 11/926,769 STATEMENT OF THE CASE Appellants1 request rehearing under 37 C.F.R. § 41.52 of our Decision mailed September 1, 2017. In our decision, we affirmed the Examiner’s rejection of claims 1—4, 30, 35—39, 42, and 43 under 35 U.S.C. § 101. We reconsider our Decision in light of Appellants’ arguments in the Request, but we decline to change the Decision. We are not persuaded we misapprehended or overlooked the points argued by Appellants in rendering our Decision. Additionally, we do not find that our Decision was an undesignated new ground of rejection. We deny Appellants’ Request for Rehearing. The claims are directed to a system for utilizing redemption information. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for computerized determination of whether to accept an offer, the method comprising: receiving, at a processor, a first offer from a customer including a first offer price for a product; receiving, at the processor, a location associated with the customer; receiving retail price information of the product from a plurality of merchants offering the product in a geographic area that is associated with the location; identifying a plurality of merchant tiers for the geographic area based on the retail prices received from the plurality of merchants; 1 Appellants indicate that the real party in interest in this appeal is Groupon, Inc., the assignee. (App. Br. 2). 2 Appeal 2016-005177 Application 11/926,769 determining a lowest acceptable price for each merchant tier; accessing, by the processor, product information that is stored in a storage device that identifies the lowest acceptable prices of the product at retail locations in each merchant tier for the geographical area, wherein the lowest acceptable prices are different from the first offer price; and determining, by the processor, whether to accept the first offer based on a comparison between the first offer price and the lowest acceptable prices of the product in each of the merchant tiers for the geographical area. ANALYSIS 35 U.S.C. § 101 Claims 1—4, 30, 35—39, 42, and 43 In the Request, Appellants contend “[t]he Board’s [a]ffirmance is an [u]ndesignated [n]ew [g]round of [r]ejection” and the decision introduced “changes the thrust of the rejection.” (Request 3). Appellants specifically contend the Board alleged: the claims are “directed to offer and acceptance of a price.” See Decision on Appeal, page 9. Specifically, the Decision on Appeal states that “[cjlaim 1 as a whole, as the Examiner fairly determined, is directed to offer and acceptance of a price.” Id. But this characterization was never made by the Examiner in the Final Rejection. (Request 3). Appellants further contend: Instead, the Final Rejection stated that “the claims are directed towards a method for receiving an offer and a location from a customer, accessing product information that identifies an average retail price of the product in a geographical area similar to the customer location, and determining whether to accept the offer based on the offer price and the average retail price.” 3 Appeal 2016-005177 Application 11/926,769 (Request 3) (emphasis added). Additionally, Appellants argue: While the Final Rejection thereafter disparaged constituent components of these concepts as allegedly “fundamental” or “simple” or “a generic computer process,” nowhere did the Final Rejection suggest that the claims are directed to the broad concept of “offer and acceptance of a price.” (Request 3). Appellants contend “[t]he heart of any § 101 rejection is the identification of an idea to which the claim is allegedly directed, so a change in the idea underlying a § 101 rejection presents a host of new and cascading issues.” Appellants further contend “Appellant has not yet had an opportunity to address any of the issues that cascade from the new allegation that the claims are directed to the very broad concept of ‘offer and acceptance of a price.’” (Request 4). Appellants further contend “Appellant is not currently afforded the opportunity to amend the claims as a matter of right in the face of the new facts and theories underlying the Decision on Appeal.” (Request 4). We disagree with Appellants. As Appellants’ quotation from the Final Action identifies, the Examiner and the Board have both found the claimed invention to encompass the concepts of an offer and an acceptance. Consequently, Appellants have had a fair opportunity to respond or amend the claims during the prosecution. We find that Appellants have always had an opportunity to address the claim language and present substantive arguments as to why the claimed invention, set forth in the specific claim language is directed to patent eligible subject matter. We find Appellants further have had a fair opportunity to amend the claims during the prosecution or present narrower or different scope of claims, but Appellants have chosen not to. Asa result, we do not agree with Appellants that our 4 Appeal 2016-005177 Application 11/926,769 affirmance of the § 101 rejection was an undesignated new ground of rejection. Appellants further contend Section: “41.52 does not expressly afford an Appellant the right to raise the new arguments outlined above in response to a new but undesignated ground of rejection. And finally, Appellant can only receive an adjustment of patent term (if this application eventually matures into a patent) for time spent in the appeal process if this Decision on Appeal is re-designated as a reversal of the Examiner's decision regarding at least one claim. 35 U.S.C. 154(b)(1)(C). Given that the basic thrust of the rejection has changed, a re-designation of the rejection as a new ground of rejection appear to be the most equitable way to ensure fairness.” (Request 4—5). We disagree with Appellants and find no unfairness or due process error in affirming the Examiner’s patent eligibility rejection based on the same line of reasoning set forth by the Examiner. Appellants further contend the Board misapprehended Appellants’ arguments regarding the requirement for evidence supporting factual findings. We disagree with Appellants and further note the Background section of the Specification identifies and incorporates by reference “co pending U.S. Patent Application No. 08/889,503 filed July 8, 1997, for ‘Systems And Methods Wherein A Buyer Purchases A Product At A First Price And Acquires The Product From A Merchant That Offers The Product For Sale At A Second Price.’ (Spec. 1). Additionally, we note this incorporated application has issued as US Patent 6,249,772 directed to a reverse auction-type sale which is a reverse offer and acceptance type of transaction (for example, see Priceline.com). Consequently, we find the present application intrinsically acknowledges the well-known use of offer and acceptance in the prior art at 5 Appeal 2016-005177 Application 11/926,769 the time of the invention. Furthermore, we note another application serial number 09/412,930, cited in the Specification and incorporated by reference, also details in its Background of the Invention the use of offer and acceptance and traditional retail shopping. (Spec. 1). (“Typically, a buyer visits one or more retailers to shop for a product. When the buyer finds the product he or she is looking for, at a reasonable price, the buyer purchases the product from the retailer. This traditional method of providing products to buyers, however, may require that the buyer visit a number of retailers to determine what should be considered a reasonable price for the product.”) (Application ’930, Spec. 1—2). As a result, we find Appellants’ argument to be unavailing to evidence that the Board overlooked or misapprehended Appellants’ argument. Appellants contend the examples used by the Examiner in the Final Action and Examiner’s Answer were mere “conjecture” and “simply plucked from thin air.” (Request 6). Specifically, Appellants contend “Appellant has argued throughout this appeal process that the particularized steps alleged to have occurred ‘in a flea market setting 1,000 years ago’ and ‘at a local pawn shop’ find no basis in the written record.” (Request 6). Appellants provide case law citations to a labor relations case and to a prior art determination case to support the contention that the agency’s factual findings must be supported in the record. (Request 6). As the Board stated in its Decision, we found the claimed invention is directed to an “offer and acceptance” process. While we note Appellants continually ask for specific factual findings regarding the “abstract idea,” Appellants have not offered any facts to support the proposition that the claimed invention does not represent and is not directed to an abstract idea. However, Appellants rely upon the expertise of the USPTO to identify 6 Appeal 2016-005177 Application 11/926,769 abstractions rather than provide factual evidence to support a position of patent eligibility. We are not persuaded, by Appellants’ argument that we misapprehended or overlooked the points argued by Appellants in rendering our Decision. (See also Dec. 4, 5—6, 8 where “evidence” was discussed.) The mere fact that Appellants merely disagree with our line of reasoning or conclusion of patent ineligibility does not mean the Board misapprehended or overlooked the argument. Consequently, the Board has not overlooked or misapprehended Appellants’ argument nor did the Board misapprehend or overlook the broad language recited in independent claim 1, and corresponding language in independent claim 30. We are not persuaded we misapprehended or overlooked the points argued by Appellants in rendering our Decision, and Appellant thus has not persuaded us of error in our Decision. DECISION We grant Appellants’ Request for Rehearing to the extent we have reconsidered our Decision, but we deny the Request with respect to making any changes thereto. 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). REQUEST FOR REHEARING DENIED 7 Copy with citationCopy as parenthetical citation