Ex Parte Woolston

Patent Trials and Appeals Board

Feb 29, 2016

13198609 - (D) (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/198,609 08/04/2011 Thomas G. Woolston
49845 7590 03/02/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
2043.566U24 8138
EXAMINER
JOHNSON, GREGORY L
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS G. WOOLSTON
Appeal2013-009809
Application 13/198,6091
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant's claims relates to used and collectible goods offered for
sale by an electronic network of consignment stores. Spec. ,-r 2.
1 Appellant identifies eBay Inc., as the real party in interest. Appeal Br. 2.
Appeal2013-009809
Application 5, 724,424
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented two-tiered electronic
market system comprising:
a data repository storing information corresponding
to an inventory of one or more available goods;
a first-tier providing a first participant access to the
inventory of one or more goods in the data repository, the
inventory being offered to the first participant under a first
pricing scheme; and
a second-tier providing a second participant, different
from the first participant, access to the inventory of one or
more goods in the data repository, the inventory being
offered to the second participant under a second pricing
scheme different from the first pricing scheme.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Gifford us 5, 724,424 Mar. 3, 1998
The following rejection is before us for review.
1. Claims 1-9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Gifford (hereinafter "Gifford").
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Appeal2013-009809
Application 5, 724,424
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 2-5 of the
Answer.
2. Gifford discloses
We expect that both retail payment and wholesale payment
mechanisms will be required for networks, with consumers
using the retail mechanism for modest size purchases, and
institutions using the wholesale mechanism for performing
settlement between trading partners. For wide acceptance the
retail mechanism will need to be a logical evolution of existing
credit-card, debit-card, and Automated Clearing House
facilities, while for acceptance the wholesale mechanism will
need to be an evolved version of corporate electronic funds
transfer.
Col. 1, 11. 30-39.
3. Gifford discloses "[ t ]he merchant computer may set the prices
contained in the advertisements based on the on the identity of the user as
determined, for example, by the net\~1ork address of the requesting buyer
computer." Co 1. 5, 11. 21-24.
4. Gifford discloses "[p ]ayment system operators may have other
fiduciary responsibilities for wholesale transactions." Col. 2, 11. 12-14.
5. It is our understanding that buying wholesale results in lower
prices per unit because buying in bulk results in lower price per unit than
pricing for retail sale.
ANALYSIS
35 U.S.C. § 103(a) REJECTION
The Appellant argues claims 1-9 as a group. We select claim 1 as the
representative claim for this group, and the remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal2013-009809
Application 5, 724,424
Appellant argues,
There is no description anywhere within Gifford that would
lead one to conclude that the reason for setting the price in an
advertisement based on the network address of a computer is to
implement a two-tiered marketplace with first and second
pricing schemes, for example, such as retail and wholesale
pricing schemes. In fact, there may be any number of reasons
for setting different prices based on the network address of a
computer. Furthermore, there is no description in Gifford that
would suggest a need for a two-tiered marketplace.
Appeal Br. 6.
We disagree with Appellant. The Examiner found that Gifford
discloses "inventory being offered to the first participant under a retail
pricing scheme" and "inventory being offered to the second participant
under a wholesale pricing scheme different from the retail pricing scheme.
Answer 3. This finding is not in dispute. Gifford explicitly discloses that a
merchant computer may set the prices contained in the advertisements based
on the on the identity of the user. FF. 3. We find that because Gifford
discloses that prices can be set based on the identity of a user, one having
ordinary skill in the art would understand that pricing for wholesale buyers
would be different2 from those prices set for retail buyers because the former
would be based on a bulk purchase prices, which bulk pricing we understand
to be a lower pricing scheme than for retail. (FF. 5). This finding is further
supported by Gifford's disclosure of affording wholesale buyers additional
responsibilities over those of retail buyers (FF. 4), suggesting that the
wholesale buyer is afforded more for his/her purchase dollar than that
afforded the retailer buyer.
2 We construe two-tier pricing to mean pricing which sets different prices for
the same item.
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Appeal2013-009809
Application 5, 724,424
Appellant further argues concerning Gifford that: "A payment system
is used for processing payments between different parties and generally has
nothing to do whatsoever with how items are priced and offered. As such,
Gifford suggests a need for retail and wholesale payment systems, but not a
two-tiered marketplace with retail and wholesale pricing." Appeal Br. 6.
We disagree with Appellant because we find that one having ordinary
skill in the art would understand that the payment system in Gifford is a
reflection of at least a two tiered pricing system of the seller marked by
buyer payments to at least one of a wholesale and retail transaction,
respectively.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-9 under
35 U.S.C. § 103(a).
DECISION
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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