Ex Parte Zacarias et al

Patent Trial and Appeal Board

Apr 3, 2013

11540769 (P.T.A.B. Apr. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte ARTURO ZACARIAS, ZAHID N. AHMED, 7
and SENTHIL K. PANDURANGAN 8
___________ 9
10
Appeal 2011-007384 11
Application 11/540,769 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, MEREDITH C. PETRAVICK and 17
THOMAS F. SMEGAL, Administrative Patent Judges. 18
19
SMEGAL, Administrative Patent Judge. 20
21
22
DECISION ON APPEAL 23
24
Appeal 2011-007384
Application 11/540769
2

STATEMENT OF THE CASE1 1
Appellants seek our review under 35 U.S.C. § 134 of the final 2
rejection of claims 1-31 and 33-38, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 35 4
U.S.C. § 6(b). 5
We reverse. 6
Appellants invented a system and method for real time bidding using 7
an instant messaging server in network-base commerce (Spec. 2, 8
para.[0001]. 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below: 11
12
1. A system comprising: 13
an instant messaging (IM) server including 14
at least one processor and memory including 15
instructions to: 16
communicate with a market place 17
environment via a first communication channel 18
and to communicate with a client machine via 19
second communication channel, the first and 20
second communication channels using a real-time 21
communication protocol, at least one of the first 22
and second communication channels being a 23
secure channel; 24
communicate an event notification instant 25
message in response to detecting a predetermined 26
event including at least a bid placed on a listing 27
watched by a user to the client machine; and 28

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 22, 2010) and Reply Brief (“Reply Br.,” filed March
21, 2011) and the Examiner’s Answer (“Ans.,” mailed January 20, 2011).
Appeal 2011-007384
Application 11/540769
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communicate a bid to the market place 1
environment via the secure channel. 2
3
REFERENCES 4
The Examiner relies upon the following prior art: 5
Eichstaedt US 2005/0027741 A1 Feb. 3, 2005 6
Atkinson US 2001/0021923 A1 Sep. 13, 2001 7
Barry US 2006/0136325 A1 Jun. 22, 2006 8
YAHOO!Auctions (http:llweb.archive.orglwebI2oooo620125858Ialerts. 9
Yahoo.comlconfiglset-notification? .t=a http://web.archive.org/web/ 10
20000301150038/alerts.yahoo.com/config/set_notification?t=a) 11
12
13
REJECTIONS2 14
15
The following grounds of rejection were included in the final rejection 16
and are before us for review: 17
I. Claims 1-11 stand rejected under 35 U.S.C. §101 as being 18
directed to non-statutory subject matter in not claiming a 19
physical structure for the system. 20
II. Claims 21-31 and 33-38-incorrectly identified in the 21
Examiner’s Answer (Ans. 9b) as Claims 21-38-stand rejected 22

2 Claim 31 nominally stands rejected under 35 U. S. C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
This ground of rejection was withdrawn by the Examiner in an advisory
action mailed October 12, 2010. As it was withdrawn, the rejection is not
argued by Appellants in either Brief. The Examiner did not identify the
rejection in the Answer as a new ground after the withdrawal. It’s presence
in the Answer is therefore treated as a clerical error.
Appeal 2011-007384
Application 11/540769
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under 35 U. S. C. §101 as being directed to non-statutory 1
subject matter in failing the machine-or-transformation test. 2
III. Claims 1-4, 6-16, 19, 21, 22, 24, 27, 28, 30, 33 and 35-38 stand 3
rejected under 35 U. S. C. §103(a)-incorrectly identified in the 4
Examiner’s Answer (Ans. 9c) as 35 U. S. C. §102(b)-as being 5
unpatentable over Eichstaedt in view of YAHOO!Auctions and 6
further in view of Atkinson. 7
IV. Claims 5, 17, 18, 20, 23, 25, 26, 29, 31 and 34 stand rejected 8
under 35 U. S. C. §103(a) as being unpatentable over 9
Eichstaedt, YAHOO!Auctions and Atkinson further in view of 10
Official Notice. 11
ISSUES 12
The issues are whether: 13
(1) claims 1-11, 21-31 and 33-38 are directed to non-statutory subject 14
matter as being transitory signals (claim 1) or abstract subject matter 15
(claim 21); 16
(2) claims 1-4,6-16,19, 21, 22, 24, 27, 28, 30, 33, and 35-38 are 17
unpatentable over the combination of Eichstaedt, YAHOO!Auctions 18
and Atkinson , turning primarily on whether these references describe 19
the recited limitation of communicating an event notification instant 20
message in response to detecting a bid placed on a listing watched by 21
a user to the client machine; 22
(3) claims 5, 17, 18, 20, 23, 25, 26, 29, 31 and 34 are unpatentable over 23
the combination of Eichstaedt, YAHOO!Auctions and Atkinson, 24
further in view of OFFICIAL NOTICE. 25
Appeal 2011-007384
Application 11/540769
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ANALYSIS 1
Non-Statutory Subject Matter 2
We are persuaded by Appellants’ arguments (App. Br. 12-15) and 3
Reply Br. 2-4) that the Examiner failed to substantiate that claims 1-11 are 4
directed to non-statutory subject matter. In particular, Appellants point out 5
that claim 1 is directed to a system including an instant messaging (IM) 6
server and at least one processor and instructions stored in a memory and 7
executed by the processor (Reply Br. 3). The Examiner’s finding that the 8
claim “as written does not clearly define a structure to the physical elements 9
and how these elements are inter-connected to one another” (Ans. 5) 10
conflates the statutory eligibility requirements of 35 U.S.C. §101 with the 11
claim precision requirements of 35 U.S.C. §112. The Examiner’s suggested 12
resolution appears to be predicated on finding that propagating signals are 13
within the scope of the recited instructions, but this cannot be as physical 14
memory within the server is explicitly recited for storing the instructions. 15
Further, Appellants point out that claim 21 is directed to a processor-16
implemented method (Reply Br. 4). That method is performed on a 17
particular machine, and the performance is clearly tied to that machine by 18
detecting a predetermined event and accepting a bid in response to the event 19
notification. This is narrower than an abstract concept preempting all 20
implementations. Therefor we reverse the Examiner’s non-statutory subject 21
matter rejection of claims 1-11, 21-31 and 33-38 under 35 U. S. C. §101.22
Appeal 2011-007384
Application 11/540769
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Unpatentable over a combination of prior art references 1
We are also persuaded by Appellant’s arguments that claim 1-31 and 2
33-38 are patentable over the combination of prior art references. In 3
particular, we agree with Appellants (Reply Br. 5) that Atkinson does not 4
provide what is lacking in the disclosure of Eichstaedt and 5
YAHOO!Auctions, that being the specific claim limitation of 6
communicating “an event notification instant message in response to 7
detecting a predetermined event including at least a bid placed on a listing 8
watched by a user to the client machine”. 9
The Examiner responded that “Using broadest reasonable 10
interpretation, YAHOO Auctions and Atkinson et al. teach ‘a bid placed on a 11
listing watched by a user.’” (Ans. 40). Even if so, and the Examiner has not 12
presented findings as to how such an interpretation is reached, this is not a 13
finding that the references describe the event notification instant message 14
limitation at issue. The Examiner has not presented a prima facie case as to 15
this limitation. The two other independent claims 12 and 21 contain a 16
similar limitation. 17
Accordingly, we reverse the Examiner’s rejection of claims 1-31 and 18
33-38 under 35 U.S.C. §103 as being unpatentable over Eichstaedt, 19
YAHOO!Auctions and Atkinson, with or without Official Notice. 20
21
DECISION 22
The decision of the Examiner to reject claims 1-31 and 33-38 is 23
reversed. 24
25
REVERSED 26
27
Klh 28