Ex Parte Demarcken

Board of Patent Appeals and Interferences

Feb 12, 2007

09431365 (B.P.A.I. Feb. 12, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte CARL G. DEMARCKEN
___________

Appeal 2006-3164
Application 09/431,365
Technology Center 3600
___________

Decided: February 12, 2007
___________

Before STUART S. LEVY, LINDA E. HORNER and ANTON W. FETTING,
Administrative Patent Judges.
ANTON W. FETTING, Administrative Patent Judge.
DECISION ON APPEAL

This appeal involves claims 1-4, 6, 7, 8, 27, 28 and 52-59, the only claims
pending in this application. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 134.
We AFFIRM-IN PART.
Appeal Number: 2006-3164
Application Number: 09/431,365

BACKGROUND
The appellant's invention relates to a travel planning system (Spec 1). An
understanding of the invention can be derived from a reading of exemplary claim
1, which is reproduced below.
1. A travel planning system comprising:
a requirements generator module to generate a set of diverse travel
requirements, by establishing a plurality of travel requirement
templates, and for each travel requirement template, defining a
plurality of travel requirements corresponding to different values of
the travel requirements; and
a selection module to output a set of diverse travel options, the
number of travel options in the set of diverse travel options being
fewer in number than the number of travel options in a candidate set
of travel options and for each diverse travel requirement in the set of
diverse travel requirements, selecting from the candidate set of travel
options one or more travel options that satisfy that travel requirement
with the candidate set of travel options represented using a data
structure that compactly stores the candidate set of travel options.

PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
DeMarcken US 6,295,521 B1 Sep. 25, 2001
(Jul. 2, 1998)
Iyengar US 6,360,205 B1 Mar. 19, 2002
(Mar. 5, 1999)
Karch US 6,442,537 B1 Aug. 27, 2002
(Jun. 24, 1999)

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Appeal Number: 2006-3164
Application Number: 09/431,365

REJECTIONS
Claims 1-4, 6, 7, 8, 27, 28, 52-541 and 56-58 stand rejected under 35 U.S.C.
§ 103(a) as obvious over DeMarcken and Karch.
Claims 55 and 59 stand rejected under 35 U.S.C. § 103(a) as obvious over
DeMarcken, Karch and Iyengar.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the
examiner's answer (mailed March 3, 2006) for the reasoning in support of the
rejection, and to appellant’s brief (filed September 16, 2005) and reply brief (filed
May 5, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant’s specification and claims, to the applied prior art references, and to
the respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations that follow.
Claims 1-4, 6, 7, 8, 27, 28, 52-54 and 56-58 rejected under 35 U.S.C. § 103(a) as
obvious over DeMarcken and Karch.
The examiner applies DeMarcken to all of the claimed subject matter except
for a rules template. The examiner asserts that rules templates are notoriously old
and well known and applies Karch as evidence of such notoriety. (Answer 3-4).

1 Claims 52 and 53 are not included in the formal statutory basis for the rejection
(Answer 3), but are included in the analysis (Answer 6-7) and are therefore treated
as part of the rejection.
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Appeal Number: 2006-3164
Application Number: 09/431,365

As to claim 1, the appellant argues that DeMarcken fails to describe either the
claimed diverse travel options or a requirements generator to generate a set of
diverse travel requirements (Br 9). The examiner responds that DeMarcken shows
these features at col. 50, lines 11-20, col. 60-61 (Answer 10-11). We note that this
portion of DeMarcken recites searching for characteristics such as cost, duration,
times, and numbers of legs and segments. These may be fairly characterized as
options. We also note that the examiner’s reliance on col. 51 and 55 describes an
enumeration process that generates requirements (Answer 3). We also note that
the specification does not define the word “diverse”, although the Specification
p. 2 suggests it refers to diversity of airlines. A person of ordinary skill in the art
would have taken the searching capabilities in DeMarcken to include multiple and
diverse airlines based on the databases that are queried to produce a large number
of itineraries (OAG Flight Desk, Sabre, Apollo, Amadeus and Worldspan – col. 4
lines 52-63). Therefore, we find the appellant's arguments to be unpersuasive.
The appellant next argues that claim 1 calls for a travel requirements template
rather than a rule (Br. 9). The examiner responds that rule templates are
notoriously well known as evidenced by Karch and a person of ordinary skill in the
art would have applied such templates to DeMarcken for the sake of the
efficiencies taught by Karch. We note that Karch does indeed teach the use of rule
templates for generalized databases for the purpose of improving the matching of
rules with the database objects they are targeted towards (col. 2 lines 44-48), and
therefore provides suggested implementation details for the database access portion
of DeMarcken’s system. Therefore, we find the appellant's arguments to be
unpersuasive.
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Appeal Number: 2006-3164
Application Number: 09/431,365

The appellant next argues that DeMarcken fails to disclose defining travel
requirements corresponding to different values for each template (Br. 9). We note
that DeMarcken Fig. 21 shows different values for date and airport templates.
Therefore, we find the appellant's arguments to be unpersuasive.
The appellant next argues that Karch fails to disclose diverse travel options,
DeMarcken fails to disclose generating rules for travel requirements and the
examiner has provided no reason to combine Karch with DeMarcken (Br. 10). As
to motivation, again, the examiner has argued notoriety of the use of rule templates
and Karch provides the reasons a person of ordinary skill in the art would consider
using them in contexts such as DeMarcken’s for improved database management.
As to diverse travel options, this a repetition of an argument, supra, and we direct
the appellant to our response to the earlier instance of the argument. As to
generating rules, as the appellant points out (Br. 9), claim 1 makes no reference to
rules. Therefore, we find the appellant's arguments to be unpersuasive.
The appellant next argues that DeMarcken’s nodes in the pricing graph are not
travel requirements but are elements of travel options, and DeMarcken fails to
teach using a set of preference functions provided according to a diversity process
(Br. 10) and a selection module to output a set of diverse travel options (Br. 12).
DeMarcken shows these options with respect to travel requirements in col. 6 lines
56-66, e.g. cost, duration and travel time.
We note that DeMarcken Fig. 22 shows outputting travel options from a
selection module in Fig. 21. As to diversity, which the appellant characterizes as
meaning across multiple carriers, although we do note that, for any given itinerary,
DeMarcken expressly restricts its queries to a single carrier, DeMarcken teaches
that this is for efficiency (col. 23, lines 50-52), and does not discourage such
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Appeal Number: 2006-3164
Application Number: 09/431,365

queries, and is silent as to whether it searches multiple carriers across itineraries.
As we noted above, although DeMarcken does not expressly teach outputting
multiple air carriers, a person of ordinary skill in the art would have considered this
a natural manner of implementation given the diversity of carriers in the databases
that DeMarcken teaches accessing. Therefore, we find the appellant's arguments to
be unpersuasive.
As to claim 4, the appellant argues that DeMarcken fails to show enumerated
pricing solutions ordered according to preference functions and selection to
produce a diverse set of travel options (Br. 13). DeMarcken shows enumeration of
pricing solutions ordered according to preference functions col. 49, line 41-col. 50,
line 10. DeMarcken shows selection to produce a diverse set of travel options as
we noted above. Therefore, we find the appellant's arguments to be unpersuasive.
The appellant next argues that DeMarcken fails to show operation on a price
graph to provide ordered sets of travel options using preference functions (Br. 13).
DeMarcken shows providing the options from the enumeration process in response
to multiple user specified parameters (col. 49, lines 41-44). Therefore, we find the
appellant's arguments to be unpersuasive.
As to claim 6, the appellant argues that DeMarcken’s industry defined
databases are not travel requirements. DeMarcken shows that the query is fed into
industry defined databases (col. 4, lines 52-59). These databases limit the options,
and such limitations provide inherent travel requirements, i.e. the options must be
among those available within the database. Therefore, we find the appellant's
arguments to be unpersuasive.
At to claim 52, the appellant argues that DeMarcken fails to show defining
diversity requirements by establishing travel requirement templates and selecting
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Appeal Number: 2006-3164
Application Number: 09/431,365

from a candidate set of options that satisfy requirements and combining options to
generate a diverse set of options (Br. 14). Each of these elements were argued
above by the appellant and found to be unpersuasive, and is similarly found
unpersuasive here.
As to claims 53 and 57, the appellant argues that the art fails to show basing
values for a requirement template on candidate set of travel options (Br. 14). The
examiner responds that Karch teaches putting requirements in templates. While
we agree that is indeed what Karch teaches, claims 53 and 57 go further in
requiring that the requirements are the result rather than the source of the options.
Neither DeMarcken nor Karch teach this. Therefore, we find the examiner's
arguments to be unpersuasive.
Accordingly we sustain the examiner's rejection of claims 1-4, 6, 7, 8, 27, 28,
52, 54, 56 and 58 under 35 U.S.C. § 103(a) as obvious over DeMarcken and Karch,
but do not sustain the rejection of claims 53 and 57.
Claims 55 and 59 rejected under 35 U.S.C. § 103(a) as obvious over DeMarcken,
Karch and Iyengar.
As to claim 552, the appellant argues that Iyengar’s multiple air carriers are
part of the user selectable query and not values for the travel requirement template.

2 The appellant twice refers to claim 55 as claim 54 in this section of the brief (Br.
15). However the rejection, the heading used by the appellant and the remainder of
the section refer to claim 55 rather than claim 54, and claim 55 is clearly intended.
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Appeal Number: 2006-3164
Application Number: 09/431,365

As we noted above, although DeMarcken does not expressly teach outputting
multiple air carriers, a person of ordinary skill in the art would have considered this
a natural manner of implementation given the diversity of carriers in the databases
that DeMarcken teaches accessing. Therefore Iyengar in combination with
DeMarcken would have similarly considered this a natural implementation. We
also note that “[t]he steps comprising the process are the essential features for
consideration in determining the right of appellants to a patent – not the particular
material to which the process is applied nor the particular substance obtained by its
application.” In re Fahrni, 41 C.C.P.A. 768, 771, 210 F.2d 302, 303, 100 U.S.P.Q.
(BNA) 388, 390 (C.C.P.A. 1954). Therefore, the number of air carriers
introduced to DeMarcken’s process, or to the claimed process, is essentially a field
of use limitation that does not limit the actual steps within the process claim.
Therefore, we find the appellant's arguments to be unpersuasive.
Accordingly we sustain the examiner's rejection of claims 55 and 59 under
35 U.S.C. § 103(a) as obvious over DeMarcken, Karch and Iyengar.

CONCLUSION
To summarize,
• The rejection of claims 1-4, 6, 7, 8, 27, 28, 52, 54, 56 and 58 under
35 U.S.C. § 103(a) as obvious over DeMarcken and Karch is sustained.
• The rejection of claims 53 and 57 under 35 U.S.C. § 103(a) as obvious over
DeMarcken and Karch is not sustained.
• The rejection of claims 55 and 59 under 35 U.S.C. § 103(a) as obvious over
DeMarcken, Karch and Iyengar is sustained.
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Appeal Number: 2006-3164
Application Number: 09/431,365

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART

STUART S. LEVY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LINDA E. HORNER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal Number: 2006-3164
Application Number: 09/431,365

FISH & RICHARDSON PC
P.O. BOX 1022
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