Ex Parte Vega

Patent Trial and Appeal Board

Sep 11, 2014

11857168 (P.T.A.B. Sep. 11, 2014)

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
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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.
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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).
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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?
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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
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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).
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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
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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).
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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.
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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-
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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.

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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)

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