Netotiate, Inc.

Patent Trials and Appeals Board

Jun 1, 2020

2019000978 (P.T.A.B. Jun. 1, 2020)

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.
14/025,399 09/12/2013 Keren Zimmerman NETO P0241C1 7063
122066 7590 06/01/2020
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
eofficeaction@appcoll.com
michael.benshimon@gmail.com
pair@mb-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEREN ZIMMERMAN and AMIR M. FARHI
Appeal 2019-000978
Application 14/025,399
Technology Center 3600

Before JOSEPH L. DIXON, JENNIFER L. McKEOWN, and
CATHERINE SHIANG, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject Claims 1–32. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a) (2017). Appellant identifies the real party in interest as
NETOTIATE, INC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and system for automated
negotiation between a consumer and a merchant. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method performed by a mediatorial server for
enabling a real-time consumer-to-merchant electronic
negotiation, the mediatorial server including a processing unit
and a memory, the memory containing instructions that, when
executed by the processing unit, configure the mediatorial
server to execute the method, the method comprising the steps
of:
receiving a digital electronically formatted time-limited
initial binding offer from a consumer device for purchasing at
least one product of choice from at least one merchant of
choice responsive to the at least one product being displayed on
the consumer device and being offered for sale, wherein the
initial binding offer includes at least an offered price for the
product of choice, the product of choice, and the at least one
merchant of choice, wherein the initial offer expires after a
predefined timeframe;
determining, automatically, directly in response to the
digital electronically formatted time-limited initial binding
offer, whether the initial binding offer received from the
consumer device is a valid offer for the product of choice,
wherein a valid offer is an offer that is at least determined to be
consistent, was provided to the mediatorial server within a
prescribed timeframe, and for which a valid form of payment
that is consistent with the offer made is identified;
analyzing the initial binding offer using at least one first
preconfigured rule received from the merchant device; and
causing a generation of a time-limited merchant response
in real-time based on the analysis of the initial binding offer
when the initial binding offer is determined to be a valid offer.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Walker et al. US 5,794,207 Aug. 11, 1998
Widjojo et al. US 2005/0192958 A1 Sept. 1, 2005
Jordan et al. US 2007/0255663 A1 Nov. 1, 2007
Ong et al. US 2008/0215493 A1 Sept. 4, 2008
Torrenegra US 2009/0287596 A1 Nov. 19, 2009
Horvitz et al. US 2013/0006794 A1 Jan. 3, 2013
REJECTIONS
Claims 1–32 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
Claims 1–32 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventors regard as the invention.
Claims 1–9, 13–26, and 30–32 stand rejected 35 U.S.C. § 103(a) as
being unpatentable over Ong in view of Horvitz, and further in view of
Walker.
Claims 10 and 27 stand rejected 35 U.S.C. § 103(a) as being
unpatentable over Ong in view of Horvitz in further view of Walker in
further view of Jordan.
Claims 11, 12, 28, and 29 stand rejected 35 U.S.C. § 103(a) as being
unpatentable over Ong in view of Horvitz in view of Walker in further view
of Jordan, Widjojo, Appellant’s Admitted Prior Art, and Torrenegra.
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OPINION
1. 35 U.S.C. § 101
a. Legal Principles
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
under Step 2A, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If, under Step 2A, the claim is “directed to” an abstract idea, then,
under Step 2B, “we must examine the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at
221 (quotation marks omitted). “A claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].’” Id. (quoting
Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
On January 7, 2019, the U.S. Patent and Trademark Office
(“USPTO”) published revised patent subject matter eligibility. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 2019
(“Revised Guidance”). Under the Revised Guidance, Step 2A of the Alice
two-step framework is divided in two prongs. For Step 2A, Prong 1, we
look to whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). For Step 2A, Prong 2, if the claim recites a judicial
exception, we look to whether the claim recites any additional elements that
integrate the judicial exception into a practical application (see Manual of
Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look, under Step 2B of the
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Alice two-step framework, whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)) or simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
b. Examiner’s Findings and Conclusions
For Step 2A of the Alice two-step framework, the Examiner finds that
independent Claims 1 and 17 are directed to “the abstract idea of organizing
human activities and/or fundamental economics and/or an idea itself as they
are related to product negotiation between a consumer and merchant or
creating the contractual relationship.” Final Act. 2, 3; see also Ans. 24. For
example, the Examiner finds that the limitations of Claims 1 and 17 “relate
to product negotiation between a consumer and merchant or creating the
contractual relationship which falls under the abstract idea of fundamental
economics.” Ans. 26. The Examiner analogizes the features of Claims 1
and 17 to the abstract ideas of buySAFE and Electric Power Group.2 Final
Act. 3; see also Ans. 24.
For Step 2B of the Alice two-step framework, the Examiner finds that
Claims 1 and 17 do not impose a meaningful limitation on the abstract ideas
these claims are directed to because these claims recite generic computer
components required for “any computer implementation.” Final Act. 3. For
example, the Examiner finds that the claimed mediatorial server, merchant
device, and consumer device are generic computer components. Final Act.
3. The Examiner also finds that the “receiving . . .” limitation of Claim 1

2 buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350 (Fed. Cir. 2014); Elec.
Power Grp, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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corresponds to “data gathering” and is considered “insignificant extra
solution” activity. Final Act. 3. Moreover, the Examiner finds that the
elements of Claims 1 and 17 that are performed by a computer do not
preclude those same elements from being performed by a human. Ans. 26.
The Examiner finds that Claims 1 and 17 do not include “any specific
technical details” of a machine that performs the claimed “business process.”
Ans. 27. In this light, the Examiner finds that the claims “are not rooted in
computer technology,” but simply use “a generic computer (processor, a
memory and the server) as a tool to perform the abstract idea.” Ans. 29.
The Examiner also finds that the claimed mediatorial server of Claims 1 and
17 is a tool that implements the human-performed “negotiation between
buyer and potential seller.” Ans. 36. In other words, the Examiner finds
that Claims 1 and 17 are essentially directed a human-performed negotiation
that is implemented using a computer. See Ans. 36.
c. Appellant’s Arguments
For Step 2A of the Alice two-step framework, Appellant argues that
Claim 1 is not directed to an abstract idea because Claim 1 “is directed to a
specific way of enabling a consumer-to-merchant electronic negotiation
using a mediatorial server.” Appeal Br. 8 (emphasis omitted). Appellant
argues that Claim 1 overcomes “the technical inefficiencies of the prior art
in enabling a consumer and a supplier to have a negotiation take place
automatically on their behalf.” Appeal Br. 8 (emphasis omitted); see also
Reply Br. 2. Appellant argues that Claim 1 does “not preempt Internet
shopping or negotiating in general.” Appeal Br. 8 (emphasis omitted); see
also Reply Br. 2. Appellant also argues that “the elements of the claims are
concrete and are taken by a real-world device” because the claims “are
directed only to the particular technical way in which the negotiation is
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conducted via the mediation server and they address a real challenge related
to technically negotiating sales over the internet.” Appeal Br. 13–14; see
also Reply Br. 2, 3.
In this light, Appellant argues that “the Examiner does not look to the
character of the claims as a whole and what they are in their entirety directed
to.” Appeal Br. 9 (emphasis omitted). Appellant argues that Claim 1 is
directed to the organization of “machine to machine activities” and does not
rely on human intervention, which is different than “organizing human
activities.” Appeal Br. 10 (emphasis omitted). Appellant reasons that a
“programmed computer cannot do” anything but “follow its preprogrammed
rules” and, as a result, “the computer might reject an offer which a human
might have accepted.” Appeal Br. 10 (emphasis omitted). Appellant also
argues that Claim 1 is directed to “an automated facilitator for a certain type
of transaction that is performed in a certain way based on particular machine
intelligence,” which is different from “fundamental economics per se.”
Appeal Br. 10, 11 (emphasis omitted). Appellant contends, “[a] significant
difference regarding Appellants’ claims and the cited alleged abstract ideas
is that all of the operations in Appellants’ claims are being done
automatically by the computer.” Reply Br. 9 (emphasis omitted).
For Step 2B of the Alice two-step framework, Appellant argues that
Claim 1 improves “internet shopping and, in particular, the effectiveness of
negotiation between buyer and potential sellers” and, as result, amounts to
“significantly more than an abstract idea.” Appeal Br. 16. Appellant further
argues that the Claim 1 is directed to an inventive concept because it is
“directed to a specific application of a technology in the market place.”
Appeal Br. 16. Appellant additionally argues that the “mediatorial server”
of Claim 1 is “a specific machine” and that use of this machine “provides a
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technical way to perform transactions that could not previously be achieved
due to technical limits.” Appeal Br. 20 (emphasis omitted). Appellant
further argues that Claim 1 includes several elements which cannot be
performed by a person. Appeal Br. 21. For example, Appellant argues, “[a]
person cannot receive a digital electronically formatted time-limited initial
binding offer from a consumer device.” Appeal Br. 21 (emphasis omitted).
d. Discussion
Appellant argues Claims 1–32 as a group. We select Claim 1 to
represent the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012).
i. Step 2A, Prongs 1 and 2
For Step 2A, Prong 1, of the Revised Guidance, we find that the
emphasized portions of Claim 1, reproduced above (see supra at 2), recites
elements that fall within the abstract idea grouping of certain methods of
organizing human activity. The Revised Guidance requires us to evaluate
whether the claim recites a judicial exception (e.g., an abstract idea).
According to the Revised Guidance, to determine whether a claim recites an
abstract idea, we must identify limitations that fall within one or more of the
designated subject matter groupings of abstract ideas. The Revised
Guidance lists certain methods of organizing human activity as one such
grouping and characterizes certain methods of organizing human activity as
including, inter alia, “fundamental economic principles or practices” and
“commercial or legal interactions.” We find that Claim 1 recites the
elements that fall into this grouping. Specifically, we find that Claim 1
recites elements of a commercial and legal interaction, which is a
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fundamental economic practice. For example, Claim 1 recites, inter alia¸
“receiving a . . . time-limited initial binding offer from a consumer . . .,”
“determining, automatically, directly in response . . . to the . . . time-limited
initial binding offer, whether the initial binding offer . . . is a valid offer,”
“analyzing the initial binding offer . . .,” and “causing a . . . merchant
response . . . based on the analysis of the initial binding offer . . . .” These
recitations correspond to the basic elements of contract negotiation and
formation. Claim 1 recites additional elements describing the offer and the
nature of the validity check; however, these additional elements also
correspond to the basic elements of contract negotiation and formation.
Thus, we find Claim 1 recites elements that fall within the abstract idea
grouping of certain methods of organizing human activity, namely,
commercial or legal interactions and fundamental economic principles.
For Step 2A, Prong 2, of the Revised Guidance, we find that Claim 1,
as a whole, does not integrate the recited method of organizing human
activity into a practical application of the abstract idea. The Revised
Guidance states that “[a] claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” The Revised Guidance further states that integration should be
evaluated by “[i]dentifying whether there are any additional elements recited
in the claim beyond the judicial exception(s)” and, based on certain
considerations, “evaluating those additional elements individually and in
combination to determine whether they integrate the exception into a
practical application.” The Revised Guidance identifies considerations such
as whether additional elements yield an improvement to a particular
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technology or a computer itself, correspond to the implementation of the
judicial exception with a particular machine, and/or apply the judicial
exception in some way beyond simply linking the judicial exception to a
particular technological environment.
Here, Claim 1 includes a mediatorial server, a merchant device, and a
consumer device as additional elements. The mediatorial server includes a
processing unit and a memory with the memory containing instructions that
configure the mediatorial server to execute the method using the processing
unit. By executing the method, the mediatorial server enables a real-time
consumer-to-merchant electronic negotiation. Claim 1 includes also
additional limitations that reflect the computer-implemented nature of the
negotiation. For example, Claim 1 requires for the offer to be digital and
electronically formatted and for the offer to be received on a merchant
device from a consumer device. Elements of the consumer device and
merchant device are not recited. However, we find that these additional
elements do not integrate the method of organizing human activity into a
practical application. For instance, we do not find that the mediatorial
server, consumer device, or merchant device, as claimed, yield an
improvement in a computer itself or to the particular technology of
automated contract negotiation and formation. Similarly, we do not find the
mediatorial server, consumer device, or merchant device, as claimed, to be
any particular machine that is necessary for implementing the abstract idea
or applies the abstract idea in a meaningful way to a particular technological
environment. We agree with the Examiner’s finding for Step 2B of the Alice
two-step framework, that these elements, as claimed, are nothing more than
generic computer components. See Ans. 29. Thus, we find that Claim 1, as
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a whole, does not integrate the recited method of organizing human activity
into a practical application of the abstract idea.
Therefore, based on our analysis under the Revised Guidance, we
agree with the Examiner that Claim 1 is directed to an abstract idea.
Specifically, we agree with the Examiner that Claim 1 is directed to “the
abstract idea of organizing human activities.” Final Act. 2, 3. As result, we
focus our attention on Step 2B of the Alice two-step framework.
ii. Step 2B
For Step 2B, we are not persuaded by Appellant’s argument that
Claim 1 recites significantly more than the abstract idea itself. Step 2B of
the Alice two-step framework requires us to determine whether any element,
or combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the judicial exception. Alice, 573 U.S. at
221. As discussed in the previous section, we agree with the Examiner’s
findings that the mediatorial server, consumer device, and merchant device,
as claimed, are nothing more than generic computer components used to
implement the organized human activity (e.g., contract negotiation and
formation). In other words, these components, as claimed, are well-
understood, routine and conventional and “behave exactly as expected
according to their ordinary use.” See In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 615 (Fed. Cir. 2016). Appellant’s Specification even suggests
that the consumer device, merchant device, and server are ordinary
computing devices. See Spec. ¶¶ 14, 15, and 30. Thus, implementing the
abstract idea with these generic computer components “fail[s] to transform
that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Therefore, we agree with the Examiner that the mediatorial server, consumer
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device, and merchant device of Claim 1 individually and as an ordered
combination do not provide significantly more than the abstract idea itself.
iii. Conclusion
Therefore, because Claim 1 is directed to the abstract idea of
organizing human activities and does not provide significantly more than the
abstract idea itself, we agree with the Examiner that Claim 1 is ineligible for
patenting.

2. 35 U.S.C. § 112, second Paragraph
a. Legal Principles
The test for definiteness is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). Language in a claim is unclear if, when given
its broadest reasonable interpretation, it is ambiguous, vague, incoherent,
opaque, or otherwise unclear in describing and defining the claimed
invention,” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is
“is amenable to two or more plausible claim constructions,” Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
b. Claims 1–12 and 14–31
For Claims 1 and 17, the Examiner finds that these claims are not
clear because these claims do not make it clear whether the offer validity
check requires the elements of the initial binding offer. Final Act. 6. In
other words, the Examiner finds that these claims do not clearly set forth
whether the initial biding offer received from the consumer device includes
all the criteria defining a valid offer. Final Act. 6. The Examiner further
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finds that these claims do not clearly set forth if determining the valid offer
can be accomplished based on the information received. Ans. 37.
In response, Appellant argues that the language of the receiving step
requires for the binding offer to include an offered price for the product of
choice, the product of choice, and the at least one merchant of choice and
that the language of the determining step requires for “requires other
information that is not required for an offer to be a binding offer.” Appeal
Br. 24 (emphasis omitted). According to Appellant, this arrangement allows
for there to be a “binding offer that is not valid.” Appeal Br. 24.
Since Appellant argues Claims 1–12 and 14–31 as a group, we select
Claim 1 to illustrative the group. We conclude Appellant’s arguments for
Claim 1 persuasive and, thus, find that those skilled in the art would
understand Claim 1 when the claim is read in light of the Specification.
Independent Claim 17 contains similar language that we find that those
skilled in the art would understand Claim 17 when the claim is read in light
of the Specification. Therefore, we reverse the Examiner’s rejections of
Claims 1–12 and 14–31 under 35 U.S.C. § 112, second paragraph.
c. Claims 13 and 32
Claims 13 and 32 respectively depend, through intervening claims,
from independent Claims 1 and 17. Nevertheless, the Examiner further finds
that these claims are not clear with respect to the difference between the
checking billing information of Claims 13 and 32 and the valid form of
payment of Claims 1 and 17. Final. Act. 6.
In response, Appellant further argues, “[i]dentifying a valid form of
payment does not necessarily require billing information.” Appeal Br. 24
(emphasis omitted).
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The Examiner does not specifically maintain and repeat this rejection.
Consequently, we agree with Appellant that those skilled in the art would
understand Claims 13 and 32 when the claims are read in light of the
Specification, and we reverse the Examiner’s rejections of Claims 13 and 32
under 35 U.S.C. § 112, second paragraph.

3. 35 U.S.C. § 103(a)
a. Claims 1–9, 13–23, and 30–32
i. Claims 1–9 and 13–16
In a first argument, Appellant argues that Claim 1 requires “receiving
a digital electronically formatted time-limited initial binding offer,” but Ong
does not teach a time-limited initial binding offer. Appeal Br. 25 (emphasis
omitted); see also Reply Br. 27. Appellant acknowledges that Ong teaches a
negotiation period that is time-limited based on a random length of time, but
contends “[t]he fact that the negotiation is limited to a certain amount of
time does not indicate that offer itself is time-limited.” Appeal Br. 25
(emphasis omitted); see also Reply Br. 27, 28. Appellant also argues that
since the time for the offer is not known in advance and the negotiation
period time-limit is random, the offer cannot be time-limited and continues
to exist for “however long the system allows the negotiation to continue.”
Appeal Br. 25; see also Reply Br. 27, 28. Appellant additionally argues,
“[a]ll that is time limited is the time period for the negotiation. The offer in
Ong could continue to exist even though the negotiations are broken off.”
Reply Br. 28.
In a second argument, Appellant argues that Claim 1 requires for the
valid offer to be “an offer that is at least determined to be consistent, was
provided to the mediatorial server within a prescribed timeframe, and for
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which a valid form of payment that is consistent with the offer made is
identified” and that offers with very low prices can still be valid. Appeal Br.
26; see also Reply Br. 29. Appellant argues a buyer’s offer that is
eventually rejected by a seller because the offered price is too low is not
automatically invalid on the basis that it was rejected by the seller. Appeal
Br. 26; see also Reply Br. 29. Thus, Appellant contends that since
“[a]cceptability and validity are very different concepts” (see Appeal Br. 26,
emphasis omitted), Ong never determines the validity of an offer. Appeal
Br. 27.
In a third argument, Appellant argues that Claim 1 requires “analyzing
the initial binding offer using at least one first preconfigured rule received
from the merchant device,” but that Ong teaches that the seller (i.e.,
merchant) makes the initial offer. Appeal Br. 26; see also Reply Br. 30. As
a result, Appellant contends Ong does not teach “analysis of an offer
received from the buyer.” Appeal Br. 26; see also Reply Br. 30. Appellant
further contends that Ong’s para. 39, 40, and 44–48, which were cited by the
Examiner, do not teach any analysis of an offer. Appeal Br. 27; see also
Reply Br. 31. Instead, Appellant contends that these paragraphs teach
acceptance and rejection of an offer, which is not the same as analyzing the
offer. Appeal Br. 27; see also Reply Br. 31.
In a fourth argument, Appellant argues “Ong teaches [away from the
claimed invention because] Ong teaches that payment terms are only
considered once the negotiation of the transaction is completed.” Appeal Br.
27 (emphasis omitted); see also Reply Br. 31. With regard to Walker, the
secondary reference, Appellant contends that Walker also does not teach a
time-limited initial binding offer and, in fact, teaches away from providing
such an offer. Appeal Br. 28; see also Reply Br. 32. Appellant argues that
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Walker teaches a “conditional purchase offer if the seller can provide what
the buyer wishes to purchase and meet the conditions the buyer requires.”
Appeal Br. 28 (emphasis omitted); see also Reply Br. 32. Appellant
contends Walker does not teach a product that is offered for sale by a seller,
but instead teaches a buyer that requests for the seller to make an offer.
Appeal Br. 28; see also Reply Br. 32. Appellant additionally contends
Walker teaches away from the claimed invention because there is no
negotiation in Walker. Appeal Br. 29.
In response to Appellant’s first argument, the Examiner finds that
Claim 1 “does not specify the manner in which the offer expired e.g. it does
not specify that the offer itself has a time limit.” Ans. 38–39. The Examiner
further finds that since Ong “discloses the whole negotiation is time
limited,” “the initial offer from the buyer inherently has the time limit on it.”
Ans. 39.
In response to Appellant’s second argument, the Examiner finds that
Ong teaches, in paras. 44 and 45, an analysis of the buyer’s offer that
amounts to a determination that the buyer’s offer is valid or not. Ans. 40. In
this light, the Examiner finds that if Ong’s system determines that the offer’s
price is too low, then Ong’s system has effectively determined that the offer
is not valid with respect to consistency. Ans. 40. The Examiner additionally
finds that Walker teaches determining offer validity with respect to a
prescribed timeframe and a valid form of payment. Ans. 40.
In response to Appellant’s third argument, the Examiner finds Ong
teaches analysis of the buyer’s offer in Figures 5 and 10 and paragraphs 38
and 40.
In response to Appellant’s fourth argument, the Examiner finds that
Walker was relied on to determine offer validity with respect to prescribed
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timeframes and valid forms of payment and that Appellant has not identified
what limitations within Walker that teach away from Ong. Appeal Br. 41.
Appellant argues Claims 1–9 and 13–16 as a group. We select Claim
1 to illustrative of this group. We are persuaded by Appellant’s arguments
for Claim 1. Ong, the primary reference, discloses a system and method for
“negotiation over a network.” Ong ¶ 20. Ong’s Figure 5 shows an example
of the operation. Ong ¶ 38. According to Ong, when a buyer decides to
negotiate the purchase of an item, the system offers a price to the buyer
based on price ranges selected by the seller. Ong ¶ 38. The system then
selects a random number of negotiations or a random time-limit for the
negotiations. Ong ¶ 39. If the buyer accepts the initial offered price, the
negotiation is avoided; otherwise, the buyer makes an offer at a specified
price and the system analyzes the buyer’s offer to see if the offer is too low.
Ong ¶ 44. If the buyer’s offer is too low, the system prompts the buyer to
make another offer, which is analyzed like the buyer’s initial offer. Ong
¶ 44. This process continues until the system accepts the buyer’s offer, the
random number of negotiations is exceeded, or the random time-limit for
negotiations expires. Ong ¶ 45. If the number of negotiations is exceeded or
the time-limit expires, the system will only accept the buyer’s offer if it is
within an acceptable range. Ong ¶ 45. If the buyer’s offer is not within an
acceptable range, the system offers the buyer a final offer that the buyer can
accept. Ong ¶ 46.
Based on our review of Ong, we agree with Appellant that Ong does
not teach a time-limited initial binding offer. We further agree with
Appellant that any one of the offers Ong provides could still be open even
though the negotiations have ended due to the number being exceeded or the
time-limit expiring. Additionally, we agree with Appellant that Ong does
Appeal 2019-000978
Application 14/025,399
19
not teach or suggest determining the validity of any of the offers. Upon
reception of the buyer’s offer, Ong’s system analyzes the buyer’s offer to
determine whether it is acceptable to the seller. However, Ong does not
determine whether any one of the buyer’s offers are valid prior to said
analysis. Moreover, based on our review of Horvitz and Walker, we do find
that the Examiner has identified that Horvitz or Walker, alone or in-
combination, remedy any of the deficiencies of Ong. Therefore, we reverse
the Examiner’s rejection of Claims 1–9 and 13–16 under 35 U.S.C. § 103(a).
ii. Claims 17–26 and 30–32
For these claims, Appellant argues Claims 17–26 and 30–32 as a
group and argues the same basis as Appellant’s arguments for Claims 1–9
and 13–16. Appeal Br. 32. Independent claim 17 contains similar
limitations as independent claim 1. Therefore, we reverse the Examiner’s
rejections of Claims 17–26 and 30–32 under 35 U.S.C. § 103(a) based upon
the same line of reasoning discussed in the previous section.
b. Claims 10 and 27
Appellant argues Claims 10 and 27 on the same basis as Appellant’s
arguments for Claims 1–9, 13–26, and 30–32. Appeal Br. 33. The
Examiner has not identified how the additional teachings of Jordan remedy
the deficiency in the base combination. Ans. 16–17. Therefore, we reverse
the Examiner’s rejections of Claims 10 and 27 under 35 U.S.C. § 103(a)
based upon the same line of reasoning we provided for Claims 1–9, 13–26,
and 30–32.
c. Claims 11, 12, 28, and 29
Appellant argues Claims 11, 12, 28, and 29 on the same basis as
Appellant’s arguments for Claims 1–9, 13–26, and 30–32. Appeal Br. 33.
The Examiner has not identified how the additional prior art remedy the
Appeal 2019-000978
Application 14/025,399
20
deficiency in the base combination. Ans. 17–22. Therefore, we reverse the
Examiner’s rejections of Claims 11, 12, 28, and 29 under 35 U.S.C. § 103(a)
based upon the same line of reasoning we provided for Claims 1–9, 13–26,
and 30–32.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–32 101 Eligibility 1–32
1–32 112, 2nd
Paragraph
Indefiniteness 1–32
1–9, 13–26,
30–32
103(a) Ong, Horvitz, Walker 1–9, 13–26,
30–32
10, 27 103(a) Ong, Horvitz, Walker,
Jordan
10, 27
11, 12, 28, 29 103(a) Ong, Horvitz, Walker,
Jordan, Widjojo,
Appellant’s Admitted
Prior Art, Torrenegra
11, 12, 28,
29
Overall
Outcome
1–32

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED