Douglas Brenhouse et al.

Patent Trials and Appeals Board

Sep 22, 2020

15139601 - (D) (P.T.A.B. Sep. 22, 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.
15/139,601 04/27/2016 Douglas A. Brenhouse 43115-505F01US 2376
30623 7590 09/22/2020
Mintz Levin/Boston Office
One Financial Center
Boston, MA 02111
EXAMINER
KANG, TIMOTHY J
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS A. BRENHOUSE, JEREMY J. PARADISE, and
ANDREW KWASIK
____________

Appeal 2020-002907
Application 15/139,601
Technology Center 3600
____________

Before TAWEN CHANG, RACHEL H. TOWNSEND, and
JAMIE T. WISZ, Administrative Patent Judges.

WISZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of claims 1–
20. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
CLAIMED SUBJECT MATTER
The Specification describes “[s]ystems and methods for providing an
indication of auction bidding interest.” Spec. ¶ 5. Claims 1, 11, and 17 are
independent claims. Claim 1 is illustrative and is set forth below (annotated
with bracketed numbers for reference to the limitations in the claim):
1. An auction system, comprising:
[1] a first client terminal including a first display, a first
memory storing first instructions, and a first processor
configured to
[2] execute the stored first instructions to cause
first information regarding an auction lot available for
live auction bidding to be shown on the first display,
[3] receive a first signal indicative of a first input
to the first client terminal, the first input being indicative
of an interest of a first user to enter a bid on the auction
lot, and
[4] in response to the receipt of the first input,
cause the first display to show second information
allowing the first user to enter the bid on the auction lot;
and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Auction
Mobility LLC. Appeal Br. 1.
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[5] a second client terminal including a second processor,
a second display, and a second memory storing second
instructions, [6] the second processor being configured to
execute the stored second instructions to cause third
information regarding the auction lot available for live
auction bidding to be shown on the second display;
[7] wherein the first processor is configured to, in
response to the receipt of the first input, cause a second
signal to be transmitted to the second client terminal; and
[8] wherein the second processor is configured to, in
response to the receipt of the second signal, cause a
notification to be provided to a user of the second client
terminal.
Appeal Br. A (Claims Appendix).
REJECTIONS
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
The Examiner rejected claims 1–20 under 35 U.S.C. § 103 as being
unpatentable over Scully2 in view of Mullendore.3

2 Scully et al., US 2013/0211960 A1, published Aug. 15, 2013 (“Scully”).
3 Mullendore, Robert G., US 2008/0262943 A1, published Oct. 23, 2008
(“Mullendore”).
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ISSUES AND ANALYSIS
Rejection of claims 1–20 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter
I. PRINCIPLES OF LAW
A. Section 101
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 U.S. 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 Court’s two-part 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, we first
determine whether the claim recites an abstract idea. 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);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
that recite abstract ideas, but are nonetheless 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 waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182
n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “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 (citation 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.
(alterations in original) (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

4 The Office issued further guidance on October 17, 2019. USPTO, October
2019 Update: Subject Matter Eligibility (the “October 2019 Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (“Step 2B”).
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
II. ANALYSIS
Applying the 2019 Revised Guidance to the facts on this record, we
find that claims 1–20 are directed to patent-ineligible subject matter.
Claims 1–16 are directed towards a system, which is an apparatus.
Claims 17–20 are directed towards a method, which is a process. Following
the first step of the Mayo/Alice analysis, we find that the claims are,
therefore, directed to an apparatus and a process, and therefore fall into the
broad statutory categories of patent-eligible subject matter under 35 U.S.C.
§ 101. We, thus, proceed to Step 2A, Prong One, of the 2019 Revised
Guidance.
A. Guidance Step 2A, Prong 1
The 2019 Revised Guidance instructs us first to determine whether
any judicial exception to patent eligibility is recited in the claim. The 2019
Revised Guidance identifies three judicially-excepted groupings classified
by the courts as abstract ideas: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices, and (3) mental processes.
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The Examiner finds that claim 1 recites the abstract idea of receiving a
bid for an item. Final Act. 4. The Examiner also finds that the limitations of
claim 1 “set forth the process for receiving bids and notifying a client
terminal of the bid” and that “[t]hese limitations amount to certain methods
of organizing human activity, including fundamental economic principles or
practices and commercial or legal interactions (e.g. advertising, marketing or
sales activities or behaviors, etc.).” Id. at 5.
We agree with the Examiner that claim 1 recites a judicial exception.
More specifically, claim 1, reproduced above, recites an auction system with
a first and second client terminal with processors configured to:
[2] “execute the stored first instructions to cause first information regarding
an auction lot available for live auction bidding to be shown on the first
display,” [3] “receive a first signal indicative of a first input to the first client
terminal,” [4] “cause the first display to show second information allowing
the first user to enter the bid on the auction lot,” [6] “execute the stored
second instructions to cause third information regarding the auction lot
available for live auction bidding to be shown on the second display,”
[7] “cause a second signal to be transmitted to the second client terminal,”
and [8] “cause a notification to be provided to a user of the second client
terminal.” Appeal Br. A. Under the broadest reasonable interpretation,
limitations [2] through [4] and [6] through [8] recite the fundamental
economic practice and commercial interactions of providing an indication of
auction bidding interest.
The Specification describes how, during live auctions, the “auctioneer
can visually see onsite bidders and can thus gauge onsite bidding interest in
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an auction lot by visually observing the activity of potential bidders.” Spec.
¶ 2. In contrast, the “auctioneer cannot . . . see off site bidders and therefore
cannot gauge bidding interest of these bidders on the auction lot.” Id.
Therefore, the Specification describes the invention as “[s]ystems and
methods for providing an indication of auction bidding interest.” Id. ¶ 5.
Thus, the claims recite one of certain methods of organizing human activity,
specifically fundamental economic practices and commercial interactions,
identified as being abstract ideas in the 2019 Revised Guidance.
Appellant asserts that the Examiner improperly uses independent
claim 1 as representative of all claims and that neither of independent claims
11 and 17 recites “a second client terminal,” and further asserts that these
claims also recite additional limitations not included in claim 1. Appeal Br.
24–25. Appellant also contends that the claims provide an indication of
auction bidding interest and that the Examiner “oversimplifies these systems
and method as being directed to receiving a bid and notifying a client
terminal of the bid.” Id. at 25. Also, according to Appellant, “the Office
Action improperly ignores the technical aspects of the claimed subject
matter.” Id.
We are not persuaded by these arguments. Although claims 11 and 17
do not recite “a second client terminal,” they instead recite “a master client
terminal” which receives signals from “client terminal(s)” regarding interest
in bidding on an auction lot. Therefore, like claim 1, claims 11 and 17 recite
the fundamental economic practice of providing an indication of auction
bidding interest. While we agree that the claims are directed to indicating an
auction bidding interest (as opposed to just placing a bid), such an indication
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of auction interest is also a fundamental economic practice, which is merely
being implemented on computers. The additional elements of claims 1 and
17 recited by Appellant such as
for each of a plurality of bidders or client terminals that are
each remotely located from the auctioneer or master client
terminal, either receiving no signal therefrom so as to indicate
no interest in bidding on the auction lot from the bidder or
receiving a first signal therefrom so as to indicate interest in
bidding on the auction lot from the bidder
also relate to the fundamental economic practice of indicating bidding
interest (or no interest). Appeal Br. 25. Furthermore, Appellant does not
specifically point to which “technical aspects” of the claims are being
overlooked; therefore, we are not persuaded by this argument.
Accordingly, we find that the elements of claims 1, 11, and 17 recite a
fundamental economic practice and commercial interactions, which
correspond to the judicial exception of one of certain methods of organizing
human activity.
B. Guidance Step 2A, Prong 2
Having determined that the claims recite a judicial exception, we next
consider whether the claims integrate the judicial exception into a practical
application. “[I]ntegration into a practical application” requires that the
claim recite an additional element or a combination of elements, that when
considered individually or in combination, “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
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to monopolize the judicial exception.” 2019 Revised Guidance, 84 Fed.
Reg. at 54.
Here, there is no practical integration of the abstract idea. Other than
the limitations reciting the abstract idea, discussed above, the remaining
elements recite [1] “a first client terminal including a first display, a first
memory storing first instructions, and a first processor” and [5] “a second
client terminal including a second processor, a second display, and a second
memory storing second instructions.” The terminals recited in the claims are
described in the Specification as being any of “a desktop computer, a
workstation, a minicomputer, a laptop computer, a tablet computer, a
personal digital assistant (PDAs), a smart mobile phone, and a smart watch.”
Spec. ¶¶ 7, 10. Therefore, the claim merely recites implementing the
abstract idea on a generic computer.
Appellant asserts that the “claimed subject matter is directed to
solving a problem of providing an indication of auction bidding interest” and
that this “problem translates into a technical problem of performing
processing, transformation, and communication of various data related to
live auction bidding.” Appeal Br. 26. Appellant further contends:
The problem is solved by client terminals having particular
elements (e.g., a display, a memory, and a processor) and being
communicatively coupled to each other to perform the
operations recited in independent claim 1 and by a master client
terminal having particular elements (e.g., a display, a memory,
and a processor) being communicatively coupled to a plurality
of client terminals located remotely from the master client
terminal and receiving signals therefrom to perform the
operations recited in independent claims 11 and 17.
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Id.
According to Appellant, “[s]uch systems and methods of providing an
indication of auction bidding interest have not been possible in the prior art”
and “[t]hus, the technical solution to the technical problem enables a use of
client terminals and communication therebetween to allow for providing an
indication of auction bidding interest in a live auction context.” Appeal Br.
26. Appellant concludes that “[n]othing about the combination of these
elements and process steps is ‘fundamental’ so as to be a patent ineligible
‘certain method of organizing human activity.’” Id.
Appellant also asserts that “the claims integrate any alleged method of
organizing human activity into a practical application for providing an
indication of auction bidding interest in a live auction context.” Appeal Br.
26–27. According to Appellant, “[t]his integration is evidenced by
additional elements in claims 1–20 that applies or uses the alleged method of
organizing human activity in a meaningful way beyond generally linking the
method of organizing human activity to a particular technological
environment.” Id. at 27. Appellant contends that the claims do not
monopolize all systems or methods of the alleged abstract idea of “receiving
a bid for an item,” because additional limitations are recited and each claim
“recite[s] a particular combination of physical elements and actions that are
not merely directed to receiving a bid.” Id. at 27–28.
Appellant further asserts that the Examiner’s rejection is inconsistent
with Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which
“indicated that software-based solutions implemented on general-purpose
computer components can qualify as improvements to computer
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functionality.” Appeal Br. 28–29. Appellant also contends that McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016),
opines that Step 2A “can be satisfied by improvements that are not
necessarily improvements to the operations of a computer or a computer
network per se.” Id. at 29.
We are not persuaded by Appellant’s arguments. We agree with the
Examiner that “a problem of indicating auction bidding interest is not a
technical problem, but a commercial problem with no relation to any
technology.” Ans. 5. We also find that, other than the limitations reciting
the abstract idea, discussed above, the remaining elements recite terminals,
which are generic computer elements that do not recite a specific data
structure. These elements are distinguishable from Enfish, in which the
claims were found to be an improvement to conventional databases. Enfish,
822 F.3d at 1337.
This case is also distinguishable from McRO, in which the court found
that the claims were clearly an improvement to computer-related technology
by allowing computers to produce “accurate and realistic lip synchronization
and facial expressions in animated characters.” McRo, 837 F.3d at 1307.
Here, the alleged improvement over prior art methods is that the claimed
systems and methods provide an indication of auction bidding interest. We
agree with the Examiner that this is not an improvement to any technology
or computer functionality but “merely uses the generic computer functions
to improve a commercial process, and link it to a technological
environment.” Ans. 5. We also agree with the Examiner that “[i]nterest in
bidding on an auction item is purely an abstract idea and is not a part of any
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technological field, and can be done without any technology.” Id. The
Specification acknowledges this in stating that an auctioneer can “gauge
onsite bidding interest in an auction lot by visually observing the activity of
potential bidders.” Spec. ¶ 2.
Furthermore, we are not persuaded by Appellant’s arguments that the
claims do not monopolize all systems and methods of receiving a bid for an
item. “While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Thus, we find that the computer elements and steps recited in the
claims do not reflect an improvement in the functioning of a computer or an
improvement to other technology or technical field. Therefore, on this
record, we conclude that the judicial exception in Appellant’s claims is not
integrated into a practical application.
C. Guidance Step 2B
Having determined that the judicial exception is not integrated into a
practical application, we next evaluate the additional elements individually
and in combination to determine whether they provide an inventive concept,
such as a specific limitation beyond the judicial exception that is not well-
understood, routine, and conventional in the field, or whether the claim
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 2019 Revised Guidance, 84 Fed. Reg. 51.
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Appellant does not direct us to anything in the Specification indicating
that any additional steps or components beyond the abstract idea recited in
the claims are not generic or conventional. As discussed above, we find the
Specification describes the use of conventional components. For example,
the Specification describes how the terminals can be any of “a desktop
computer, a workstation, a minicomputer, a laptop computer, a tablet
computer, a personal digital assistant (PDAs), a smart mobile phone, and a
smart watch.” Spec. ¶¶ 7, 10. The use of a generic computer to perform
generic computer functions that are “well-understood, routine, conventional
activit[ies]” previously known in the industry is not enough to transform the
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26
(alteration in original).
Accordingly, the preponderance of evidence of record supports the
Examiner’s finding that Appellant’s claimed invention is directed to patent-
ineligible subject matter. The rejection of claim 1 under 35 U.S.C. § 101 is
sustained. Independent claims 11 and 17 suffer from the same deficiencies
as claim 1 and we sustain the rejection of these claims for the reasons
discussed above. Claims 2–10, 12–16, and 18–20 are not argued separately,
and fall with claims 1, 11, and 17. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejection of claims 1–20 under 35 U.S.C. § 103 as being unpatentable over
Scully in view of Mullendore
The Examiner finds that Scully discloses elements [1]–[3], [5], [7],
and [8] of claim 1. Final Act. 7–8 (citing Scully ¶¶ 78, 79, 88, 90, 91). The
Examiner acknowledges that Scully does not explicitly teach elements [4]
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“in response to the receipt of the first input, cause the first display to show
second information allowing the first user to enter the bid on the auction lot”
and [6] “the second processor being configured to execute the stored second
instructions to cause third information regarding the auction lot available for
live auction bidding to be shown on the second display,” but finds that
“Scully does disclose an auction system where the user can auction for an
item and a property seller can upload an item for sale and any related
document.” Id. at 8 (citing Scully ¶¶ 73, 78).
The Examiner also finds that Mullendore teaches elements [4] and [6]
of claim 1. Final Act. 8–9 (citing Mullendore ¶¶ 4, 26, 56, 58, Figs. 3–6).
The Examiner concludes:
It would have been obvious to one of ordinary skill in the art,
before the effective filing date of the invention, to have
included the second device displaying information of the
auction lot and information allowing the first user to bid on the
auction lot to the invention of Scully. One of ordinary skill in
the art would have been motivated to do so in order to sell the
items at a faster pace.
Id. at 9 (citing Mullendore ¶ 5).
Appellant asserts that the Examiner improperly failed to consider the
live auction aspect of the claims because the Examiner found that “[t]he live
auctioning is not a functional aspect of the claims and presents intended use
for [the] bidding/notifying claimed in the invention.” Appeal Br. 6 (citing
Final Act. 3). Appellant contends that the “live auction bidding” aspects of
claim 1 are positively recited and not recited as mere intended use and,
therefore, must be considered in determining the patentability of the claims.
Id.
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Appellant further argues that Scully teaches away from auctions and
would not be modified to incorporate auction-specific aspects of Mullendore
as found by the Examiner. Appeal Br. 9. In support of this argument,
Appellant points to statements by the Examiner that the system in Scully is
“not . . . an auction” and “Scully teaches away from auctions.” Id. (citing
Final Act. 3). According to Appellant, “Scully specifically does ‘criticize,
discredit, or otherwise discourage’ use of private and public auctions for
asset sales and would thus not have been modified as proposed by the
Examiner.” Id. at 10.
Appellant asserts that Scully is directed to “[a] system to manage,
review, and process distressed real estate and other assets.” Appeal Br. 10
(citing Scully, Abstract, ¶¶ 2, 4, 42). Scully also states that:
banks and financial institutions find themselves holding a
significant number of assets or properties, many of which are
nonperforming or under-performing. Many of these institutions
desire to sell or “offload” these assets, but at present, the
mechanisms to do so, such as conducting a public or private
auction, are not efficient at attracting a large number of
potential purchasers or inventors or in maximizing the value of
the asset or property for the institution. According, what is
needed is a system that enables an institution to manage its
assets or properties and present them to potential purchasers or
inventors to maximum benefit.
Id. (quoting Scully ¶ 3). Therefore, according to Appellant, “Scully . . .
would not have been modified in view of Mullendore to involve asset sales
via auction lots available for live bidding” because Scully criticizes use of
“auctions for asset sale[s] as being inefficient in attracting buyers and in
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maximizing value and consequently provides its asset management system
and method as an alternative, purportedly better solution.” Id. at 11.
Appellant further contends that the Examiner’s finding that Scully
would have been modified in view of Mullendore “in order to sell the items
at a faster pace” is improper because Scully does not want faster selling to
happen. Appeal Br. 11. According to Appellant, Scully states that “what is
needed is a system that enables an institution to manage its assets or
properties and present them to potential purchasers or inventors to maximum
benefit,” which is not possible by conducting an auction. Id. Appellant
concludes that the “proposed reason for modifying Scully is thus in direct
contradiction to Scully’s system and thus provides additional evidence that a
person of ordinary skill in the art would not have made the proposed
modification.” Id.
Similarly, Appellant contends that the Examiner’s proposed
modifications to Scully to include auctions impermissibly changes the
principle of Scully’s operation. Appeal Br. 12. Specifically, Appellant
asserts:
Making Scully’s system be auction-based in view of
Mullendore with assets being sold via auction bidding instead
of via Scully’s described online selling system clearly changes
how the assets are sold, the timing of when the assets are sold,
and who is available as potential investors or buyers for the
assets.
Id.
We find that Appellant has the better position. “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
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instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (alteration in original). The Examiner’s given
reason as to why one of ordinary skill in the art would combine the teachings
of Scully and Mullendore is that such a person “would have been motivated
to do so in order to sell the items at a faster pace.” Final Act. 9 (citing
Mullendore ¶ 5). The Examiner fails to provide reasoning as to why one of
skill in the art would want to sell items at a faster pace (as opposed to
“maximizing the value of the asset” as discussed in Scully), nor how using
the auction system of Mullendore would result in items being sold “at a
faster pace.” This problem is confounded by the fact that Scully teaches that
auctions “are not efficient at attracting a large number of potential
purchasers or investors or in maximizing the value of the asset or property.”
Scully ¶ 3.
Furthermore, the Examiner has not sufficiently shown that combining
the teachings of Scully and Mullendore would result in the limitations
recited in claim 1. For example, limitation [4] of the claim requires that “in
response to the receipt of the first input,” the first display “show[s] second
information allowing the first user to enter the bid on the auction lot.” While
the Examiner relies on Mullendore for teaching a display window where a
bidder can bid for items, Mullendore does not teach that this display window
is generated in response to a first input. We agree with Appellant that the
rejection employs improper hindsight in combining the teachings of Scully
and Mullendore. “We must still be careful not to allow hindsight
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reconstruction of references to reach the claimed invention without any
explanation as to how or why the references would be combined to produce
the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363,
1374 n.3 (Fed. Cir. 2008).
Thus, we do not sustain the Examiner’s rejections of claims 1–20
under 35 U.S.C. § 103 as being unpatentable over Scully in view of
Mullendore.
CONCLUSION
For the reasons described herein and those already of record, we
affirm the Examiner’s rejection of claims 1–20.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Scully, Mullendore 1–20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED