Ex Parte 6978253 et al

Board of Patent Appeals and Interferences

Aug 24, 2012

90009444 (B.P.A.I. Aug. 24, 2012)

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.
90/009,444 04/01/2009 6978253 101443RX 3419
38834 7590 08/24/2012
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/24/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PRICEPLAY, INC.1,
Appellant and Patent Owner
____________

Appeal 2011-013687
Reexamination Control No. 90/009,444
Patent 6,978,253 B22
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
JONI Y. CHANG, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Priceplay, Inc., Appellant, appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1, 2, 9-15, 18, 20-23, and 30. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1 Priceplay, Inc. is the Patent Owner and the real party in interest (App. Br.
2).
2 Issued December 20, 2005, to Wayne W. Lin.
Appeal 2011-013687
Reexamination Control No. 90/009,444
United States Patent 6,978,253 B2

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STATEMENT OF THE CASE3
This proceeding arose from a request for ex parte reexamination filed
on behalf of multiple parties on April 1, 2009, of United States Patent
6,978,253 B2 (the '253 Patent), based on U.S. Patent Application
09/342,866, filed June 29, 1999. Appellant waived appearance at an oral
hearing scheduled for this appeal on February 15, 2012. See
Communication filed December 8, 2011.
The '608 Patent was asserted in Performance Pricing, Inc. v. Google
Inc., CA No. 2:07-cv-432 (E.D. Tex. 2007), where the court granted
defendants summary judgment for non-infringement of the '253 Patent, with
that summary judgment affirmed by the Federal Circuit on February 11,
2011 (App. Br. 3).

CLAIMED INVENTION
Appellant’s invention relates to systems and methods of doing
business over a global communications network such as the Internet, where
competition and/or entertainment are used to determine transaction prices
between buyers and sellers (col. 1, ll. 8-13).
Claims 1, 2, 9-15, 18, 20-23, and 30 are pending and subject to
reexamination. Original claims 3-8, 16, 17, 19, 24-29, and 31-33 are not
subject to reexamination. Claims 1, 2, 9-15, 18, 20-23, and 30 have been

3 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 11, 2011) and Reply Brief (“Reply Br.,” filed July 12,
2011), and the Examiner’s Answer (“Ans.,” mailed May 12, 2011).
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rejected and are appealed (Reply Br. 2).
We take independent claim 1 to be representative:
1. A method of doing business over a global
communications network comprising the steps:
communicating to a buyer via the global
communications network, a description of a product;
accepting a first request from the buyer to buy the
product for a price to be determined within a price range, the
first request indicating that the buyer is bound to purchase the
product prior to the price being determined;
accepting a second request from the buyer to allow the
price to be determined based upon a performance of the buyer
while participating in a Price-Determining-Activity (PDA);
receiving data from the buyer over the global
communications network, said data representing the
performance of the buyer during the PDA; and
determining the price of the product based at least
partially upon the data received, said price being within the
price range and scaled to the performance of the buyer.
(App. Br. 32, Claims App’x.).

PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Rossides 5,620,182 Apr. 15, 1997
Walker 5,779,549 Jul. 14, 1998
E-Commerce That May Be Closer to Home: Key Is Safe Settlement of
the Bill, Asahi Shimbum, Tokyo Morning Edition, Jun. 22, 1996, at 19
(English translation; hereinafter referred to as “Asahi”).
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The Examiner maintained a rejection of the claims on the following
bases:
 claims 1, 2, 9, 10, 12-15, 18, 20-23, and 30 under 35 U.S.C. § 103(a)
as being unpatentable over Asahi and Rossides (Ans. 4-12); and
 claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Asahi,
Rossides, and Walker (Ans. 12-13).
Appellant relies upon the following evidence in rebuttal to the
Examiner’s rejection:
 Declaration of Wayne W. Lin, dated September 30, 2010 (App. Br.;
Evidence Appx.)(“Lin Decl.”).

ISSUES
Appellant has asserted numerous arguments as to whether the
Examiner erred in proffering the above-cited rejection, which we detail in
the analysis section below. We have considered in this decision only those
arguments that Appellant actually raised in the Briefs. Arguments which
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The issues arising from the respective positions of Appellant and the
Examiner, which we consider herein, are:
Did the Examiner err in finding that Asahi and Rossides render the
subject matter of claims 1, 2, 9, 10, 12-15, 18, 20-23, and 30 obvious?
Did the Examiner err in finding that Asahi, Rossides, and Walker
render the subject matter of claim 11 obvious?
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FINDINGS OF FACT
1. Asahi describes a system which allows a user to play games of
paper-rock-scissors to determine the price for a product (p. 3). In
the example disclosed, the user selects a “CD radio cassette
recorder,” and is provided with the “standard price [of] 22,000
yen” (p. 4).
2. Asahi further describes that upon winning of the games, the price
can be “16,800 yen,” “13,800 yen” or an undetermined amount “?”
(p. 4). The user indicated that the user won twice but lost on the
third go (id.).
3. After the game play in Asahi, the user decides to place an order,
and enters the type, number and expiration date to the user’s credit
card (id.).
4. Rossides discloses an expected value payment method to reduce
the expected per unit costs incurred in paying for a given amount
of a commodity (Abs.). Examples are provides wherein pre-
payment is made prior to a bet, committing the buyer to purchase,
where the pre-payment influences the odds of winning (col. 5, l. 20
– col. 6, l. 55).

PRINCIPLES OF LAW
A finite number of solutions within the skill and understanding of
ordinarily skilled artisans can be indicative of obviousness:
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When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

ANALYSIS
With respect to the independent claims rejected, namely claims 1, 18,
and 30, Appellant argues the limitations of claim 1, and provides that claims
18 and 30 “are rejected for basically the same reasons that claim 1 is
rejected,” and disputes the rejection for the same reasons provided in
relation to claim 1 (App. Br. 21-22). As such, we take claim 1 to be
representative of the independent claims rejected. See 37 C.F.R. §
41.37(c)(1)(vii).
Appellant argues that the Examiner has ignored the limitation in claim
1 of “accepting a first request from the buyer to buy the product for a price
to be determined within a price range” (App. Br. 11). Appellant argues that
in Asahi, the buyer decides whether to purchase a product after the price is
determined (id.). The Examiner finds that Appellant’s argument confuses
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making a request for a purchase and consummating a purchase (Ans. 14).
We agree with the Examiner.
Claim 1 recites, in part, “accepting a first request” to buy, not buying
the product, per se. The request to buy can be received and processed
without a purchase being completed. In Asahi, the indication of the product
desired corresponds to the initial request (FF 1). While Appellant
emphasizes that claim 1 requires that the buyer be bound to purchase the
product for the price to be determined (Reply Br. 2), we agree with the
Examiner (Ans. 5), that that aspect of claim 1 can be found in Rossides, and
the rejection need not rely on Asahi as teaching all aspects of the claim step
(Ans. 15). While Appellant is correct that no actual purchase occurs in
Asahi until after the price is determined (Reply Br. 3), that is not what claim
1 requires. It is clear in Asahi that an initial request is made without the
potential purchaser knowing the final price of the item (FF 2). We do not
find the first portion of the cited claim step requires more. With respect to
the binding of the purchaser, also recited in that claim step, the rejection
references Rosssides, as discussed below.
Appellant also argues that in Rossides, payment is required at a point
in the transaction at which the price had already been determined (App. Br.
12). In addition, Appellant argues that in Rossides, if the better loses the
bet, the better may not be bound to purchase the commodity and can simply
forgo the bet payment, in contrast to claim 1 (App. Br. 13). The Examiner
finds that Rossides in not relied upon in the rejection as teaching the first
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portion of the accepting step, and that in Rossides, a user must make a pre-
payment which is not refundable and binds the user to purchase (Ans. 15-
16). We agree with the Examiner.
As discussed above, we find that Asahi discloses that a request is
accepted prior to the final price of an item being known. As such, the fact
that Rossides does not teach the same is not necessary to sustain the
rejection. With respect to the better in Rossides forgoing the bet payment,
we do not find that that implicates that the better is not bound in some way.
Appellant acknowledges that “in the cited examples [of Rossides], the buyer
is bound to the bet after the predetermined bet payment has been made based
on a predetermined price” (Reply Br. 4-5). While that statement is made
with respect to the timing and predetermination required in Rossides, it
shows that Appellant acknowledges that Rossides acts to bind the better,
contrary to the arguments raised in the Appeal Brief (App. Br. 13). As such,
we do not determine that the Examiner erred in this disputed aspect of the
rejection.
Appellant also argues that the Examiner “improperly read out the
phrase ‘within a price range’ from the limitation” (App. Br. 14), and that
the price range limitation requires and “an upper and lower bound within
which the price may vary” and is different than simply a price (App. Br. 15).
Appellant argues that the prices specified in Asahi are merely individual
prices and there is no discussion of upper or lower bounds (Reply Br. 6).
The Examiner finds that Asahi discloses a price range, and we agree.
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Asahi provides the user with a standard price and discounted prices
based on wins at paper-rock-scissors (FF 1, 2). We find that one of ordinary
skill in the art would have viewed these prices as falling within a price range
even though they are individual prices. Additionally, even if the “The third
time?,” in Asahi, “implies that the boundary is not known,” as alleged by
Appellant (Reply Br. 6), we find that this still discloses a price range. If the
final price was zero, that would still disclose a price range, given the
standard price, and thus having an upper and a lower bound. As such, we do
not determine that the Examiner erred in this disputed aspect of the rejection.
Appellant also argues that “[n]one of the cited references teaches or
suggests the desirability of the modification that the examiner has simply
concluded is obvious” (App. Br. 15). To the extent Appellant seeks an
explicit suggestion or motivation in the reference itself, this is no longer the
law in view of the Supreme Court’s holding in KSR, 550 U.S. at 418. The
Examiner has provided an articulated reasoning with rational underpinning
for why a person with ordinary skill in the art would have combined Asahi
and Rossides.
Appellant also argues that one of ordinary skill in the art would not
have been motivated to require payment prior to the initiation of the game
because Asahi does not provide the buyer with a price range (App. Br. 16),
but as discussed supra, we do not agree. Appellant also argues that the
Examiner’s reasons to combine do not hold up, specifically 1) because Asahi
already addresses cheating, 2) because payment is already assured in Asahi,
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and 3) because Asahi does not mention odds of winning (App. Br. 17). We,
however, agree with the Examiner finding 1) that the encoding in Asahi is
directed to identification of a buyer and not the buyer gaming the system,
i.e., cheating, 2) that Asahi does not forbid repeated play, which raises the
issues addressed in the rejection, and 3) that Rossides addresses odds (FF 4)
such that Asahi need not address the same for the combination to be
motivated (Ans. 18-19).
Appellant also argues that proposed modification of Asahi would
render it unsatisfactory for its intended purpose, because in the timeframe of
the instant invention, given the uncertainty about e-commerce, alluded to in
Asahi, one of ordinary skill in the art would have intentionally avoided
adopting a required up-front payment method (App. Br. 18). The Examiner
responds that the apprehensions of a single buyer do not mean that the
invention is incapable of working, or satisfying the technical requirements,
and the modifications suggested in the rejection adds to the functionalities of
Asahi which are already present (Ans. 19-20). We agree with the Examiner.
While Asahi discusses the apprehensions apparent in that era, it is also
clear that the user in Asahi places the order through the system (FF 3), such
that this undercuts the argument that users in the relevant period would have
not been willing to provide payment information upfront. Additionally,
since the purpose of the system in Asahi is commerce, it would be difficult
to imagine requiring users to provide information for purchase renders the
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system unsatisfactory for its intended purposes. As such, we do not
determine that the Examiner erred in this disputed aspect of the rejection.
With respect to dependent claims 13 and 22, Appellant argues that
Asahi does not determine the price, at least partially, on the participation of
the buyer in an auction (App. Br. 19-21, 24-25), so that Asahi and Rossides,
cannot render claims 13 and 22 obvious. The Examiner continues to find
that “[o]ffering a product at a declining price constitutes an auction of that
product,” and Asahi discloses precisely that (Ans. 20). We generally agree
with the Examiner.
While the definition of “auction” is broad, we do not find it to be
inconsistent with the specification. As the Examiner points out (Ans. 20-
21), the Specification of the '253 Patent (column 4, line 39-41) discusses
both auction and reverse auction models, and we concur that the recitation of
“auction” in claims 13 and 22 would cover both models disclosed therein.
In view of Asahi’s disclosure of offering a product for a declining price, we
agree that this would have been viewed as a reverse auction by one of
ordinary skill in the art. Additionally, while agree with Appellant that
auction and reverse auction processes are different (App. Br. 20), that does
not imply that the disclosure of one does not render the use of the other
obvious. As such, we do not determine that the Examiner erred in the
rejection of claims 13 and 22.
With respect to dependent claims 15 and 23, Appellant argues that the
“offer received from the buyer” recited in each claim refers to an offer of a
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price and not the action of choosing a product, which does not affect price
(App. Br. 21). However, we agree with the Examiner that claims 15 and 23
do not recite a price submitted by a buyer, only an offer (Ans. 21). The
selection of a particular product in Asahi would certainly affect the price
since different products would have different ranges of prices. As such, we
do not determine that the Examiner erred in the rejection of claims 15 and
23.
With respect to dependent claim 21, Appellant argues that the price in
Asahi is not dependent at least partially upon a bid selected by the buyer, per
claim 21, and is only dependent on the number of times the buyer wins at the
game (App. Br. 23). The Examiner finds that the final price after the results
of the game playing is a price offered, which is selected by the buyer (Ans.
21). We agree with the Examiner. Appellant’s argument is interesting in
that earlier in the Brief, Appellant argues that the buyer is not bound to
purchase the product in Asahi (App. Br. 11). Accepting that reading of
Asahi, it seems clear that after the game playing, the buyer has the option to
select the “final” bid or price and enter information to make the purchase, if
desired. To that extent, we find that the buyer selects a bid and the price is
dependent on that bid at least partially, or in this instance completely. As
such, we do not determine that the Examiner erred in the rejection of claim
21.
With respect to dependent claim 11, rejected over the combination of
Asahi, Rossides, and Walker, Appellant argues that the combination does
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not teach or suggest a price within a price range because Asahi and Rossides
only provide a single price (App. Br. 26-27). We disagree with Appellant’s
characterization, as discussed supra, and do not find this to be a deficiency
of the rejections. In addition, Appellant argues that Walker provides that
each winning buyer gets a different prize or product, whereas claim 11
requires that a second price for the same product is generated based on the
competition of at least two buyers (App. Br. 27). However, Appellant has
not indicated where Walker requires the prizes awarded to be different, and
we do not find support for the same in Walker. Given the different amounts
of discounting disclosed in Asahi (Ans. 13), it would have been obvious to
provide different discounts based on the placement of players in the
tournament, per the rejection of claim 11 (id.). As such, we do not
determine that the Examiner erred in the rejection of claim 11.
Appellant also addressed certain secondary considerations of non-
obviousness said to run counter to the findings of obviousness (App. Br. 28-
30). Appellant cites that the instant patent has been licensed to Yahoo!,
Microsoft, and others (App. Br. 28-29), with Dr. Lin offering corroborating
testimony (Lin Decl. ¶ 7). However, as the Examiner points out, the
existence of licenses has been alleged, but their nature and specifics have not
been proffered (Ans. 22-23). We cannot determine whether the licenses
were sought based on claimed elements of the '253 Patent, or due to
unclaimed features or non-technical considerations. As such, we agree with
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the Examiner that Appellant has failed to proffer a proper nexus between the
alleged licensure and the merits of the invention.
Appellant also argues that the claimed invention solves at least one
long-felt, but unmet need that was specifically suggested, but not solved, by
Rossides (App. Br. 29-30; Lin Decl. ¶ 6). Appellant argues that by binding
the potential buyer and by scaling the price based on a price-determining
activity, this provides an individualized and customized demand curve for
purchasers that can be exploited, as discussed but not realized in Rossides
(App. Br. 30). The Examiner finds that the questions raised in Rossides are
not long-felt, but unmet, needs, and that Appellant has not provided
persuasive evidence of actual long-felt, but unmet, needs (Ans. 23-24). We
agree with the Examiner.
As provided in Dr. Lin’s Declaration, the instant invention addresses
“an economic dilemma Rossides intended to solve” (Lin Decl. ¶ 6). Without
more, this does not demonstrate that such an economic dilemma was a long-
felt, but unmet, need. Based on the evidence and argument provided, the
questions raised in Rossides may not be of general concern in the art. In
addition, given that Rossides stipulates that its methods provide “a poor
partial solution” (FF R1), we cannot state that any need expressed in the
questions presented is “unmet.” As such, we do not find the arguments and
evidence sufficient to show resolution of a long-felt, but unmet, need
sufficient to overcome the showing of obviousness of the claims so rejected.
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Thus, the proffered evidence does not constitute the necessary
showing by the preponderance of the evidence that these secondary
considerations should overcome the obviousness findings made by the
Examiner.

CONCLUSION
We conclude that the Examiner did not err in finding that 1) Asahi
and Rossides render the subject matter of claims 1, 2, 9, 10, 12-15, 18, 20-
23, and 30 obvious, and 2) that Asahi, Rossides, and Walker render the
subject matter of claim 11 obvious.

DECISION
We affirm the Examiner’s rejection of claims 1, 2, 9-15, 18, 20-23,
and 30.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

Appeal 2011-013687
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ack

cc:

FOR PATENT OWNER:
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON DC 20036

FOR THE THIRD PARTY REQUESTORS:
ROBERT A. SALTZBERG
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANSISCO, CA 94105

LAURA L. KOLB
SIDLEY AUSTIN LLP
ONE SOUTH DEARBORN STREET
CHICAGO, IL 60603

EMILY C. O'BRIEN
QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP
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