Ex Parte Demarcken et al

Board of Patent Appeals and Interferences

Oct 20, 2009

10456997 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL G. DEMARCKEN and JUSTIN A. BOYAN
____________

Appeal 2009-003817
Application 10/456,9971
Technology Center 2100
____________

Decided: October 20, 2009
____________

Before HOWARD B. BLANKENSHIP, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed June 6, 2003. The real party in interest is ITA Software,
Inc.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-30 mailed July 19, 2006, which are all the claims pending in the
application2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants invented a system, method, and computer readable
medium for providing travel planning, including a cache database that stores
query results and a cache test mechanism that receives a travel planning
query and uses the query to find a result in the cache database. If a result is
found, it is returned. The result includes a set of answers, with each answer
in the set having a flight and a fare useable with the flight. (Spec. 31,
Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-30. Claims 1, 7, 10, 16, 19, 25, and 28
are independent claims. Claim 1 is illustrative:
1. A query cache for travel planning comprising:
a cache database that stores query results that are a set of
answers that include combination of flights and fares for travel plans;
a cache test mechanism that receives a travel planning
query and uses the travel planning query to find a result in the cache
database that satisfies the travel planning query and if a result is
found, tests the found result to determine if the result is fresh or stale
and returns the result if fresh, with the result including a set of

2 An Oral Hearing was held via telephone with the U.S. Patent and
Trademark Office on October 8, 2009.
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answers each answer in the set having a flight and a fare useable with
the flight.

C. REFERENCE
The sole reference relied upon by the Examiner as evidence in
rejecting the claims on appeal is as follows:
DeMarcken US 6,418,413 B2 Jul. 9, 2002

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-30 are rejected under 35 U.S.C. § 102(e) as being
anticipated by DeMarcken; and
(2) Claims 1-30 are provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1, 2, 14, 15, 27, and 28 of copending Application No. 10/456,980.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

DeMarcken
1. DeMarcken discloses “a cache or a database of stored availability
queries and answers to the availability queries. The queries are used to
identify when a stored query is the same as a received query request, and the
answers are used as a substitute for direct access for future identical or
substantially related queries.” (Col. 2, ll. 51-55.)
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2. In DeMarcken, a result will generally comprise a message that
includes airline information, the flight, the origin, the destination, the date,
booking codes, and counts. (Col. 5, ll. 45-60.)
3. DeMarcken discloses “booking codes that are labels used to
designate different prices that an airline is willing to sell tickets at. . . . [I]n
general most carriers will use Y booking codes corresponding to an
expensive coach class fare and a Q booking code as an inexpensive coach
class fare.” (Col. 1, ll. 31-44.)
4. DeMarcken discloses that “an availability predictor 65 includes a
database 70, a database engine 80 and a predictor process 90. The database
70 stores availability queries and answers . . . .” (Col. 5, ll. 10-13.)
5. In DeMarcken, “[t]he database 70 can be implemented using
various approaches including . . . a software or hardware cache.” (Col. 7,
ll. 46-49.)
6. DeMarcken discloses that “[i]n response to a query, the look-up
and retrieval process 94 produces either a prediction for the answer of the
query or an actual answer depending upon whether the look-up and retrieval
process retrieves an answer from the database 70 or the yield management
system 66.” (Col. 6, ll. 52-57.)
7. In DeMarcken, “[i]f a stored query is found 114 in the query
database 70 that matches the received query . . . the process 94 will retrieve
116 the stored answer. The process 94 will determine if the stored answer is
stale 118 by comparing the time of the query to a threshold time . . . .” (Col.
7, ll. 20-25.)
8. In DeMarcken, “[i]f the query was not found in the database 70 or
if the stored query which was found is stale, the look-up and retrieval
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process 94 optionally can determine 122 whether or not to use another
predictor . . . . Otherwise, . . . the process can send 126 an actual availability
query to the airline availability system 66.” (Col. 7, ll. 33-44.)
9. DeMarcken discloses that “[t]he answer that is received 128 from
the airline availability system 66 is returned 130 as the answer and can be
used to update 130 the database 70.” (Col. 7, ll. 44-46.)
10. DeMarcken discloses that “[t]he database 70 can also be
populated by routine direct queries even in the absence of queries made to
the predictor . . . . [T]he database 70 may be populated during off peak
times for travel agents or may be simply populated with such routine queries
when the system is not otherwise in use.” (Col. 6, ll. 6-12.)

III. PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue “reads on” a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

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Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).

Non-Statutory Obviousness-Type Double Patenting
As stated by our reviewing court in In re Braat, 937 F.2d 589 (Fed.
Cir. 1991):
Obviousness-type double patenting is a judicially created
doctrine intended to prevent improper timewise extension of the
patent right by prohibiting the issuance of claims in a second patent
which are not “patentably distinct” from the claims of a first patent.

Id. at 592 (citation omitted).
An obviousness-type double patenting analysis is analogous to an
obviousness analysis under 35 U.S.C. § 103(a). See Studiengesellschaft
Kohle mbH v. N. Petrochemical Co., 784 F.2d 351, 355 (Fed. Cir. 1986); In
re Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985).

IV. ANALYSIS
Grouping of Claims
In the Brief:
Group I: Appellants argue claims 1, 3, and 4 as a group (App. Br. 9-
14). For claims 3 and 4, Appellants repeat the same argument made for
claim 1. We will, therefore, treat claims 3 and 4 as standing or falling with
claim 1.
Group II: Appellants separately argue claim 2 (App. Br. 14-15).
Group III: Appellants separately argue claim 5. Claim 6 shall stand
or fall with claim 5 because of its dependency. (App. Br. 15-16).
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Group IV: Appellants argue claims 7 and 8 as a group (App. Br. 16-
17). For claim 8, Appellants repeat the same argument made for claim 7.
We will, therefore, treat claim 8 as standing or falling with claim 7.
Group V: Appellants argue claims 9, 18, and 27 as a group (App. Br.
17-18, and 21). For claims 18 and 27, Appellants repeat the same argument
made for claim 9. We will, therefore, treat claims 18 and 27 as standing or
falling with claim 9.
Group VI: Appellants argue claims 10-12, 14, 15, 19-21, 23, 24, and
28-30 as a group (App. Br. 18-19, and 21). For claims 11, 12, 14, 15, 19-21,
23, 24, and 28-30, Appellants repeat the same argument made for claim 10.
We will, therefore, treat claims 11, 12, 14, 15, 19-21, 23, 24, and 28-30 as
standing or falling with claim 10.
Group VII: Appellants argue claims 13 and 22 as a group (App. Br.
19-20). For claim 22, Appellants repeat the same argument made for claim
13. We will, therefore, treat claim 22 as standing or falling with claim 13.
Group VIII: Appellants argue claims 16, 17, 25, and 26 as a group
(App. Br. 20-21). For claims 17, 25, and 26, Appellants repeat the same
argument made for claim 16. We will, therefore, treat claims 17, 25, and 26
as standing or falling with claim 16.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Anticipation Rejection
We first consider the Examiner’s rejection of the claims under 35
U.S.C. § 102(e) as being anticipated by DeMarcken.

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Group I
Claims 1, 3, and 4
Appellants contend that “[u]nlike [D]eMarcken, the result that is
returned according to Appellant’s claim 1 includes a set of answers each
answer in the set having a flight and a fare usable with the flight.
[D]eMarcken in contrast, discloses that: ‘. . . the predictor process 90 that
uses the database 70 to provide predicted availability answers is shown.’”
(App. Br. 13 (omission in original, footnotes omitted).) Appellants further
contend that “[w]hile the message contains flight information, and shows
booking codes and seat counts, the message does not possess a fare, as
required by claim 1.” (Reply. Br. 2-3.)
The Examiner found that DeMarcken discloses a cache database that
stores query results that are a set of answers (Ans. 12-13).

Issue: Have Appellants shown that the Examiner erred in finding that
DeMarcken discloses returning the result in the cache which includes a set
of answers, each answer in the set having a flight and a fare useable with the
flight?

In essence, Appellants contend that while DeMarcken discloses
providing availability of airline seats, the result that is returned by
DeMarcken shows booking codes and seat counts but does not show a set of
answers having a flight and a fare combination, as required by claim 1
(Reply Br. 2-3). We disagree.
Initially, we find that the claimed recitations “with the result including
a set of answers each answer in the set having a flight and a fare usable with
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the flight” and “travel planning query” both contain non-functional
descriptive material, which does nothing to change the utility of the
underlying system. For example, the content of the “result” or the focus of
the “query” does not affect any machine function, but represents mere data
that is returned/sent. The content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See in re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory. . . . Nor does he seek to patent the content of
information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d
1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d
1272 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed. Cir. Jun. 12,
2006) (Rule 36); Manual of Patent Examining Procedure (MPEP) § 2106.01
(Eighth ed., Rev. 7, Jul. 2008).
However, even if the above noted language was given weight, we find
the DeMarcken discloses both travel planning queries and results. For
example, DeMarcken discloses that a cache database, having stored
availability queries and answers to the queries, is used to identify answers as
a substitute for direct access to an airline system (FF 1). DeMarcken further
discloses that the returned message includes flight information and a set of
booking codes, e.g., F, C, Y, M, K, L, and Q, each signifying a particular
price range (FF 2). In DeMarcken, the booking codes are labels used to
designate the different “fares/prices” that airlines are willing to sell the
tickets for (FF 3). In other words, DeMarcken’s booking codes inherently
includes various pricing information. Appellants’ Specification defines
“fares” as “prices” (Spec. 3, l. 24). Thus, the claimed “set of answers . . .
having a flight and a fare” reads on DeMarcken’s results including a flight
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associated with various booking codes which inherently include pricing
information.
DeMarcken further discloses that database 70 stores the availability
queries and answers and can be implemented as a cache (FF 4-5). In
response to a query in DeMarcken, the look-up and retrieval process
produces either a prediction for the answer or an actual answer (FF 6). In
other words, DeMarcken may retrieve an actual answer, including a flight
and fare, from a cache database.
Therefore, we find that the claimed “result including a set of answers
each answer in the set having a flight and a fare useable with the flight”
reads on DeMarcken’s results from database 70.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 1. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 1 and of claims 3 and 4,
which fall therewith.

Group II
Claim 2
Appellants contend that “[i]n [D]eMarcken, if a stored answer from
the availability cache is stale, [D]eMarcken teaches to send a query to an
airline’s availability system, not to a travel planning system.” (Reply Br. 4.)
The Examiner found that DeMarcken determines that the found result
is stale (Ans. 14).

Issue: Have Appellants shown that the Examiner erred in finding that
DeMarcken discloses “if the cache test mechanism determines that the found
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result is stale, the query cache sends the travel planning query to the travel
planning system”?

We initially note that Appellants have not shown how the claimed
“travel planning system” is distinguishable from DeMarcken’s “airline
availability system.” Although Appellants argue distinguishing features for
the “travel planning system”, Claim 2, as drafted, does not require any
particular functionality to be attached to the travel planning system, other
than to provide answers to queries. Therefore, we view these terms as mere
labels and under a broad but reasonable interpretation, a “travel planning
system” can include any system which facilitates travel. Here, DeMarcken’s
airline availability system facilitates travel by providing answers to
availability queries. Secondly, as noted by the Examiner, DeMarcken
checks for staleness and if stale, uses another travel system, other than the
cache database, to get results.
Specifically, DeMarcken discloses that its process will determine if
the stored answer is stale by comparing the time of the query to a threshold
time (FF 7-8). In DeMarcken, if the answer is indeed stale, then the look-up
retrieval process can send an actual availability query to the airline
availability system (FF 8). The answer received from DeMarcken’s airline
availability system is returned as the answer and is used to update the
database 70 (FF 9).
Thus, we find that the claimed “if . . . the found result is stale, the
query cache sends the travel planning query to the travel planning system”
reads on DeMarcken’s above noted features.
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Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for claim 2. Therefore, we affirm the Examiner’s
§ 102 rejection of claim 2.

Group III
Claims 5 and 6
Appellants contend that “[D]eMarcken does not suggest this feature,
since claim 5 requires ‘using the query, the found result and age of the found
result to determine whether the found result is stale or sufficiently fresh.’”
(App. Br. 15; see also Reply Br. 5.)
The Examiner found that DeMarcken discloses “[t]he process will
determine if the stored answer is stale by comparing the time of the query to
a threshold time” (Ans. 15) (italic omitted).

Issue: Have Appellants shown that the Examiner erred in finding that
DeMarcken discloses determining “whether the result is stale or fresh by
using . . . age of the found result”?

As noted by the Examiner, DeMarcken discloses comparing the “time
[i.e., age] of the query” to a threshold time to determine if the stored answer
is stale (see also FF 7). However, we find that the “query time” is not the
same as the claimed “age of the result,” which is generally subsequent to the
query time.
Thus, Appellants have persuaded us of error in the Examiner’s
conclusion of anticipation for claim 5. Therefore, we reverse the Examiner’s
§ 102 rejection of claim 5 and of claim 6 which depends therefrom.
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Group IV
Claims 7 and 8
Appellants contend that “when [D]eMarcken finds that availability
data is stale, [D]eMarcken teaches to send an availability query to an airline
availability system, e.g., a revenue management or yield management
system, and not to a travel planning system.” (App. Br. 16.)
The Examiner found that DeMarcken discloses that “[t]he travel
planning system also includes a plurality of databases which store industry
standard information pertaining to travel.” (Ans. 16 (italic omitted).)

Issue: Have Appellants shown that the Examiner erred in finding that
DeMarcken’s “availability system” is equivalent to the claimed “travel
planning system”?

As noted supra, Appellants have not shown how the claimed “travel
planning system” is distinguishable from DeMarcken’s “airline availability
system.” The claims, as drafted, do not require any particular functionality
to be attached to the travel planning system, other than to provide answers to
queries. We view these terms as mere labels and under a broad but
reasonable interpretation, a “travel planning system” can include any system
which facilitates travel. Here, DeMarcken’s airline availability system
facilitates travel by providing answers to availability queries.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for claim 7. Therefore, we affirm the Examiner’s
§ 102 rejection of claim 7 and of claim 8, which falls therewith.
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Group V
Claim 9, 18, and 27
Appellants contend that “[D]eMarcken does not repose queries to a
travel planning system is an insufficient number are found” (App. Br. 18.)
Appellants further contend that the Examiner’s findings “does not address
the feature of claim 9 that requires that filtering filter the answers for
staleness, not for characteristics that match query fields as in [D]eMarcken.”
(Reply Br. 6.)
The Examiner found that “[t]he retrieval mechanism filter is contained
within the process . . . that determines the staleness and returns those results
not stale.” (Ans. 17-18.)

Issue: Have Appellants shown that the Examiner erred in finding that
DeMarcken “filters the answers of the result for staleness” and “if an
insufficient number of answers remain, . . . reposes the query”?

We agree with the Examiner that DeMarcken’s retrieval mechanism
inherently contains a filter within its process given that it is capable of
finding stale answers. As for the claimed “if an insufficient number of
answers remain, the retrieval mechanism reposes the query”, we find that
DeMarcken discloses that if the query was not found in the database, the
process can send an actual availability query to the airline availability
system (FF 8). In other words, if no answer is found (i.e., an insufficient
number of answers remain), DeMarcken goes to the availability system. As
such, Appellants have not persuaded us of error in the Examiner’s
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conclusion of anticipation for claim 9. Therefore, we affirm the Examiner’s
§ 102 rejection of claim 9 and of claims 18 and 27, which fall therewith.

Group VI
Claims 10-12, 14, 15, 19-21, 23, 24, and 28-30
Appellants contend that
[D]eMarcken neither describes nor suggests any testing of entries in a
database in response to a travel planning query. Rather, [D]eMarcken
teaches to test seat availability queries and send the seat availability
queries to either a cache predictor or other types of predictors that are
describe[d] in [D]eMarcken or to an airline’s availability system if an
actual availability answer is required by [D]eMarcken’s predictors.

(App. Br. 18 (footnote omitted); see also Reply Br. 7.)
The Examiner found that DeMarcken’s “if/then is a determination
(i.e., test) of the queries that are entered by the user.” (Ans. 18.)

Issue: Have Appellants shown that the Examiner erred in finding that
DeMarcken discloses “testing entries in the cache database in response to a
received travel planning query”?

Here, Appellants continue to stress that a “travel planning query” is
distinguishable from DeMarcken’s “seat availability queries,” an argument
that we have already found unpersuasive, at least in part because the claims
do not attached any further functionality to the “travel planning query.” As
for the claimed testing limitation, we agree with the Examiner that
DeMarcken’s “if/then” feature signifies a testing arrangement with the
queries and answers.
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As such, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for claim 10. Therefore, we affirm the
Examiner’s § 102 rejection of claim 10 and of claims 11, 12, 14, 15, 19-21,
23, 24, and 28-30, which fall therewith.

Group VII
Claims 13 and 22
Appellants contend that “[D]eMarcken teaches to pre-populate,
however, [D]eMarcken does not teach to send ‘queries to a travel planning
system to fill the cache.’” (App. Br. 20.)
The Examiner found that “for this cached data to exist, a user must
have performed a query or queries to create the historical data. Thus, a user
preemptively sent queries to fill the cache.” (Ans. 19.)

Issue: Have Appellants shown that the Examiner erred in finding that
DeMarcken discloses “preemptively performing queries to a travel planning
system to fill the cache”?

Here, Appellants admit that DeMarcken teaches to pre-populate the
cache, but seem to suggest that queries are not sent to a travel planning
system to fill the cache. In other words, Appellants’ argument appears to
suggest that DeMarcken’s pre-population is not done to a travel planning
system. We disagree.
As noted supra, the claimed travel planning system reads on
DeMarcken’s availability system. Furthermore, DeMarcken discloses that
the database can be populated by routine queries during off peak times or
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when the system is not otherwise in use (FF 10). As such, we find that
DeMarcken discloses preemptively performing queries to a travel planning
system to fill the cache.
Therefore, Appellants have not persuaded us of error in the
Examiner’s conclusion of anticipation for claim 13. Therefore, we affirm
the Examiner’s § 102 rejection of claim 13 and of claim 22, which falls
therewith.

Group VIII
Claims 16, 17, 25, and 26
Appellants contend that “[D]eMarcken teaches to return availability
answers from a cache. Availability answers however are not results from
execution of a travel planning system.” (App. Br. 20-21; see also Reply Br.
8-9.)
In essence, Appellants’ argument focuses on an alleged difference
between the claimed “travel planning system” and DeMarcken’s seat
availability system. We have already addressed supra the difference
between the claimed travel planning system and DeMarcken’s seat
availability system. Our related analysis supra is equally applicable here.
Therefore, Appellants have not persuaded us of error in the
Examiner’s conclusion of anticipation for claim 16. Therefore, we affirm
the Examiner’s § 102 rejection of claim 16 and of claims 17, 25, and 26,
which fall therewith.

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Double Patenting
Regarding the outstanding double patenting rejections of claims 1-30,
Appellants have indicated in the record that “App[ellants] will consider
submission of a terminal disclaimer upon indication of allowable subject
matter” (App. Br. 22). However, this statement does not constitute an
argument sufficient to rebut the obviousness-type double patenting rejection,
and thus the double patenting rejections are deemed conceded. Therefore,
we summarily sustain the rejection of claims 1-30 under the obviousness-
type double patenting with respect to U.S. Application Serial No.
10/456,980.

V. CONCLUSIONS
We conclude:
(1) Appellants have not shown that the Examiner erred in rejecting
claims 1-4 and 7-30 under 35 U.S.C. § 102(e);
(2) Appellants have shown that the Examiner erred in rejecting
claims 5 and 6 under 35 U.S.C. § 102(e); and
(3) Appellants have not shown that the Examiner erred in
provisionally rejecting claims 1-30 under the judicially created doctrine of
obviousness-type double patenting.

VI. DECISION
In view of the foregoing discussion:
(1) We affirm the Examiner’s rejection of claims 1-4 and 7-30 under
35 U.S.C. § 102(e);
(2) We reverse the Examiner’s rejection of claims 5 and 6 under
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35 U.S.C. § 102(e); and
(3) We affirm the Examiner’s rejection of claims 1-30 under the
judicially created doctrine of obviousness-type double patenting.
(4) Because we have sustained at least one ground of rejection against
each claim on appeal, the Examiner’s decision to reject claims 1-30 is
affirmed.

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) (2009).

AFFIRMED

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