Ex Parte Kim et al

Patent Trial and Appeal Board

Sep 23, 2013

09837291 (P.T.A.B. Sep. 23, 2013)

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.
09/837,291 04/19/2001 Chin Tae Kim 123047-0003 9587
22429 7590 09/23/2013
LOWE HAUPTMAN & HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
09/23/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHIN TAE KIM, SUNG YEOB LEE,
and TAE GYU LEE
____________

Appeal 2011-002690
Application 09/837,291
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002690
Application 09/837,291

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3 to 29, and 34. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 20 is illustrative:
20. A method of matching vendors to buyers through a
network, comprising:
identifying whether vendors satisfy minimum attributes
set by a buyer;
registering the vendors that satisfy the minimum
attributes;
identifying the buyer’s vendor selection criteria;
notifying the vendors of the vendor selection criteria;
accepting bids from the vendors; and
selecting, by the buyer, a selected vendor from the
vendors that satisfy the minimum attributes according to one or
more of the vendor selection criteria.
Appellants appeal the following rejections:
Claims 20 to 26, 28 to 29, and 34 under 35 U.S.C. § 102(e) as
anticipated by De La Motte (US 2003/0014318 Al; pub. Jan. 16, 2003).
Claims 1 and 3 to 19 under 35 U.S.C. § 103(a) as unpatentable over
Appellants’ disclosure (see “BACKGROUND OF THE INVENTION”).
Claim 27 under 35 U.S.C. § 103(a) as unpatentable over De La Motte

ISSUES
Did the Examiner err in rejecting the claims because De La Motte
does not disclose identifying whether vendors satisfy minimum attributes set
by a buyer, and registering the vendors that satisfy the minimum attributes?
Appeal 2011-002690
Application 09/837,291

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Did the Examiner err in rejecting the claims because Appellants’
disclosure does not disclose screening the at least one company to determine
whether the at least one company applying for a new registration satisfies a
certain condition set in advance?

ANALYSIS
Anticipation
The Appellants argue that Lockwood does not disclose identifying
whether vendors satisfy minimum attributes set by a buyer and registering
the vendors that satisfy the minimum attributes. We agree.
The Examiner relies on paragraphs [0029] to [0032] of De La Motte
for teaching this subject matter (Ans. 4, 10). Paragraphs [0029] to [0032] of
De La Motte disclose that buyers and sellers gain access to the international
trading system therein disclosed by registering for membership in the
system. The system collects information on buyers and sellers in regards to
identity, finances, and goods and services traded. Some of this information
may be made available to other members. As examples of this information
that may be made available to other members, De La Motte discloses credit
history of the buyer or references of a freight carrier. This section does not
disclose that any requirements must be met for membership in the system,
much less that vendors are required to satisfy minimum attributes that are set
by the buyer before registration.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 20 as anticipated by De La Motte. We will likewise not sustain this
rejection as it is directed to claims 21 to 26, 28 to 29, and 34, because each
Appeal 2011-002690
Application 09/837,291

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of these claims recite that the vendors satisfy minimum attributes set by a
buyer before being registered.

Obviousness
The Examiner relies on Appellants’ disclosure in the Background of
the Invention section for teaching the bulk of the invention, and concludes
that claims 1 and 3 to 19 merely provide an automatic means to replace a
manual activity.
We will not sustain this rejection. In our view, each of the claims
includes subject matter not disclosed in the Background section of
Appellants’ Specification. In this regard, claim 1 recites screening a
company to determine whether the company satisfies certain conditions, and
only registering companies that satisfy the conditions. Claim 8 discloses
both an internal database and an external database. Claim 13 recites several
servers in combination, and claim 16 recites the step of inputting and
transmitting a plurality of orders. For each of these claims there is a specific
computer architecture being claimed, for which there is no corresponding
manual element disclosed in the Background section of Appellants’
Specification. Therefore we agree with the Appellants that claims 1 and 3 to
19 recite features that are more than mere automation and as such we will
not sustain this rejection.

Appeal 2011-002690
Application 09/837,291

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DECISION
The decision of the Examiner is reversed.

REVERSED

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