Ex Parte Kopelman et al

Patent Trial and Appeal Board

Jul 27, 2016

12100106 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/100,106 04/09/2008 Joshua M. Kopelman
49845 7590 07/29/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.047US6 5461
EXAMINER
BAYAT,BRADLEYB
ART UNIT PAPER NUMBER
PTAB
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA M. KOPELMAN and SRINIV AS BALIJEP ALLI
Appeal2014--004161
Application 12/100, 106
Technology Center 3600
Before ANTON W. PETTING, MICHAEL W. KIM, and AMEE A. SHAH,
Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Joshua M. Kopelman and Srinivas Balijepalli (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1-3, 5-15, 24,
25, 37, and 38, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 4, 2013) and Reply Brief ("Reply Br.," filed December 20,
2013), and the Examiner's Answer ("Ans.," mailed October 22, 2013), and
Final Action ("Final Act.," mailed August 24, 2012).
Appeal2014-004161
Application 12/100, 106
The Appellants invented a way of pricing and selling goods in
electronic commerce applications using communications networks.
Specification 1 :5-8.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method for pricing an
independent seller's good using a marketeer controller capable
of communicating with a buyer interface and a seller interface
via a communications network, the marketeer controller
including a CPU and a memory operatively connected to the
CPU and containing a program stored in the memory and
executable by said CPU for deriving a sale price of the good,
the method comprising:
[ 1] receiving from the seller,
via the communications network,
data identifying the good;
[2] responsive to receiving data identifying the good
from the seller,
querying a vendor's controller to determine the
vendor's price of a comparable good;
and
[3] executing the program
to derive the sale price for the good
from the vendor's price
using a predetermined method.
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Appeal2014-004161
Application 12/100, 106
The Examiner relies upon the following prior art:
Reuhl
Walker
us 5,873,069
US 6,415,264 Bl
Feb. 16, 1999
July 2, 2002
Claims 1-3, 6-8, 10, 11, 24, 25, 37, and 38 stand rejected under
35 U.S.C. § 102(b) as anticipated by Walker. 2
Claims 5, 9, and 12-15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walker and Reuhl.
ISSUES
The issues of anticipation and obviousness tum primarily on whether
Walker describes querying a vendor's controller to determine the vendor's
price of a comparable good.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. A "marketeer" is an intermediary. Spec. 6:12-13.
2 The Appellants assert that claims 24, 25, 37, and 38 are rejected under 35
U.S.C. § 102(b). App. Br. 12. The Examiner does not dispute this assertion,
stating "[c]laims 24-25, 37 and 38 are directed to a system and method of the
above process and each corresponding claim is rejected accordingly as
recited above" Final Act. 7.
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Appeal2014-004161
Application 12/100, 106
Facts Related to Appellants' Disclosure
02. The Specification identifies prior art as including
the practice for a shopping agent that queries multiple vendor's
websites to determine a best price or list of prices. Spec. 4: 13-17.
Facts Related to the Prior Art
Walker
03. Walker is directed to the sale of products, and in
particular, determining a posting payment amount. Walker
1:9-11.
04. Walker describes receiving a request to sell an
item. A blank Request to Sell (R TS) form is output and a
completed R TS form is received by the posting site device,
including, for example, an item class and type, the seller's name
and financial account information as specified by the seller. A
blank Condition of Item Sheet (CIS) is output and a completed
CIS is received by the posting site device, including, for example,
the condition of the item and any peripherals included with the
item. An expected selling price is determined, such as by
examining past sales for similar items and adjusting for the
condition of the item and the peripherals included with the item.
Walker 9:52-10:6.
05. Walker describes determining a posting payment amount
when an RTS form and/or a CIS is received. A database is
queried to find items of the same or similar class and type. If it is
determined that an item of the same or similar type and class has
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Appeal2014-004161
Application 12/100, 106
not been sold before, a default posting payment amount may be
credited to the financial account specified by the seller. If it is
determined that an item of the same or similar type and class has
been sold before, a base amount, weighted for the condition of the
item and peripherals included with the item, is determined and
adjusted based on the reputation of the seller. An appropriate
floor price is determined and a posting payment amount is
determined and credited to the seller. Walker 10:10-25.
ANALYSIS
We are persuaded by Appellants' argument that Walker fails to
describe querying a vendor's controller to determine the vendor's price of a
comparable good. App. Br. 9-12; Reply Br. 2-3. The Examiner initially
finds Walker describes this in Walker's Figures 9 and 10. Final Act. 2-3.
These figures and their corresponding text do not support such a finding.
FF 04---05. Instead, Walker describes querying the equivalent of the
marketeer 's controller. In response, the Examiner then finds that the
Appellants disclose querying a vendor's controller to determine the vendor's
price of a comparable good as prior art. Ans. 3. Such a finding is
inapplicable to the four comers of Walker and the Examiner rejected claim 1
as anticipated.
CONCLUSIONS OF LAW
The rejection of claims 1-3, 6-8, 10, 11, 24, 25, 37, and 38 under 35
U.S.C. § 102(b) as anticipated by Walker is improper.
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Application 12/100, 106
The rejection of claims 5, 9, and 12-15 under 35 U.S.C. § 103(a) as
unpatentable over Walker and Reuhl is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claim 1 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Walker. The only limitation in dispute is that of querying
a vendor's controller to determine the vendor's price of a comparable good.
Walker describes the remaining limitations of claim 1 (FF 03---05), which is
undisputed. The only issue is whether it was predictable to find comparable
prices from a vendor selling comparable products and use a computer to do
so. Here the Examiner's finding as to Appellants' admitted prior art (see
Ans. 2-3) is relevant, as it shows one of ordinary skill knew that an
alternative way to determine prices was to query a vendor's web site
(requiring access to the vendor's controller) to determine the vendor's price
of a comparable good. Even were this not disclosed as prior art, common
sense and the common practice of comparing prices at alternative suppliers
over decades of shopping experience by ordinary shoppers support such a
finding of fact. The reasons for doing so would be both the existing known
practice and the applicability of such prices to pricing the instant comparable
good.
DECISION
The rejection of claims 1-3, 5-15, 24, 25, 37, and 38 is reversed.
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Appeal2014-004161
Application 12/100, 106
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claim 1 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Walker.
Our decision is not a final agency action.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(I) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Application 12/100, 106
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection
with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a). See 3 7
C.F.R. § 1.136(a)(l )(iv) (2011 ).
REVERSED; 41.50(b)
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