10801238 (B.P.A.I. Sep. 13, 2010)

Ex Parte Lawrence

Board of Patent Appeals and InterferencesSep 13, 2010

10801238 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DAVID LAWRENCE ____________ Appeal 2009-010098 Application 10/801,238 Technology Center 3600 ____________ Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-010098 Application 10/801,238 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1, 3-9. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). The claimed invention is directed to systems and methods for making shares of stock for an initial public offering (IPO) available through pre- auction and auction processes (Spec. 1:7-10). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A computer implemented method for allocating shares of stock comprising an initial public offering, the method comprising: offering in a computer system, a subset of the shares to one or more pre-auction bidders at a pre-auction price; receiving into a memory in the computer system, an indication from the one or more pre-auction bidders accepting the offer for the shares at the pre-auction price; publishing in the computer system, information descriptive of one or more pre-auction sales of shares comprising the initial public offering, said information descriptive of the pre-auction sales of shares including the pre- auction price and identification of bidders who bought shares at the pre-auction price; accepting into the memory in the computer system, the offer for shares at the pre-auction price; and auctioning with a processor in the computer system, the remaining shares. The references of record relied upon by the Examiner as evidence of obviousness are: Moshal US 2001/0042041 A1 Nov. 15, 2001 Sheehan US 2001/0049647 A1 Dec. 06, 2001 Buist US 2002/0035534 A1 Mar. 21, 2002 Hoffman US 2002/0049664 A1 Apr. 25, 2002 Eckert US 2002/0069161 A1 Jun. 06, 2002 Appeal 2009-010098 Application 10/801,238 3 Agarwal US 2002/0099646 A1 Jul. 25, 2002 Maltzman US 2002/0107779 A1 Aug. 08, 2002 Ausubel US 2004/0054551 A1 Mar. 18, 2004 Sloan US 2005/0091140 A1 Apr. 28, 2005 Claims 1, 3-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Maltzman, Moshal, Sloan, Sheehan, Buist, Ausubel, Agarwal, Hoffman, and Official Notice. We AFFIRM. ISSUE Did the Examiner err in asserting that a combination of Maltzman, Moshal, Sloan, Sheehan, Buist, Ausubel, Agarwal, Hoffman, and Official Notice renders obvious the subject matter of claims 1, 3-9? FINDINGS OF FACT We adopt the Examiner’s Finding of Fact concerning Maltzman, as set forth on pages 5-15 of the Examiner’s Answer. Moshal Moshal discloses that EBAY offers an Internet auction house, primarily for consumers. Sellers on EBAY may provide items for sale using traditional bidding auctions, Dutch auctions, or reserve price auctions. The seller chooses the type of auction before it begins. The auction is then carried out for a duration of time to its completion. Once started, the user cannot change the conditions of the auction (para. [0006]). Brokers now offer users Internet-access to the public stock exchanges across the globe. Users can purchase securities on such exchanges using Appeal 2009-010098 Application 10/801,238 4 Internet terminals. Users can view real-time bid and ask offers for securities, and submit offers for the securities that are electronically delivered to the dealers of the securities (para. [0007]). In general, auction and electronic exchanges offer limited variations. Any variation to implementation of electronic exchanges is made through selection amongst entire auction systems (para. [0008]). An embodiment of Moshal includes a method or system for plurality of exchanges, conducted over a network between a set of sellers and a set of bidders. The set of sellers includes at least a first seller on a first terminal coupled to the network. The set of bidders includes at least a first bidder on a second terminal coupled to the network. Each exchange is conducted to determine a transactional value of an item. A plurality of parameters are identified with each of the plurality of requests to configure the exchange according to a combination of instructions (para. [0009]). ANALYSIS We are not persuaded that the Examiner erred in asserting that a combination of Maltzman, Moshal, Sloan, Sheehan, Buist, Ausubel, Agarwal, Hoffman, and Official Notice renders obvious the subject matter of claims 1, 3-9 (App. Br. 6-9). Appellant asserts that Maltzman and the claimed invention are not analogous art because Maltzman is not concerned with preventing problems related to underpricing and corruption of IPOs (App. Br. 7-8). However, both Maltzman and the claimed invention are directed to pre-auction and auction processes. Accordingly, both are in the same field of endeavor, and thus meet the first prong of the analogous arts test. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (the test for Appeal 2009-010098 Application 10/801,238 5 determining whether a reference is analogous art is (1) whether the reference is in the field of the Appellant's endeavor or (2) whether the reference is reasonably pertinent to the problem with which the Appellant was concerned). As for the fact that Maltzman is not related to IPOs, the Examiner cites Moshal for disclosing IPOs in auction processes. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citing In re Young, 403 F.2d 754 (1968) (one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). With regards to underpricing and corruption, if the cited references render obvious the components of the claimed invention, the combination of cited references also accrues the advantages of the claimed invention. Appellant also asserts that there is no reason for combining Maltzman and Moshal, because Moshal only discloses alternative techniques for online trading (App. Br. 8-9). However, Moshal discloses that it is known to offer securities, such as IPOs, on auction exchanges. The Examiner asserts that one of ordinary skill would integrate the securities and IPOs of Moshal into the pre-auction and auction processes of Maltzman to expand the universe of goods and services available for pre-auction and auction in Maltzman (Exam’r’s Ans. 6, 14-15; Moshal paras. [0006]-[0009]). We agree. Appeal 2009-010098 Application 10/801,238 6 We AFFIRM the Examiner’s 35 U.S.C. § 103(a) rejection of claims 1, 3-9. 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) (2007). AFFIRMED hh CHADBOURNE & PARKE, LLP 30 ROCKEFELLER PLAZA NEW YORK, NY 10112