Ex Parte Offutt et al

Board of Patent Appeals and Interferences

Jun 26, 2009

09275887 (B.P.A.I. Jun. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH ROBERT OFFUTT, Jr. and JEROME EDWARD CASH
____________

Appeal 2009-001459
Application 09/275,887
Technology Center 3600
____________

Decided:1 June 26, 2009
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001459
Application 09/275,887

STATEMENT OF THE CASE
Joseph Offutt, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 4-8, 10-13, 15-19, 21-24, 26-30,
and 32-51. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
The invention is a method, system and article for receiving requests
from users reflecting travel itineraries and analyzing the itineraries to
determine comparable itineraries based on associated rules. Specification
4:15-21. Then a value or cost of each itinerary is determined and a report
generated. (Spec. 4:21-5:4).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing information
regarding savings associated with travel
alternatives comprising the steps, performed by a
processor, of:
receiving a request from a user specifying a
travel itinerary that includes a selected originating
location and a selected destination location,
wherein the request includes information
identifying the selected originating and destination

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 2, 2007) and Reply Brief (“Reply Br.,” filed Jun. 22, 2007),
and the Examiner’s Answer (“Answer,” mailed May 23, 2007).

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locations, and proximity tolerances specifying a
user's acceptable distance range of at least one of
the selected originating location or selected
destination location for searching for alternative
itineraries;
analyzing the travel itinerary specified in the
request, including the selected originating and
destination locations, to determine a set of
alternative itineraries different than the travel
itinerary specified in the request, wherein the
analyzing step includes identifying at least one
alternative itinerary including an alternate
originating location or destination location that is
within the proximity tolerances and different than
the selected originating location or destination
location of the travel itinerary specified in the
request;
determining a value for the travel itinerary
specified in the request; determining a value for
of the alternative itineraries; and
generating a report, based on the analysis
and determination, including a value for each
alternative itinerary reflecting a savings in travel
costs in comparison with the travel itinerary
reflected by the request.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Cochran
Tagawa
Walker
DeLorme
US 4,879,648
US 5,732,398
US 5,897,620
US 5,948,040
Nov. 7, 1989
Mar. 24, 1998
Apr. 27, 1999
Sep. 7, 1999

The following rejection is before us for review:
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1. Claims 10 and 32 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Tagawa.
2. Claims 1, 2, 4, 12, 13, 15, 21, 23, 24, 26, 35, 36, 43-48, and 50
are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tagawa and Cochran.
3. Claims 5-8, 16-19, 27-30, 49, and 51 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Tagawa,
Cochran, and DeLorme.
4. Claims 11, 22, 33, 34, and 37-42 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tagawa and Walker.

ARGUMENTS
The rejection of claims 10 and 32 under 35 U.S.C. § 102(b) as being
anticipated by Tagawa.
The Appellants traverse the Examiner rejection of claims 1 and 32 and
argue that Tagawa does not describe a method including analyzing a travel
itinerary, including a selected originating location or destination location, to
determine a set of alternative itineraries different than the travel itinerary,
that include an alternative origination location or destination location
different than the selected origination location or destination location, as
recited in claim 10 and a system having a server for performing the steps
above. (App. Br. 16-17). The Appellants make two arguments against the
Examiner’s rejection.
First, the Appellants argue that, contrary to the Examiner’s assertion
in the Final Office Action, Tagawa’s sub-routine that offers one or two
choices different from a recommended choice is part of an option that
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arranges lodging and not part of the option for purchasing airline tickets.
(App. Br. 17). Therefore, the Appellants argue that Tagawa does not
describe an option that includes both selecting an origin and destination and
offering an alternative originating location or destination location that is
different than the selected origin or destination as claimed. (App. Br. 19).
Second, the Appellants argue that Tagawa’s description of a user
selecting an out-of-state tour package including user selection of a
destination and further refinement of the destination, cited by the Examiner,
does not read on the limitations at issue. (App. Br. 19). The Appellants
assert that a further refined destination does not correspond to an alternate
destination; for example, a selected destination of Las Vegas is still the same
destination as a further refined destination of the Las Vegas Strip. Id.
In the response, the Examiner again cites to Tagawa’s description of a
airline ticket purchase option at column 15, lines 25-50, the HELP button
sub-routine of the local lodges option at column 13, lines 11-17, and the
refined destination of the out of state tour packages routine at column 16,
lines 55-60. (Ans. 21).

The rejection of claims 1, 2, 4, 12, 13, 15, 21, 23, 24, 26, 35, 36, 43-48, and
50 under § 103(a) as being unpatentable over Tagawa and Cochran.
The Appellants argue 1) that Tagawa and Cochran do not teach
analyzing a travel itinerary, including a selected originating location or
destination location, to determine a set of alternative itineraries different
than the travel itinerary, that include an alternative origination location or
destination location different than the selected origination location or
destination location, 2) that Tagawa and Cochran do not teach receiving or
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providing a request including proximity tolerances specifying a user’s
acceptable range for alternative itineraries or identifying an alternative
itinerary that includes an alternative origination or destination location
within the proximity tolerances, and 3) that Cochran is non-analogous art.
First, the Appellants again argue that Tagawa does not describe
analyzing a travel itinerary, including a selected originating location or
destination location, to determine a set of alternative itineraries different
than the travel itinerary, that include an alternative origination location or
destination location different than the selected origination location or
destination location and, further, Cochran also does not describes this
feature. (App. Br. 20-21).
The Examiner responds that Tagawa is relied upon for teaching these
limitations since Tagawa describes a displaying a flight schedule with prices
for a requested itinerary. (Ans. 21-22).
Second, the Appellant argues that Cochran does not teach providing a
request including proximity tolerances specifying a user’s acceptable range
for alternative itineraries or identifying an alternative itinerary that includes
an alternative origination or destination location within the proximity
tolerances, as asserted in the rejection. (App. Br. 21). The Appellants argue
that while Cochran discloses allowing a user to specify the proximity of a
hotel/resort area of interest, Cochran does not disclose that the areas of
interest are alternative hotel/resorts or otherwise correspond to alternative
itineraries. Id.
The Examiner responds that in column 5, line 63 to column 6, line 7,
Cochran describes a structured databases of hotel and resort information
which can be search using qualifiers such as proximity to another location or
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proximity to a specified area of interest such as a tourist attractions, business
location or airports. (Ans. 22).
Third, the Appellants argue that Cochran is not pertinent to the
claimed invention since the problem to which each are concerned are
significantly different. (App. Br. 22-23). The Appellant asserts that Cochran
is directed to overcoming drawbacks associated with searching through or
making selections from an electronic database while the claimed invention is
directed to locating non-obvious savings in the purchase of goods and
services. (App. Br. 22).
The Examiner responds that although Cochran is not in the travel
itinerary field, Cochran is clearly pertinent to the problem of proximity
tolerances specifying a user’s acceptable distance range. (Ans. 23-24).

The rejection of claims 5-8, 16-19, 27-30, 49, and 51 under § 103(a) as
being unpatentable over Tagawa, Cochran and DeLorme.
The Appellants argue that claims dependent 5-8, 1-19, 27-30, 49 and
51 are patentable since neither Tagawa nor Cochran teaches the limitations
of independent claims 1, 12, 23, and 50 at issue above. (App. Br. 23). The
Appellants further argue that DeLorme does not teach the limitations at
issue. (App. Br. 24).

The rejection of claims 1, 22, 33, 34, and 37-42 under §103(a) as being
unpatentable over Tagawa and Walker.
The Appellants argue 1) that Tagawa and Walker do not teach
analyzing a travel itinerary, including a selected originating location or
destination location, to determine a set of alternative itineraries different
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than the travel itinerary, that include an alternative origination location or
destination location different than the selected origination location or
destination location, 2) that Tagawa and Walker do not teach sending at least
one price-to-beat request, where the price-to-beat request includes the values
of the travel itinerary and alternative itineraries and receiving responses
including a service provider travel itinerary that may be the same, or
comparable, to the travel itinerary or an alternative itinerary, and 3) that
Tagawa and Walker do not teach reconfiguring the values of the travel
itinerary and the alternative itineraries based upon the responses from the
service providers. (App. Br. 25-26).
First, the Appellants again argue that Tagawa does not describe
analyzing a travel itinerary, including a selected originating location or
destination location, to determine a set of alternative itineraries different
than the travel itinerary, that include an alternative origination location or
destination location different than the selected origination location or
destination location and, further, Walker also does not describes this feature.
(App. Br. 25).
Second, the Appellants argue that Walker describes a traveler
submitting a bid to an airline for travel and does not teach sending at least
one price-to-beat request, where the price-to-beat request includes the values
of the travel itinerary and alternative itineraries, and receiving responses
including a service provider travel itinerary that may be the same, or
comparable, to the travel itinerary or an alternative itinerary and that Tawaga
does not describe reconfiguring the values of the travel itinerary and the
alternative itineraries based upon the responses from the service providers.
(App. Br. 25).
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The Examiner responds by citing column 6, lines 45-51 and stating
that the bid of Walker is the claimed price-to-beat request. (Ans. 26).

ISSUES
The issues are:
1. Does Tawaga describe a method including analyzing the travel
itinerary specified in the request, including the selected
originating and destination locations, to determine a set of
alternative itineraries different than the travel itinerary specified
in the request and determining a value for the travel itinerary
specified in the request?
2. Does Tawaga describe an apparatus having a server that is
structured to analyze the travel itinerary specified in the request,
including the selected originating and destination locations, to
determine a set of alternative itineraries different than the travel
itinerary specified in the request and determine a value for the
travel itinerary specified in the request?
3. Would one of ordinary skill in the art have been led by Tawaga
and Cochran to a method including analyzing the travel
itinerary specified in the request, including the selected
originating and destination locations, to determine a set of
alternative itineraries different than the travel itinerary specified
in the request and determining a value for the travel itinerary
specified in the request?
4. Would one of ordinary skill in the art have been led by Tawaga
and Cochran to an apparatus having a server that is structured to
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analyze the travel itinerary specified in the request, including
the selected originating and destination locations, to determine
a set of alternative itineraries different than the travel itinerary
specified in the request and determine a value for the travel
itinerary specified in the request?
5. Would one of ordinary skill in the art have been led by Tawaga
and Cochran to a computer-readable medium having
instructions that cause a computer analyze the travel itinerary
specified in the request, including the selected originating and
destination locations, to determine a set of alternative itineraries
different than the travel itinerary specified in the request and
determine a value for the travel itinerary specified in the
request?
6. Would one of ordinary skill in the art have been led by Tawaga,
Cochran and DeLorme to a method including analyzing the
travel itinerary specified in the request, including the selected
originating and destination locations, to determine a set of
alternative itineraries different than the travel itinerary specified
in the request and determining a value for the travel itinerary
specified in the request?
7. Would one of ordinary skill in the art have been led by Tawaga,
Cochran and DeLorme to an apparatus having a server that is
structured to analyze the travel itinerary specified in the request,
including the selected originating and destination locations, to
determine a set of alternative itineraries different than the travel
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itinerary specified in the request and determine a value for the
travel itinerary specified in the request?
8. Would one of ordinary skill in the art have been led by Tawaga,
and Walker to a method including analyzing the travel itinerary
specified in the request, including the selected originating and
destination locations, to determine a set of alternative itineraries
different than the travel itinerary specified in the request and
determining a value for the travel itinerary specified in the
request?
9. Would one of ordinary skill in the art have been led by Tawaga
and Walker to an apparatus having a server that is structured to
analyze the travel itinerary specified in the request, including
the selected originating and destination locations, to determine
a set of alternative itineraries different than the travel itinerary
specified in the request and determine a value for the travel
itinerary specified in the request?
10. Would one of ordinary skill in the art have been led by Tawaga
and Walker to a computer-readable medium having instructions
that cause a computer analyze the travel itinerary specified in
the request, including the selected originating and destination
locations, to determine a set of alternative itineraries different
than the travel itinerary specified in the request and determine a
value for the travel itinerary specified in the request?

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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 10 recites a method including the step of “analyzing the
travel itinerary specified in the request, including the selected
originating and destination locations, to determine a set of
alternative itineraries different than the travel itinerary specified in
the request.”
2. Claim 10 recites “wherein the analyzing step includes identifying
at least on alternative itinerary including an alternative originating
location or destination location that is different than the selected
originating location or destination location of the travel itinerary
specified in the request.”
3. Claim 10 recites “determining a value for the travel itinerary
specified in the request.”
4. Claims 1, 11, and 43 each recite methods including steps similar to
the step of claim 10 above.
5. Claims 23, 30 and 32-34 each recite a system including a server
that is structured for performing the steps recited in claim 10
above.
6. Claims 12, 21, 22, and 23 each recite a computer-readable medium
containing instructions that cause a computer to perform the
method steps of claim 10 recited above.
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7. Claim 36 recites a system that includes:
a serving means for analyzing the travel itinerary
specified in the request, including the selected
originating and destination locations, to determine
a set of alternative itineraries different than the
travel itinerary specified in the request, for
determining a value for the travel itinerary
specified in the request, for determining a value for
each of the alternative itineraries, and for
generating a report, based on the analysis and
determination, including a value for each
alternative itinerary reflecting a savings in travel
costs in comparison with the travel itinerary
reflected by the request.

8. The Specification describes a savings discovery server 400, which
performs the steps shown Figure 6, which include the functions
recited in claim 36. (Spec. 14:19 – 17:5 and Fig. 6).
9. Claim 44 recites a method including “receiving, from a user, a
request specifying a travel itinerary that includes a selected
origination location and a selected destination location, a first
value associated with the itinerary.”
10. Claim 44 also recite “determining, without user intervention, a set
of alternate itineraries different than the travel itinerary specified in
the request.”
11. Claim 49 recites a method including the steps of claim 44 above.
12. Claim 50 recites a method including:
determining, without user intervention, a set of
alternative itineraries different than the itinerary
specified in the request, at least one alternative
itinerary including an alternate route between an
alternate origination location or alternate
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destination location that is within the proximity
tolerances, and either the origination or destination
location of the travel itinerary specified in the
request.

The scope and content of the prior art
Tawaga
13. Tawaga describes a method of selling travel related services or
product through a self service system. (Col. 4, ll. 2-5).
14. Tawaga describes kiosks for self-service by users that are
connected to regional reservation centers. (Col. 8, ll. 63-66).
15. Tawaga describes presenting a user with a basics options menu,
which provides the user with eight options to choose from
including local lodging, local or intrastate tour packages, airline
tickets and out-of-state tour packages. (Col. 10, ll. 58-64 and Fig.
3).
16. Tawaga describes that if the user selects the “local lodging” option,
the user is asked to provide a destination area, check-in and check-
out dates, and hotel preferences. (Col. 12, ll. 31-53).
17. Tawaga describes the system searching a hotel inventory database
and presenting the user with a recommended choice based on
availability and a predetermined priority. (Col. 12, ll. 53-66).
18. Tawaga describes that if the user cannot make a decision on the
recommended choice, the user can press a HELP button and one or
two choices of hotels different from the first choice are offered.
(Col. 13, ll. 11-17).
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19. Tawaga describes that if the user selects the “local or intrastate
tour packages” option, a menu listing the major packages for the
market in which the kiosk is located is displayed. (Col. 14, ll. 16-
21).
20. Tawaga describes the user being asked to select a one-day or
multiple-day tour and to choose between a motor coach and self-
guided tour, (Col. 14, ll. 25-34).
21. Tawaga describes that if the user chooses a multiple-day self-
guided tour, the user will be asked if air transportation, lodging and
a rental car should be included and if, air transportation is desired,
then user will be asked to select the time of day for departure and
return. (Col. 15, ll. 2-9).
22. Tawaga describes offering the user a recommended package based
on the user’s input and a predetermined priority. (Col. 15, ll. 15-
18).
23. Tawaga describes that if the recommended package is not accepted
by the user and agent will intercede. (Col. 15, ll. 18-24).
24. Tawaga describes that if the user selects the “purchase airline
ticket” option, the user is ask if they have an airline preference,
origin, destination, date of travel, time of day for departure, and
whether return in desired. (Col. 15, ll. 27).
25. Tawaga describes displaying a flight schedule of available flights
with prices based on the user’s information for the user to select
from. (Col. 15, ll. 41-44).
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26. Tawaga describes that if the user selects the “out-of-state tour
packages” option, a menu is displayed which allows the user to
select a destination area. (Col. 16, ll. 41-44).
27. Tawaga describes that after a destination, such as Las Vegas, is
selected the destination area can be further refined, such as Las
Vegas strip, downtown Las Vegas, or properties off strip. (Col. 16,
ll. 55-60).
28. Tawaga describes that the user is then asked for departure and
return dates. (Col. 16, l. 67 – col. 17, l. 2).
29. Tawaga describes that tour packages with different options and
prices are displayed. (Col. 17, ll. 5-8).
30. Tawaga then describes providing the user with a choice of hotels
and asking for an airline preference and time of day for departure
and return. (Col. 17, ll. 11-21).
31. Tawaga then describes asking the user to make a selection from a
display of tour options with prices. (Col. 17, ll. 25-27).
32. Tawaga describes that if the user does not want to make a
selection, the user can press the HELP button to be connected to a
travel agent. (Col. 17, ll. 31-33).
33. Tawaga describes that after the user completes the screens for a
chosen option, the kiosk returns to the welcome video and the
Cochran
34. Cochran describes a method of allowing a user to select terms and
using those terms to search through and obtains records in a
database. (Col. 4, ll. 38-44).
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35. Cochran, in Figure 4, depicts a specific working embodiment of
Cochran’s invention which searches a database of hotel and resort
information. (Col. 5, ll. 61-64).
36. Cochran using geographic location of a property, proximity to
another location, and proximity to specific areas of interest, such as
tourist attractions as the terms. (Col. 5, l. 63 – col. 6, l. 5).
Walker
37. Walker describes a method of and system for selling airline tickets.
(Col. 1, ll. 6-7).
38. Walker describes an embodiment where a traveler can submit a bid
for a ticket which does not specify an actual flight number,
departure time, or price. (Col. 6, ll. 33-48).
39. Walker describes the airline notifying the traveler via an
interactive voice response unit or a live operator if the bid is
accepted and selecting the actual flight. (Col. 6, ll. 64-67).
40. Walker describes notifying the traveler of the selected flight. (Col.
6, l. l).
DeLorme
41. The Examiner cited DeLorme to teach using graphical coordinates
with ranges to evaluate alternative routes. (Ans. 11).
Any differences between the claimed subject matter and the prior art
42. Tagawa does not describe analyzing a specified travel itinerary,
including a selected originating and destination locations, to
determine a set of alternative itineraries different than the travel
itinerary specified.
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43. Tagawa does not describe determining a value for the specified
travel itinerary.
The level of skill in the art
44. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of electronic commerce. We
will therefore consider the cited prior art as representative of the
level of ordinary skill in the art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (Quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)).
45. The Specification describes the field of invention as “electronic
commerce, more particularly, to an apparatus and methods for
determining non-obvious savings in the purchase of goods and
services.” (Spec. 2:5-7).
Secondary considerations
46. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
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of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
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(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) The Court in Graham further
noted that evidence of secondary considerations “might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 10 and 32 under 35 U.S.C. § 102(b) as being
anticipated by Tagawa.
Method Claim 10
We find that Tagawa does not anticipate claim 10 since Tagawa does
not describe the recited method including the steps of analyzing the travel
itinerary specified in the request, including the selected origination and
destination locations, to determine alternate different itineraries and
determining a value for the specified travel itinerary (FF 1-2).
The law of anticipation does not require that the
reference “teach” what the subject patent teaches.
Assuming that a reference is properly “prior art,” it
is only necessary that the claims under attack, as
construed by the court, “read on” something
disclosed in the reference, i.e., all limitations of the
claim are found in the reference, or “fully met” by
it.

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Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
In the rejection, the Examiner cites Tawaga’s description of the “local
or interstate tour packages” option as describing the claimed invention and
equates the market, in which the kiosk exists, to an original location and the
list of major tour packages to alternate destinations. (Ans. 19). The
Examiner also cites to portions of Tagawa that describe the user’s input to
the “purchase airline ticket” option as including an origin and destination.
(Ans. 19). However, we note that Tawaga describes the user’s input of the
“local or interstate tour packages” as a selection of a package destination.
(FF 20).
We find that the “local or interstate tour package option” of Tawaga
does not read on the claimed method. For the “local or interstate tour
packages” option, Tagawa describes the system displaying a menu listing
tour locations for the market in which the kiosk is located. (FF 19). From
the user’s selection of a tour location and other information inputted by the
user (FF 19-23), the system in Tagawa displays a recommended tour and
price, which the user can purchase, but from this mode, additional
originating and destination locations are not further suggested. (FF 22).
This does not read on the analyzing step of claim 10 or the step of
determining a value for the specified travel itinerary.
Further, we note that the Examiner also cites to other portions of
Tagawa that relate to the other options, such as the “local lodging” option,
described in Tagawa. (Ans. 21). We find that Tagawa’s description of these
options (FF 1-18 and 24-30) also do not read on the claimed method.
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Accordingly, we find that the Appellant have shown that the
Examiner erred in rejecting claim 10, by failing to establish a prima facie
showing of anticipation.
Claim 32
Claim 32 recites a computer system having a server that is structure
for analyzing the specified itinerary and for determining the value of the
specified itinerary as recited in the method of claim 10. (FF 5). For the
same reasons as discusses above, we find that Tawaga does not describe a
server that is structured to perform these function. Therefore, we find that
the Appellants have shown that the Examiner erred in rejecting claim 32, by
failing to establish a prima facie showing of anticipation.

The rejection of claims 1, 2, 4, 12, 13, 15, 21, 23, 24, 26, 35, 36, 43-48, and
50 under § 103(a) as being unpatentable over Tagawa and Cochran.
Method Claims 1, 43, 44, and 50
Claims 1 and 43 recite methods including similar steps as the steps at
issue with regards to the rejection of claim 10. (FF 4). Claim 44 recites a
method including a step that requires a first value associated with a specified
itinerary and a step of determining a set of alternate itineraries. (FF 9-10).
Claim 50 recites a step that requires determining a set of alternate itineraries.
(FF 12).
Obviousness requires “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1741 (2007). “The first issue we address with respect to obviousness is the
scope and content of the prior art—specifically whether the prior art
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exhibited every step of the methods claimed in independent claims 1 and 31
of the ’099 patent.” Miniauction, Inc. v. Thomson Corp., F.3d (Fed. Cir.
2008).
In the rejection, the Examiner relied upon Tawaga and not Cochran for a
teaching of these steps. (Ans. 3). As discussed above with regards to claim
10, we find that Tawaga does not teach these steps. Further, the Examiner
did not articulate any further reasoning, with logical underpinnings, which
would lead one of ordinary skill in the art to the invention as claimed. We
find that one of ordinary skill in the art would not have been led by Tagawa
and Cochran these steps. Therefore, we find that the Appellants have shown
that the Examiner erred in rejecting claims 1, 43, 44, and 50 and claims 2, 4,
and 45-48, dependent thereon, by failing to establish a prima facie showing
of obviousness.
Article Claims 12 and 21
Claims 12 and 21 each recite a computer-readable medium containing
instructions that cause a computer to perform a method including the
analyzing and determining step of claim 10 at issue. (FF 6). For the same
reasons as above with regards to claims 1 and 10, we find that one of
ordinary skill in the art would not have been led by Tagawa and Cochran to
a computer-readable medium as recited in claims 12 and 21. Therefore, we
find that the Appellants have shown that the Examiner erred in rejecting
claims 12 and 21 and claims 13 and 15, dependent thereon, by failing to
establish a prima facie showing of obviousness.
Apparatus Claim 23
Claim 23 recites a computer system having a server that is structure
for analyzing the specified itinerary and for determining the value of the
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specified itinerary as recited in the method of claim 10. (FF 6). For the
same reasons as above with regards to claims 1 and 10, we find that one of
ordinary skill in the art would not have been led by Tagawa and Cochran to
a server that is structured to perform as recited in claim 23. Therefore, we
find that the Appellants have shown that the Examiner erred in rejecting
claim 23 and claims 24, 26 and 35, dependent thereon, by failing to establish
a prima facie showing of obviousness.
Apparatus Claim 36
Claim 36 recites an apparatus including a means-plus-function
limitation. (FF 7).
Where a claim uses the word “means” to describe
a limitation, we presume “that the inventor used
the term advisedly to invoke the statutory
mandates for means-plus-function clauses.” Sage
Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420,
1427, 44 USPQ2d 1103, 1109 (Fed. Cir. 1997)
(citation omitted). This presumption can be
rebutted where the claim, in addition to the
functional language, recites structure sufficient to
perform the claimed function in its entirety. Id. at
1427-28, 44 USPQ2d at 1109. Once the court has
concluded the claim limitation is a means-plus-
function limitation, the court must first identify the
function of the limitation. Micro Chem., Inc. v.
Great Plains Chem. Co., 194 F.3d 1250, 1258, 52
USPQ2d 1258, 1263 (Fed. Cir. 1999). The court
next ascertains the corresponding structure in the
written description that is necessary to perform
that function. Id. “Structure disclosed in the
specification is ‘corresponding’ structure only if
the specification or prosecution history clearly
links or associates that structure to the function
recited in the claim.
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B. Braun Med. v. Abbott Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896,
1900 (Fed. Cir. 1997).” Altiris Inc. v. Symantec Corp. F.3d (Fed. Cir.
2003).
Claim 36 recites a serving means which performs the following
functions:
analyzing the travel itinerary specified in the
request, including the selected originating and
destination locations, to determine a set of
alternative itineraries different than the travel
itinerary specified in the request, for determining a
value for the travel itinerary specified in the
request, for determining a value for each of the
alternative itineraries, and for generating a report,
based on the analysis and determination, including
a value for each alternative itinerary reflecting a
savings in travel costs in comparison with the
travel itinerary reflected by the request.

We find that the savings discovery server 400 (FF 8) described in the
Specification performs the functions above. (See App. Br. 10-11).
Therefore, we construe claim 36 to require a server which is structured to
perform the functions above and its equivalent.
For the same reasons as above with regards to claim 1, we find that
one of ordinary skill in the art would not have been led by Tagawa or
Cochran to a serving means, as we have construed the limitation above.
Therefore, we find that the Appellants have shown that the Examiner erred
in rejecting claim 36 by failing to establish a prima facie showing of
obviousness.

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The rejection of claims 5-8, 16-19, 27-30, 49, and 51 under § 103(a) as
being unpatentable over Tagawa, Cochran and DeLorme.
Dependent claims 5-8, 16-19, 27-29 and 51
These rejections are directed to claims dependent on claims 1, 12 and
23, whose rejection we have reversed above. For the same reasons, we will
not sustain the rejections of claims 5-8, 16-19, 27-29 and 51 over the cited
prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.").
Method Claim 49
Claim 49 recites a method including similar steps as the steps at issue
with regards to the rejection of claim 10. (FF 11). In the rejection, the
Examiner relied upon Tawaga and not Cochran or DeLorme for a teaching
of these steps. (Ans. 13). As discussed above with regards to claims 1 and
10, we find that Tawaga does not teach these steps. Further, the Examiner
did not articulate any other reasoning, with logical underpinnings, which
would lead one of ordinary skill in the art to the invention as claimed.
Therefore, we find that one of ordinary skill in the art would not have been
led by Tagawa, Cochran and DeLorme to these steps. We find that the
Appellants have shown that the Examiner erred in rejecting claim 49 by
failing to establish a prima facie showing of obviousness.
Apparatus Claim 30
Claim 30 recites a computer system having a server that is structured
for analyzing the specified itinerary and for determining the value of the
specified itinerary as recited in the method of claim 10. (FF 5). In the
rejection, the Examiner relied upon Tawaga and not Cochran or DeLorme
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for a teaching of the server. (Ans. 13). For the same reasons as above with
regards to claims 1 and 10, we find that one of ordinary skill in the art would
not have been led by Tagawa, Cochran and DeLorme to a server that is
structured to perform as recited in claim 30. Therefore, we find that the
Appellants have shown that the Examiner erred in rejecting claim 30 by
failing to establish a prima facie showing of obviousness.

The rejection of claims 11, 22, 33, 34, and 37-42 under §103(a) as being
unpatentable over Tagawa and Walker.
Method Claim 11
Claim 11 recites a method including similar steps as the steps at issue
with regards to the rejection of claim 10. (FF 4). In the rejection, the
Examiner relied upon Tawaga and not Walker for a teaching of these steps.
(Ans. 16). As discussed above with regards to claims 1 and 10, we find that
Tawaga does not teach these steps. Further, the Examiner did not articulate
any other reasoning, with logical underpinnings, which would lead one of
ordinary skill in the art to the invention as claimed. Therefore, we find that
one of ordinary skill in the art would not have been led by Tagawa and
Walker to these steps. We find that the Appellants have shown that the
Examiner erred in rejecting claim 11 and claims 37 and 38, dependent
thereon, by failing to establish a prima facie showing of obviousness.
Article Claim 22
Claim 22 recites a computer-readable medium containing instructions
that cause a computer to perform a method including the analyzing and
determining step of claim 10 at issue. (FF 6). For the same reasons as
above with regards to claims 1 and 10, we find that one of ordinary skill in
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the art would not have been led by Tagawa and Cochran to a computer-
readable medium as recited in claims 12 and 21. Therefore, we find that the
Appellants have shown that the Examiner erred in rejecting claim 22 and
claims 39 and 40, dependent thereon, by failing to establish a prima facie
showing of obviousness.
Apparatus Claims 33 and 34
Claims 33 and 34 each recites a computer system having a server that
is structured for analyzing the specified itinerary and for determining the
value of the specified itinerary as recited in the method of claim 10. (FF 5).
For the same reasons as above with regards to claims 1 and 10, we find that
one of ordinary skill in the art would not have been led by Tagawa and
Cochran to a server that is structured to perform as recited in claims 22 and
34. Therefore, we find that the Appellants have shown that the Examiner
erred in rejecting claims 33 and 34 and claims 41 and 42, dependent thereon,
by failing to establish a prima facie showing of obviousness.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting:
claims 10 and 32 under 35 U.S.C. §102(b) as being anticipated by
Tagawa;
claims 1, 2, 4, 12, 13, 15, 21, 23, 24, 26, 35, 36, 43-48, and 50 are
rejected under 35 U.S.C. §103(a) as being unpatentable over Tagawa
and Cochran;
claims 5-8, 16-19, 27-30, 49, and 51 under 35 U.S.C. §103(a) as
being unpatentable over Tagawa, Cochran, and DeLorme; and
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claims 11, 22, 33, 34, and 37-42 under 35 U.S.C. §103(a) as being
unpatentable over Tagawa and Walker.

DECISION
The decision of the Examiner to reject claims 1, 2, 4-8, 10-13, 15-19,
21-24, 26-30, and 32-51 is reversed.

REVERSED
JRG

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