Ex Parte Podgurny et al

Board of Patent Appeals and Interferences

Mar 12, 2012

10060405 (B.P.A.I. Mar. 12, 2012)

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.
10/060,405 02/01/2002 Leonard John Podgurny 13904RCE 9565
293 7590 03/12/2012
DOWELL & DOWELL P.C.
103 Oronoco St.
Suite 220
Alexandria, VA 22314
EXAMINER
JABR, FADEY S
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
03/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEONARD JOHN PODGURNY and ANITA ERNESAKS
____________

Appeal 2010-011806
Application 10/060,405
Technology Center 3600
____________

Before: HUBERT C. LORIN, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 79-104. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to a system for enabling a customer
to obtain, over a computer network, a price quotation for a railway
transportation service (Spec. 1:7-10). Claim 79, reproduced below, is
further illustrative of the claimed subject matter.
79. A computer readable storage medium containing a
program element for execution by a CPU for enabling a railway
transportation company to provide price quotes to its customers
for shipping goods by rail, said program element comprising:
a. a first program component for directing a computer to
deliver first information to a user, the first information
prompting the user to enter at the computer information about a
rail transportation service request for shipment of goods
between an origin location and a destination location, the rail
transportation service request specifying a certain rail
transportation service to be provided by the railway
transportation company;
b. a second program component operative to interact with
a database of promotional events, the database of promotional
events including a plurality of entries mapping discount
eligibility criteria to discount data elements, wherein the
database includes at least two different discount eligibility
criteria, each of the at least two different discount eligibility
criteria being selected from the set consisting of a type of
equipment to be used to ship goods, an origin location for a
shipment, a destination location for a shipment, a distance over
which goods are to be transported, a type of commodity to be
shipped and a time of shipment, said second program
component being operative to:
i. consult the database of promotional events to
determine if the rail transportation service request
satisfies one or more of the discount eligibility criteria;
ii. extract from the database one or more discount
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data elements mapped with the one or more discount
eligibility criteria satisfied by the rail transportation
service request element associated with the entry
identified in i);
c. a third program component for computing a price for
the shipment of the goods at least in part on the basis of the
information about the rail transportation service request; and the
one or more extracted discount data elements, said third
program component being operative for:
iii. generating an initial price quote for the
shipment of the goods at least in part on the basis of the
information about the rail transportation service request;
iv. generating a discounted price quote for the
shipment of the goods at least in part on the basis of the
information about the rail transportation service request
and the one or more extracted discount data elements;
d. a fourth program component for directing the
computer to deliver to the user information conveying the initial
price quote and the discounted price quote so that the user is
made aware of both the initial price quote and the discounted
price quote, the initial price quote and the discounted price
quote both pertaining to the certain rail transportation service
specified by the rail transportation service request.

Claims 79 and 99 stand rejected under 35 U.S.C. § 112, second
paragraph, for indefiniteness; claims 99-101 stand rejected under 35 U.S.C.
§ 101 for failing to recite statutory subject matter; and claims 79-104 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Barni (US 6,064,981,
iss. May 16, 2000) in view of Bains (US 2004/0093313 A1, pub. May 13,
2004) and Berkovitz (US 2007/0299790 A1, pub. Dec. 27, 2007).
We AFFIRM.

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ISSUES
Did the Examiner err in rejecting independent claims 79 and 99 under
35 U.S.C. § 112, second paragraph, for indefiniteness?
Did the Examiner err in rejected claims 99-101 under 35 U.S.C. § 101
for failing to recite statutory subject matter?
Did the Examiner err in asserting that a combination of Barni, Bains,
and Berkovitz renders obvious independent claim 791? The issue turns on
whether the Examiner has set forth sufficient rationales for combining Barni,
Bains, and Berkovitz.
Did the Examiner err in asserting that a combination of Barni, Bains,
and Berkovitz renders obvious independent claim 992? The issue turns on
whether a combination of Barni, Bains, and Berkovitz renders obvious a
discount eligibility criterion in the form of a railcar type.

FINDINGS OF FACT
We adopt the same portions of Barni, Bains, and Berkovitz cited by
the Examiner on pages 9-15 of the Examiner’s Answer.

ANALYSIS
Indefiniteness Rejection
We are not persuaded the Examiner erred in rejecting independent
claim 79 and 99 under 35 U.S.C. § 112, second paragraph, for indefiniteness
(Reply Br. 12-20). Appellants assert that because the recited

1 We choose independent claim 79 as representative of claims 79-98. See 37
C.F.R. § 41.37(c)(1)(vii).
2 We choose independent claim 99 as representative of claims 99-104. See
37 C.F.R. § 41.37(c)(1)(vii).
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program/control components are on the computer readable storage medium,
they either are or imply sufficient structure for performing the claimed
functions, and thus there is no reason to invoke 35 U.S.C. § 112, sixth
paragraph (Reply Br. 13-14, 17-18). However, even the computer readable
storage medium cannot actually perform the claimed functions, as it merely
stores the program/control components. Accordingly, the recited
program/control functions do indeed invoke 35 U.S.C. § 112, sixth
paragraph.
Appellants assert that even under 35 U.S.C. § 112, sixth paragraph,
the program/control components are on the computer readable storage
medium, which is sufficient structure to meet 35 U.S.C. § 112, sixth
paragraph (Reply Br. 15-16, 18-20). A computer readable storage medium
constitutes less structure than a general purpose computer. Yet, without an
algorithm, even a general purpose computer cannot constitute sufficient
structure to perform a function claimed under 35 U.S.C. § 112, sixth
paragraph. See Aristocrat Techs., Inc. v. Int’l Game Tech., 521 F.3d 1328
(Fed. Cir. 2008); WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339
(Fed. Cir. 1999). As Appellants do not disclose any algorithm in the
Specification for performing the claimed functions, the computer readable
storage medium is insufficient structure for performing the program/control
functions recited in independent claims 79 and 99.

Statutory Subject Matter
We are not persuaded the Examiner erred in rejecting claims 99-101
under 35 U.S.C. § 101 for failing to recite statutory subject matter (Reply Br.
21-22). The Board does not enter amendments to the claims. Accordingly,
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as Appellants have not set forth any substantive arguments with respect to
this rejection of independent claim 99, we sustain the rejection of
independent claim 99 on these grounds.
Appellants assert that a “computer storage readable medium”
(emphasis original), as recited in dependent claims 100 and 101, would not
encompass a signal per se (Reply Br. 21). We disagree. A transitory signal
disembodied from structure can store data.

Obviousness Rejection of Independent Claim 79
We are not persuaded the Examiner erred in asserting that a
combination of Barni, Bains, and Berkovitz renders obvious independent
claim 79 (App. Br. 14-26). Appellants assert that “by combining the
element of the pricing engine of Berkovitz with the online system for
searching and displaying published rate and discount fare information of
Barni, the function Barni’s system changes so that Barni no longer performs
the same function as it did separately from Berkovitz” (App. Br. 16, 25-26).
We disagree. The Barni and Berkovitz combination would still search and
display published rate and discount fare information as disclosed in Barni
(Fig. 4; col. 2, ll. 2-10). The only difference would be that the displayed
published rate and discount fare information of Barni would be tailored to
the user, as set forth in Berkovitz (paras. [0004]-[0005], [0014]-[0020],
[0025]-[0026], [0029]). Accordingly, given user requirements, a “full price”
published rate (pre-calculator of Berkovitz) for each carrier of Barni would
be displayed alongside a “discount fare” which would include all discounts
the user qualifies for (post-processing calculator of Berkovitz), also for each
carrier of Barni. Thus, both Barni and Berkovitz would perform the same
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functions.
Appellants assert that “since neither Barni nor Berkovitz allow
customers to specify details of a transportation service for shipping goods in
order to obtain a price quote for that specific transportation service, it is
unclear how the pricing engine of Berkovitz would compute multiple prices
for each of the possible variations in possible transportation services offered
on the selected shipping lane (e.g. different equipment, different times of
shipment, different commodities etc...)” (App. Br. 17; emphasis original).
However, Bains is cited for disclosing the possible variations in possible
transportation services offered (Exam’r’s Ans. 14). See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single reference
alone does not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”).
Appellants assert there is no motivation to modify Barni to include the
pricing engine of Berkovitz because “[a]ll the prices displayed in Barni for a
selected shipping lane are provided by the freight forwarders and carriers (or
by the customer in the case of a buyer bid) and there is nothing even
remotely related to the actual computation of the prices” (App. Br. 18).
However, Berkovitz is cited for the computation of prices, as well as the
rationale for combining (Exam’r’s Ans. 10-11, 13-15). See In re Merck &
Co., 800 F.2d at 1097; In re Keller, 642 F.2d at 426. Thus, that there may
not be a rationale set forth in Barni to modify itself is unpersuasive.
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Appellants also assert that price computation is sensitive and
proprietary, and thus “it would not make sense to allow a third party system,
such as the one described in Barni, to compute prices for many different
carriers or freight forwarders” (App. Br. 18-19; emphasis original).
However, Barni already discloses searching and displaying published rates
and discount fares. Berkovitz would merely set forth which of those already
public discounts of Barni a user qualifies for.
Appellants assert that
Bains performs the function of pricing, selling and
exercising options to engage shipping container
space… [and] [g]iven that Barni is not concerned
with the computation of pricing in any way,
combining the teachings of Barni and Bains would
not result in the determination of pricing for a
transportation service based on many different
factors.
(App. Br. 19-20; emphasis original). However, Berkovitz is cited for the
computation of prices (Exam’r’s Ans. 10-11, 13-14). See In re Merck &
Co., 800 F.2d at 1097; In re Keller, 642 F.2d at 426.
Appellants assert that a combination of Berkovitz and Bains “would
result in the ability to provide dynamic pricing for the options themselves,
wherein the price of the options themselves would be based upon condition
rules” (App. Br. 20; emphasis original). However, Bains is merely cited for
disclosing taking various customer shipping requirements into account when
determining shipping pricing in general (para. [0014]). The fact that the
specific pricing in Bains is directed toward options is irrelevant.

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Obviousness Rejection of Independent Claim 99
We are not persuaded the Examiner erred in asserting that a
combination of Barni, Bains, and Berkovitz renders obvious independent
claim 99 (App. Br. 28-33). In addition to the arguments set forth for
independent claim 79, Appellants assert that “none of Barni, Berkovitz and
Bains teaches or suggests using a discount eligibility criterion in the form of
a railcar type” (App. Br. 31; emphasis original). However, Berkovitz
discloses taking into account various discount eligibility criterion in pricing
(paras. [0004]-[0005], [0014]-[0020], [0025]-[0026], [0029]), while para.
[0036] of Bains discloses prices taking into account container types for
various modes of transportation, including rail, which would correspond to
the recited “railcar type.”

DECISION
The decision of the Examiner to reject claims 79-104 is AFFIRMED.

AFFIRMED

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