Ex Parte Seretti et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11625067 (B.P.A.I. Jun. 28, 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.
11/625,067 01/19/2007 Harry Seretti V1425-0001-US-C-B 7802
91477 7590 06/29/2012
Dickstein Shapiro LLP
2049 Century Park East
Suite 700
Los Angeles, CA 90067
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
06/29/2012 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)

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UNITED STATES PATENT AND TRADEMARK OFFICE 2
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BEFORE THE BOARD OF PATENT APPEALS 5
AND INTERFERENCES 6
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Ex parte HARRY SERETTI and CARL SCHAUKOWITCH 9
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Appeal 2010-006270 12
Application 11/625,067 13
Technology Center 3600 14
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
JOSEPH A. FISCHETTI, Administrative Patent Judges. 19
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CRAWFORD, Administrative Patent Judge. 21
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DECISION ON REQUEST FOR REHEARING 24

Appeal 2010-006270
Application 11/625,067

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INTRODUCTION 1
Appellants filed a Request for Reconsideration on May 1, 2012 2
(hereinafter “Req.”) contending that the Board, in the Decision on Appeal of 3
March 1, 2012, misapprehended facts and asking that we reconsider and 4
reverse the Examiner’s rejection of claims 1 to 13 under 35 U.S.C. § 103(a) 5
as being unpatentable over Giovannoli in view of Brent (Req. 1). 6
Appellants argue that we misapprehended the applicability of the 7
prior Decision in Appeal No. 2002-1475 in Application No. 09/370,935 8
(“‘935 application”). In this regard, Appellants argue that the instant claims 9
are no different from the claims in the ‘935 application and thus we should 10
reverse the Examiner’s rejections for the reasons given in the Board 11
Decision for the ‘935 application. 12
We initially note that the Appellants have not directed our attention to 13
any legal authority mandating that we make the same findings and 14
conclusions in the instant application as was made in the earlier application. 15
In addition, the claims in the ‘935 application and the instant 16
application are not the same. For example, claim 1 of the ‘935 application 17
are directed to a system wherein vehicular financial data are input and claim 18
1 of the instant application is directed to a method including the step of 19
receiving vehicular financial data. 20
In addition, as we stated in our Decision on page 5, not only did the 21
earlier Decision of the Board relate to different claims it also related to a 22
different rejection. In the rejection in the ‘935 application, the Examiner’s 23
rationale was “to combine the teachings of Giovannoli[’s] computerized 24
quotation and Berent et al.[’s] vehicular auction information system in order 25
to sell or buy vehicle using direct quota system.” (‘935 application, Exam’r’s 26
Appeal 2010-006270
Application 11/625,067

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Ans. 4, mailed Nov. 2, 2001). As such, the rejection relied on combining the 1
systems of the two references. The Board in the earlier Decision concluded 2
that Giovannoli teaches away from having a central database and there is no 3
suggestion to replace the class description filter system of Giovannoli with 4
the auction system disclosed in Berent (‘935 application, Board Decision, 5
pages 12 to 13, mailed Jan. 22, 2004) (App. Br., instant app., Exhibit A). 6
In the instant case, the Examiner’s rationale is not to combine the 7
systems disclosed in Giovannoli and Berent. Rather, the Examiner’s 8
rationale in the instant application is to use the system disclosed in 9
Giovannoli to input vehicular data as is disclosed in Berent. Therefore, even 10
though the Examiner is using the same references in the instant application 11
as were used in the ‘935 application, the rejection itself is different. We note 12
that a rejection includes not only the references themselves but the rationale 13
for combining the teachings of the references. 14
We are not convinced that we misapprehended the applicability of the 15
prior Decision. The request is denied. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv). 19
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DENIED 21
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hh 24