Ex Parte Ulf et al

Board of Patent Appeals and Interferences

Sep 7, 2010

10304757 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID ULF and JAY RICHMOND
____________
Appeal 2009-008071
Application 10/304,7571
Technology Center 3600
____________

Before HUBERT C. LORIN, JEAN R. HOMERE, and BIBHU R.
MOHANTY, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on November 27, 2002. The real party in interest is WTT, Inc. Doing
Business as Radius. (App. Br. 2.)
2 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 2009-008071
Application 10/304,757

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 18. (App. Br. 4.) We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method and system for maximizing sales
opportunities by providing a customer purchasing an item the opportunity to
purchase a substitute item of at least equal value. (Spec. 1, ll. 4-13.)
Illustrative Claims
Independent claims 1 and 12 further illustrate the invention as
follows:
1. A method for maximizing opportunity sales by moving a
purchaser off an original travel reservation purchase choice and onto a
substitute travel reservation purchase, the method comprising the
steps of:
being notified of a first actor tendering a purchase commitment
for a first travel reservation item at a first price with the travel
reservation to be fulfilled at a specific future date, the first reservation
item being a service selected from the group consisting of a hotel
room rental, an automobile rental, an airline flight ticket, and a sea
travel, the service to be fulfilled at the specific future date; and
tendering a sale commitment to sell to the first actor an
equivalent reservation item to the first reservation item at a price at
least as favorable as the first price, the equivalent reservation item to
be purchased as a substitute for the first reservation item,
the sale commitment being presented in a form readable to the
first actor.

12. A system for maximizing opportunity sales by moving a
purchaser off an original purchase choice and onto a substitute
purchase, the system comprising:
Appeal 2009-008071
Application 10/304,757

3
a first computer, serving as a user computer, programmed to
perform the steps of:
making a reservation inquiry for a specific item and tendering a
reservation purchase commitment for the specific item at a first price,
the specific item being travel services at a future data;
a second computer, serving as a reservation supply computer
and hosting a reservation supply database, programmed to perform the
steps of:
querying the reservation supply database to find an equivalent
item to the specific item at the first price by finding a reservation
opportunity item within the reservation supply database comprising a
characteristics set equivalent to a characteristics set for the specific
item and a price at least as favorable as the first price; and
send a sale offer, to the first computer, to sell the found
equivalent item as a substitute for the specific item,
wherein the characteristics set for the equivalent item is
equivalent to the characteristics set for the specific item when each
item of characteristics set for the equivalent item is at least as
favorable as each corresponding item of the characteristics set for the
specific item.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Krichilsky 2002/0152200 A1 Oct. 17, 2002
Walker 7,236,942 B1 June 26, 2007
(filed Dec. 28, 1998)

Rejections on Appeal3
The Examiner rejects the claims on appeal as follows:
Claims 1 through 10 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.4

3 In the Examiner’s Answer entered December 11, 2008, the Examiner
entered a New Ground of Rejection against claims 1 through 10 as being
directed to non-statutory subject matter under 35 U.S.C. § 101. (Ans. 2, 14.)
Appeal 2009-008071
Application 10/304,757

4
Claims 1 through 3, 14, and 15 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Walker.
Claims 4 through 13 and 16 through 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Walker and
Krichilsky.
Appellants’ Contentions
1. Appellants contend that method steps in independent claim 1
necessarily require an apparatus because the claim recites “the sale
commitment being presented in a form readable to the first actor.” (Reply
Br. 2.) Further, Appellants argue that the method steps necessarily require
the creation of a sales commitment in readable form and, therefore, amounts
to a physical transformation. (Id.) Additionally, Appellants allege that the
present Specification discloses that the method steps are executed over a
network by a computer. (Id.) Appellants also contend that dependent claims
4 and 7 recite a “computer database.” (Id.) Therefore, Appellants allege
that claimed invention is directed to statutory subject matter. (Id.)
2. Appellants contend that Walker discloses only a system for
products and fails to teach the concept of offering a user an opportunity to
make a more attractive travel reservation as a substitute for a travel
reservation already booked or already being booked. (App. Br. 17, 19;
Reply Br. 2.) In particular, Appellants argue that since Walker does not
teach or suggest a system for making travel reservations, the Examiner failed

4 We note that by virtue of their dependency to independent claims 1 and 6,
dependent claims 14 through 18 should have been rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Nonetheless, since
the Examiner failed to make such a rejection, this issue is not before us.

Appeal 2009-008071
Application 10/304,757

5
to present a prima facie case of obviousness. (Id.) Further, Appellants
allege that there is insufficient rationale for the proffered combination.
(App. Br. 19-23; Reply Br. 4.) Additionally, Appellants set forth a
secondary consideration indicating non-obviousness. (App. Br. 21.) In
particular, Appellants argue that the claimed invention is non-obvious
because there is no evidence that the claimed invention has been developed
by a third party. (Id.)
3. Appellants contend that neither Walker nor Krichilsky teaches
a reservation supply computer that both hosts and queries a reservation
supply database to find an equivalent reservation item to a first reservation
item. (App. Br. 33.) In particular, Appellants argue that Walker only
teaches a system for selling products and does not teach a system that is
useful in relation to selling services, let alone travel reservation services.
(Id. at 33-34.) Further, Appellants allege that Walker’s preceding
disclosure, in conjunction with Krichilsky’s disclosure of looking outside
search parameters to find “almost matches” that a customer may have an
interest in purchasing, would not teach the claimed invention. (Id. at 34-35.)
Therefore, Appellants contend that the proffered combination does not
teach: 1) “a second computer, serving as a reservation supply computer and
hosting a reservation supply database…;” and 2) “querying the reservation
database to find an equivalent item to the specific item at the first price by
finding a reservation opportunity item within the reservation database,” as
recited in independent claim 12. (Id.) Additionally, Appellants argue that
there is insufficient rationale for the proffered combination. (Id. at 35-36.)

Appeal 2009-008071
Application 10/304,757

6
Examiner’s Findings and Conclusions
1. The Examiner finds that the method of independent claim 1 is
directed to non-statutory subject matter because the method steps are neither
tied to an apparatus nor physically transforms the underlying subject matter
(i.e., article or materials) to a different state or thing. (Ans. 14.) 5
2. The Examiner finds that independent claim 1 does not explicitly
recite that the claimed sale is an online transaction or the offer occurs
subsequent to the consummation of the original sale. (Ans. 15.) In
particular, the Examiner finds that Walker’s disclosure of bringing a
physical product to a Point of Sale (“POS”) terminal amounts to tendering a
purchase commitment by a first actor. (Id.) Further, the Examiner notes that
not all manufactured products are transferred to a purchaser at the time of a
purchase. (Id. at 15-16.) Additionally, the Examiner finds that there is
sufficient rationale for the proffered combination. (Id. at 16-17.) The
Examiner also finds that Appellants have not shown evidence which
substantiates the alleged secondary consideration. (Id. at 17-18.)
3. The Examiner finds that Walker’s disclosure of multiple servers
connected to POS terminals that are capable of finding substitute offers, in
conjunction with Krichilsky’s disclosure of utilizing a server-client
relationship to formulate a product search, teaches a reservation supply
computer that both hosts and queries a reservation database to find an
equivalent reservation. (Id. at 21.)

II. ISSUES

5 All references to the Examiner’s Answer are to the Answer filed on
December 5, 2008, which replaced the prior Answer filed on November 14,
2008.
Appeal 2009-008071
Application 10/304,757

7
1. Have Appellants shown that the Examiner erred in finding that
claims 1 and 10 are directed to non-statutory subject matter?
2. Have Appellants shown that the Examiner erred in concluding
that Walker renders independent claim 1 unpatentable? In particular, the
issue turns on whether an ordinarily skilled artisan would have understood
that Walker teaches:
(a) “being notified of a first actor tendering a purchase
commitment for a first travel reservation item,” as recited in independent
claim 1; and
(b) “tendering a sale commitment to sell to the first actor an
equivalent reservation item to the first reservation item,” as recited in
independent claim 1.
3. Have Appellants shown that the Examiner erred in concluding
that the combination of Walker and Krichilsky renders independent claim 12
unpatentable? In particular, the issue turns on whether there is sufficient
rationale for the proffered combination, and whether the proffered
combination teaches:
(a) “a second computer, serving as a reservation supply computer
and hosting a reservation supply database . . . ,” as recited in independent
claim 12; and
(b) “querying the reservation database to find an equivalent item to
the specific item at the first price by finding a reservation opportunity item
within the reservation database,” as recited in independent claim 12.

Appeal 2009-008071
Application 10/304,757

8
III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Appellants’ Specification
1. Appellants admit that “the inventive method is not limited to
use with computers.” (Spec. 9, ll. 16-17) (emphasis added.)
Walker
2. Walker generally relates to POS systems and, in particular, to a
method of promoting the sale of a substitute product at a POS terminal.
(Abst.; col. 1, ll. 22-24.)
3. Walker discloses that when a customer initiates a transaction at
a POS terminal, but before the consummation of the transaction, a POS
server contacts one or more manufacturer servers. (Col. 3, ll. 58-60.) In
particular, Walker discloses that the POS server notifies the manufacturer
servers of a transaction in progress and, subsequently, provides each
manufacturer server with data pertaining to the transaction. (Id. at ll. 60-64.)
After receiving the data pertaining to the transaction, Walker discloses that
each manufacture server may evaluate such data and determining if the
product selected by the customer best serves the manufacturer’s interests.
(Id. at ll. 64-67.) If the product selected by the customer doesn’t serve the
manufacturer’s interest, Walker discloses that the manufacturer server
conveys a promotional offer to the POS server in order to encourage the
buyer to switch products. (Id. at l. 67-col. 4, l. 3.)
4. Walker’s figure 5 depicts the process performed by that POS
terminal. (Col. 7, ll. 1-3.) In step (510), Walker discloses that the POS
terminal (110) transmits the transaction data to the POS server (120) and
Appeal 2009-008071
Application 10/304,757

9
awaits any potential promotional offers from the manufacturer servers. (Id.
at ll. 17-19.) In step (520), if the POS server (120) does not receive any
promotional offers from the manufacturer servers, Walker discloses that the
sale of the original product is processed and completed. (Id. at ll. 19-21.)
Krichilsky
5. Krichilsky generally relates to retrieving information pertaining
to a product. (1: para. [0002].)
6. Krichilsky discloses formulating a search query that defines the
properties of a desired product. (3: para. [0031].) In response to the search
query for a desired product, Krichilsky discloses that an order processing
system searches a group of products and returns information pertaining to
products in the group that match the search query. (Id.) Krichilsky’s figure
1 depicts identifying a product that matches the search query. (Id.) If a
matched product lies outside the group of available products, Krichilsky
discloses that the matched product is unavailable for direct purchase. (Id.)
Next, Krichilsky discloses that the order processing system determines
whether any products exist within the group of available products which are
related to the matched product. (Id. at para. [0032].) If the order processing
system identifies an available product related to the matched product,
Krichilsky discloses sending a message to the customer inviting the
customer to purchase the available product. (Id.)
7. Krichilsky figure 2 depicts that the order processing system
(208) may be implemented utilizing various head-end architectures. (4:
para. [0042].) In particular, Krichilsky discloses that the order processing
system (208) may be implemented as a server and, further, is coupled to a
database (210). (Id. at para. [0044], [0045].)
Appeal 2009-008071
Application 10/304,757

10
8. Krichilsky discloses presenting products that are suited for a
user. (5: para. [0052].) In particular, Krichilsky discloses determining
whether a product is suitable for a user based on the user’s industrial
affiliation, previous searches, or previous orders placed by the user. (Id.)

IV. ANALYSIS
35 U.S.C. § 101 Rejection
Claim 1
“[The Supreme] Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under §101.
The machine-or-transformation test is not the sole test for deciding whether
an invention is a patent-eligible ‘process.’” See Bilski v. Kappos, 130 S. Ct.
3218, 3227 (2010) (majority slip op. at Part II-B1).
The Court of Appeals for the Federal Circuit (“CAFC”) stated the
machine-or-transformation test for process claims. In re Bilski, 545 F.3d
943 (Fed. Cir. 2008) (en banc). The CAFC explained the machine-or-
transformation test as follows:
The machine-or-transformation test is a two-branched inquiry;
an applicant may show that a process claim satisfies § 101
either by showing that his claim is tied to a particular machine,
or by showing that his claim transforms an article. See
[Gottschalk v.] Benson, 409 U.S. [63], 70 [(CCPA 1972)].
Certain considerations are applicable to analysis under either
branch. First, as illustrated by Benson and discussed below, the
use of a specific machine or transformation of an article must
impose meaningful limits on the claim’s scope to impart patent-
eligibility. [Id. at 71-72.] Second, the involvement of the
machine or transformation in the claimed process must not
Appeal 2009-008071
Application 10/304,757

11
merely be insignificant extra-solution activity. See [Parker v.]
Flook, 437 U.S. [584,] 590 [(1978)].

Id. at 961-62 (parallel citations omitted).
The Supreme Court held that there are other tools for establishing
subject matter eligibility under 35 U.S.C. § 101. See Bilski, 130 S. Ct. at
3229. Those tools involve an inquiry into whether a process is merely an
abstract idea. “In searching for a limiting principle, this Court’s precedents
on the unpatentability of abstract ideas provide useful tools.” (Id.). The
Court outlined one such precedent:
In Benson, the Court considered whether a patent application for an
algorithm to convert binary-coded decimal numerals into pure binary
code was a “process” under §101. [ Id. at 64–67]. The Court first
explained that “‘[a] principle, in the abstract, is a fundamental truth;
an original cause; a motive; these cannot be patented, as no one can
claim in either of them an exclusive right.’” Id. at 67 (quoting Le Roy,
14 How. (55 U.S.) at 175). The Court then held the application at
issue was not a “process,” but an unpatentable abstract idea. “It is
conceded that one may not patent an idea. But in practical effect that
would be the result if the formula for converting . . . numerals to pure
binary numerals were patented in this case.” 409 U. S. [63], at 71. A
contrary holding “would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the algorithm itself.” Id.
at 72.

Id. at 3230 (parallel citations omitted).
As set forth above, we apply the test recognized in the Supreme
Court's Bilski decision as a “useful . . . tool” (i.e., the machine-or-
transformation test) for determining subject-matter eligibility of the claimed
invention. Independent claim 1 merely recites an “[a] method for
maximizing opportunity sales,” “being notified of a first actor tendering a
purchase,” “tendering a sale commitment to sell to the first actor,” and “the
Appeal 2009-008071
Application 10/304,757

12
sale commitment.” Upon reviewing Appellants’ Specification, we note that
Appellants admit that the claimed invention is not limited to use with
computers. (FF 1.) We fail to find any disclosure that the above-stated
claim steps must be implemented on a “machine.”6 Therefore, independent
claim 1 fails to explicitly recite any “machine” consistent with the bounds of
the machine-or-transformation test. Consequently, we find that the claim
language does not pass muster under the “machine” prong of the Bilski test.
Next, we find that independent 1 fails to meet the “transformation”
prong of the Bilski test. In particular, we find that the fact that a sale
commitment is in readable form does not amount to a transformation of an
article of manufacture from a different state or thing consistent with the
second prong of the “machine-or-transformation” test. Therefore, we find
that independent claim 1 fails to meet either prong of the machine-or-
transformation test.
Nonetheless, our guidance from the Supreme Court in Bilski states
that the machine-or-transformation test is not the endpoint for our inquiry
under 35 U.S.C. § 101. We further analyze independent claim 1 to
determine whether the claimed method is directed to an abstract idea. We
begin with the understanding that abstract ideas are not patent-eligible
subject matter. Appellants contend that the idea of offering a customer the
opportunity to book more attractive travel reservations would be patent-

6 “[A] machine is ‘a concrete thing, consisting of parts, or of certain devices
and combination of devices.’ This includes every mechanical device or
combination of mechanical powers and devices to perform some function
and produce a certain effect or result.” In re Ferguson, 558 F.3d 1359, 1364
(Fed. Cir. 2009)(quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir.
2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), and cert.
denied, 129 S. Ct. 70 (2008)).
Appeal 2009-008071
Application 10/304,757

13
eligible subject matter. In this case, a finding that the claimed subject matter
is patent eligible under 35 U.S.C. § 101 would effectively pre-empt the
concept of “offering promotions pertaining to travel reservations” and in all
practical effect would be a patent on “offering travel promotions” itself. In
light of this analysis, we find that the claimed invention is directed to an
abstract idea. It follows that Appellants have not shown that the Examiner
erred in finding that independent claim 1 is directed towards non-statutory
subject matter.
Claims 2, 3, and 6
We find that independent claim 6, and dependent claims 2 and 3, are
also directed to non-statutory subject matter as set forth in our discussion of
independent claim 1.
Claim 4
We find that dependent claim 4 does involve a machine under the first
prong of the “machine-or-transformation” test. Dependent claim 4 explicitly
recites “an inquiry, made on an opportunity reservation computer database.”
In particular, since a computer is required to query a computer database, we
find evidence that the method steps of dependent claim 4 are implemented
on a “machine.” Therefore, dependent claim 4 is tied to a “machine”
consistent with the bounds of the machine-or-transformation test.
Accordingly, we find that the claim language passes muster under the
“machine” prong of the Bilski test.
Claim 5
By virtue of its dependency to dependent claim 4, we find that
dependent claim 5 is also directed to statutory subject matter.

Appeal 2009-008071
Application 10/304,757

14
Claims 7 through 10
We find that dependent claim 7 is also directed to statutory subject
matter as set forth in our discussion of dependent claim 4. Additionally, we
find that by virtue of their dependency to dependent claim 7, dependent
claims 8 through 10 are also directed to statutory subject matter.

35 U.S.C. § 103(a) Rejection—Walker
Claim 1
Independent claim 1 recites, in relevant part: 1) “being notified of a
first actor tendering a purchase commitment for a first travel reservation
item;” and 2) “tendering a sale commitment to sell to the first actor an
equivalent reservation item to the first reservation item.”
As detailed in the Findings of Fact section, Walker discloses
promoting the sale of a substitute product at a POS terminal. (FF 2.) In
particular, Walker discloses that a customer initiates the sale of a product at
the POS terminal. (FF 3.) While the transaction is in progress, Walker
discloses that a corresponding POS server contacts multiple manufacturer
servers and provides data pertaining to the transaction. (Id.) After receiving
such data, Walker discloses that each manufacturer server determines if the
product serves the manufacturer’s best interest. (Id.) If it does not, Walker
discloses that the manufacturer server conveys a promotional offer to the
POS terminal encouraging the customer to switch products. (Id.)
We find that upon receiving notification and corresponding data about
the sale of a product to a customer, Walker’s disclosure teaches that each
manufacturer server is capable of conveying a promotional offer regarding
an equivalent product to the customer. Further, “if a technique has been
Appeal 2009-008071
Application 10/304,757

15
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In this case, we
find that an ordinarily skilled artisan would have readily appreciated
substituting the sale of a product with the sale of service, such as the sale of
a travel reservation. Accordingly, we find that an ordinarily skilled artisan
would have understood that Walker’s manufacturer servers are capable of
receiving notification and corresponding data about the sale of a travel
reservation to a customer and, subsequently, conveying a promotional offer
regarding an equivalent travel reservation to the customer. Thus, we find
that Walker’s disclosure teaches “being notified of a first actor tendering a
purchase commitment for a first travel reservation item,” and “tendering a
sale commitment to sell to the first actor an equivalent reservation item to
the first reservation item,” as recited in independent claim 1.
We are not persuaded by Appellants’ argument that the claimed
invention is non-obvious because there is no evidence that the invention has
been developed by a third party. (App. Br. 21.) Appellants have not
provided a further explanation or any evidence to substantiate such a
gratuitous allegation. In our view, Appellants’ conclusory statement is
insufficient to overcome the Examiner's prima facie case of obviousness. It
follows that Appellants have not shown that the Examiner erred in
concluding that Walker renders independent claim 1 unpatentable.

Appeal 2009-008071
Application 10/304,757

16
Claims 2 and 3
Appellants do not provide separate arguments for patentability with
respect to dependent claims 2 and 3. (App. Br. 14.) Accordingly, we accept
Appellants’ grouping of dependent claims 2 and 3 with independent claim 1.
(Id.) Therefore, dependent claims 2 and 3 fall with independent claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 14 and 15
Appellants contend that Walker teaches that the customer either
accepts the promotional offer, or the customer rejects the promotional offer
and the sale of the original product is completed. (App. Br. 24; Reply Br. 4.)
In particular, Appellants argue that Walker only teaches completing one
transaction and fails to teach finalizing the first purchase prior to making a
promotional offer. (App. Br. 24-25; Reply Br. 4-5.) According to
Appellants, Walker does not teach “finalizing the purchase, by the first
actor, of the first travel reservation,” as recited in dependent claims 14 and
15. (Id.) We do not agree.
Walker discloses that the original transaction is completed if the
customer does not accept the promotional offer. (FF 4.) In particular, once
the POS terminal provides data pertaining to the transaction, the POS
terminal waits for promotional offers from the manufacturer servers. (Id.) If
no promotional offers are received, Walker discloses that the original
product is processed and completed. (Id.) We find that Walker’s disclosure
teaches processing and completing the sale of a product. In particular, we
find that given the limited amount of available options for offering a
promotion (i.e., before, after, or during the sale), an ordinarily skilled artisan
would have readily appreciated processing and completing the sale of a
Appeal 2009-008071
Application 10/304,757

17
travel reservation to a customer prior to conveying a promotional offer.
Thus, we find that Walker teaches the disputed limitation. It follows that
Appellants have not shown that the Examiner erred in concluding that
Walker renders dependent claims 14 and 15 unpatentable.

35 U.S.C. § 103(a) Rejection—Combination of Walker and Krichilsky
Claim 12
Independent claim 12 recites, in relevant part: 1) “a second computer,
serving as a reservation supply computer and hosting a reservation supply
database . . . ;” and 2) “querying the reservation database to find an
equivalent item to the specific item at the first price by finding a reservation
opportunity item within the reservation supply database.”
As detailed in the Findings of Fact section above, Krichilsky discloses
implementing an ordering processing system on a server. (FF 7.) Krichilsky
also discloses that the order processing system is coupled to a database. (Id.)
We find that Krichilsky’s disclosure teaches a server that hosts an order
processing system and is capable of querying a database. In summary, we
find that an ordinarily skilled artisan would have understood that
Krichilsky’s server that host an order processing system is capable of
utilizing Walker’s manufacturer servers to send and receive notification and
corresponding data about the sale of a travel reservation to a customer, query
a corresponding travel reservation database to find an equivalent
promotional offer, and, subsequently, convey such offer to the customer.
Thus, we find that the combination of Walker and Krichilsky teaches “a
second computer, serving as a reservation supply computer and hosting a
reservation supply database…,” and “querying the reservation database to
Appeal 2009-008071
Application 10/304,757

18
find an equivalent item to the specific item at the first price by finding a
reservation opportunity item within the reservation database,” as recited in
independent claim 12.
We are not persuaded by Appellants’ argument that there is
insufficient rationale to combine Walker and Krichilsky. (App. Br. 35-36.)
As set forth above, we find more than adequate suggestion for the proposed
modification in the prior art. It follows that Appellants have not shown that
the Examiner erred in concluding that the combination of Walker and
Krichilsky renders independent claim 12 unpatentable.
Claim 4
Appellants contend that Walker does not teach “making a purchase
inquiry,” as recited in dependent claim 4. (App. Br. 25.) Appellants also
argue that Krichilsky does not teach retrieving information pertaining to a
product using a search query, which includes informing the user that the
desired product is not available and recommending an alternative product, or
substitute, that does not satisfy the search query. (Id.) Further, Appellants
contend that Krichilsky discloses formulating a search query from a
customer and looking outside the search parameters to find “almost
matches” that the customer might be interested in purchasing. (App. Br. 26.)
In particular, Appellants allege that incorporating Krichilsky’s preceding
disclosure with Walker’s disclosure of a system that only sells products does
not teach the claimed invention. (Id.) We do not agree.
As detailed in the Findings of Fact section above, Krichilsky discloses
retrieving information pertaining to a desired product. (FF 5.) In particular,
Krichilsky discloses formulating a search query that defines properties of a
desired product, returning information pertaining to products in a group that
Appeal 2009-008071
Application 10/304,757

19
may match the search query, and identifying products within the group that
match the search query. (FF 6.) If there are not products that match the
search query, Krichilsky discloses looking within the group of available
products to identify a product related to the desired product. (Id.)
We find Krichilsky’s disclosure teaches formulating a search query
pertaining to the sale of a product and finding a substitute product if a
matched product is not available for sale. Thus, we find that Krichilsky’s
disclosure teaches “making a purchase inquiry,” as recited in dependent
claim 4. Further, we are not persuaded by Appellants’ argument that
Krichilsky does not teach retrieving information pertaining to a product
using a search query, which includes informing the user that the desired
product is not available and recommending an alternative product, or
substitute, that does not satisfy the search query. (App. Br. 25.) Appellants’
argument is not commensurate in scope with the claim language. It follows
that Appellants have not shown that the Examiner erred in concluding that
the combination of Walker and Krichilsky renders dependent claim 4
unpatentable.
Claim 5
Appellants contend that neither Walker nor Krichilsky teaches a
scenario of making a better offer more than a day after the purchase of a first
product. (App. Br. 27.) In particular, Appellants argue that Walker only
teaches completing one transaction. (Id.) Appellants also allege that
Krichilsky’s disclosure of utilizing a customer’s purchase history to tempt
the customer with a product does not teach “wherein the step of tendering
the sale commitment is executed more than 24 hours after the step of the
first actor tendering the purchase commitment for the first reservation item
Appeal 2009-008071
Application 10/304,757

20
at the first price,” as recited in dependent claim 5. (Id. at 27-28; Reply Br.
5.) We do not agree
As set forth in the Findings of Fact section above, Krichilsky discloses
presenting products suited for a user. (FF 8.) In particular, Krichilsky
discloses determining whether a product is suited for a user based on
previous searches or orders placed by the user. (Id.) We find that
Krichilsky’s disclosure teaches offering a product for sale to a customer
based on past searches or orders placed by the customer. We agree with the
Examiner that an ordinarily skilled artisan would have understood that
offering a promotion after the purchase of a product (i.e., an order) is old and
well known in the art. (Ans. 19.) In summary, we find that an ordinarily
skilled artisan would have readily appreciated finding an equivalent product
that is available for sale to a customer utilizing orders placed by the
customer more than 24 hours prior. Thus, we find that the combination of
Walker and Krichilsky teaches the disputed limitation. It follows that
Appellants have not shown that the Examiner erred in concluding that the
combination of Walker and Krichilsky renders dependent claim 5
unpatentable.
Claims 6 and 11
Appellants offer the same arguments set forth in response to the
obviousness rejection of independent claim 1, and dependent claim 4, to
rebut the obviousness rejections of independent claims 6 and 11. (App. Br.
28-32.) We have already addressed these arguments in our discussion of
independent claim 1, and dependent claim 4, and we found them
unpersuasive. Consequently, Appellants have not shown that the Examiner
Appeal 2009-008071
Application 10/304,757

21
erred in concluding that the combination of Walker and Krichilsky renders
dependent claims 6 and 11 unpatentable.
Claims 7 through 10 and 18
Appellants do not provide separate arguments for patentability with
respect to dependent claims 7 through 10 and 18. (App. Br. 26.)
Accordingly, we accept Appellants’ grouping of dependent claims 7 through
10 and 18 with independent claim 6. (Id.) Therefore, dependent claims 7
through 10 and 18 fall with independent claim 6. See 37 C.F.R. §
41.37(c)(1)(vii).
Claim 13
Appellants do not provide separate arguments for patentability with
respect to dependent claim 13. (App. Br. 32.) Accordingly, we accept
Appellants’ grouping of dependent claim 13 with independent claim 12.
(Id.) Therefore, dependent claim 13 falls with independent claim 12. See 37
C.F.R. § 41.37(c)(1)(vii).
Claims 16 and 17
Appellants do not provide separate arguments for patentability with
respect to dependent claims 16 and 17. (App. Br. 26.) Accordingly, we
accept Appellants’ grouping of dependent claims 16 and 17 with dependent
claim 5. (Id.) Therefore, dependent claims 16 and 17 fall with dependent
claim 5. See 37 C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in rejecting
claims 1 through 3 and 6 as being directed to non-statutory subject matter
under 35 U.S.C. § 101.
Appeal 2009-008071
Application 10/304,757

22
2. Appellants have shown that the Examiner erred in rejecting
claims 4, 5, and 7 through 10 as being directed to non-statutory subject
matter under 35 U.S.C. § 101.
3. Appellants have not shown that the Examiner erred in rejecting
claims 1 through 18 as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
1. We affirm the Examiner’s decision to reject claims 1 through 3
and 6 as being directed to non-statutory subject matter under 35 U.S.C. §
101.
2. We reverse the Examiner’s decision to reject claims 4, 5, and 7
through 10 as being directed to non-statutory subject matter under 35 U.S.C.
§ 101.
3. We affirm the Examiner’s decision to reject claims 1 through
18 as being unpatentable under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Appeal 2009-008071
Application 10/304,757

23
erc

YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314