Ex Parte Willis

Patent Trial and Appeal Board

Jun 6, 2013

11736675 (P.T.A.B. Jun. 6, 2013)

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.
11/736,675 04/18/2007 KERRY WAYNE WILLIS AUS920070050US1 4211
46129 7590 06/06/2013
IBM CORPORATION
C/O DARCELL WALKER, ATTORNEY AT LAW
P. O. Box 25048
HOUSTON, TX 77265
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
06/06/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KERRY WAYNE WILLIS
____________________

Appeal 2011-007835
Application 11/736,675
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007835
Application 11/736,675

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellant’s invention relates to a method for performing automated
purchasing of a group sales order and in particular to a method for
performing online group purchases, in which multiple people are ordering on
the same purchasing transaction, using a customized purchasing certificate
(Spec. 1, ll. 5-8).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for performing automated
group purchasing comprising the steps of:
establishing an automated group purchasing
account on a computer network between a
merchant that supplies a product or a service and a
group purchaser which has individual members
that will be able to submit orders under the group
purchaser account in which the individual orders
will be compiled into one group order;
creating an order by an individual member
of the group purchaser;

1 Our decision will make reference to the Appellant’s Appeal Brief
(“App. Br.,” filed February 14, 2011) and Reply Brief (“Reply Br.,” filed
April 1, 2011) and the Examiner’s Answer (“Ans.,” mailed March 29, 2011).
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submitting the created order to a merchant
via the computer network;
validating a security key submitted by an
individual group member when that individual
group member attempts to submit an order;
receiving and validating an order from an
individual group member when there is a
determination that the security key submitted by
the individual group member is valid; and
storing a validated individual.

THE REJECTIONS
The following rejections are before us for review:
Claim 19 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 1-3, 5-8, 10, 11, 13-16, and 18-20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Istfan (US 2007/0203801 A1,
pub. Aug. 30, 2007) in view of Yoshida (US 2007/0255661 A1, pub. Nov. 1,
2007).
Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Istfan in view of Yoshida and further in view of Gerba
(US 2003/0083533 A1, pub. May 1, 2003).
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Istfan in view of Yoshida and further in view of Kou
(US 2002/0099936 A1, pub. Jul. 25, 2002).

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ANALYSIS
Indefiniteness
Appellant does not contend that the Examiner erred in rejecting
claim 19 as indefinite. To the contrary, Appellant concedes that the “on” in
the phrase “containing information for on one of the criteria,” as recited in
the claim should be removed (Reply Br. 2). Therefore, we will sustain the
Examiner’s rejection of claim 19 under 35 U.S.C. § 112, second paragraph.
Obviousness
Claims 1-3, 5-8, 10, 11, 13-16, and 18-20
Appellant argues claims 1-3, 5-8, 10, 11, 13-16, and 18-20 as a group.
(App. Br. 4-5). We select claim 1 as representative. The remaining claims
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because neither Istfan nor Yoshida discloses or suggests
“validating a security key submitted by an individual group member when
that individual group member attempts to submit an order” or “receiving and
validating an order from an individual group member when there is a
determination that the security key submitted by the individual group
member is valid,” as recited in the claim (App. Br. 4-5 and Reply Br. 2-3).
Istfan discloses a method for creating a group online food order from
a restaurant, and describes that invitations are sent to a group of individuals
inviting them to participate in the group order. Individual orders are
received from at least some of the individuals, and these individual orders
are combined into a group order, which is automatically communicated to
the restaurant (Istfan, Abstract).
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The Examiner acknowledges that Istfan does not explicitly teach
“validating a security key submitted by an individual group member when
that individual group member attempts to submit an order” or “receiving and
validating an order from an individual group member when there is a
determination that the security key submitted by the individual group
member is valid,” as recited in claim 1. And the Examiner cites paragraphs
[0006], [0041], [0080], [0082], [0097], and [0107] of Yoshida as curing the
deficiencies of Istfan (Ans. 6-7).
We have reviewed the cited portions of Yoshida identified by the
Examiner, and we conclude that the Examiner’s findings are reasonable and
supported. In this regard, we note in particular that Yoshida discloses an
anonymous order system in paragraph [0041] including a store apparatus for
receiving anonymous order information, including an order ID and a group
signature from a purchaser apparatus. The store apparatus verifies the group
signature, and if the group signature is determined valid, the store apparatus
transmits an article corresponding to the anonymous order information and
order ID to the purchaser via a manager apparatus. Yoshida describes in
paragraph [0006] that only the members belonging to a group can use a
member signature key to generate a signature representing the group, i.e., the
group signature.
Appellant argues that Yoshida is distinguishable from the present
invention because
Yoshida describes an individual transaction and not a group
transaction as described in Applicant’s present invention. In
Applicant’s present invention, the final order to the merchant is
a group order comprised of individual orders and group orders.
An individual can submit an order similar to Yoshida, however,
Yoshida does not describe group orders, but just the use of a
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group identification to provide a more secure purchasing
transaction. In Applicant’s present invention, a received and
validated order is stored and the order is filled by the merchant
after the completion and compilation of all of the individual
orders.

(App. Br. 5). But that argument, like Appellant’s further argument
with respect to Istfan (i.e. that Istfan fails to disclose that multiple
individual orders are received and stored at the merchant location; that
the order is continually updated with additional orders until a
designated cutoff time; and that after the cutoff time, the group order
comprising the multiple individual orders is filled by the merchant
(App. Br. 4-5)), is not persuasive because it is not commensurate with
the scope of the claims. None of the features that Appellant contends
distinguishes the claimed invention from the cited references is recited
in the rejected claims.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejections of claims 2, 3, 5-8, 10, 11, 13-16, and 18-20, which stand or fall
with claim 1.
Claims 9 and 17
Appellant argues claims 9 and 17 together (App. Br. 5-6). We select
claim 9 as representative. Claim 17 stands or falls with claim 9. 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 9 ultimately depends from claim 1 and recites that “order
validating step further comprises the step of tracking any order resubmission
activity and terminating an order attempt of an individual group member
when the individual group member submits a predetermined number of
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consecutive invalid orders.” Appellant argues that the Examiner erred in
rejecting claim 9 under 35 U.S.C. § 103(a) because none of Istfan, Yoshida,
or Kou discloses or suggests this feature (App. Br. 5-6 and Reply Br. 3-4).
The Examiner maintains that the rejection is proper, and cites
paragraph [0029] of Istfan as disclosing the step of tracking order
resubmission activity. Istfan describes in paragraph [0029] that an order
manager may enforce spending limits for individual orders at the time the
orders are placed, and may send a notification to an individual that a
proposed order exceeds the spending limits, i.e., that the order is invalid, and
prompt the individual to select another menu item. The Examiner
acknowledges that Istfan does not explicitly teach terminating an order
attempt of an individual group member when the individual group member
submits a predetermined number of consecutive invalid orders. However,
the Examiner notes that “Kou teaches a secure session management and
authentication for web sites, including the technique of terminating a session
(i.e., order attempt) after a certain number of invalid attempts (i.e., invalid
order attempts)” (Ans. 16-17).
We agree with the Examiner that modifying Istfan to terminate an
order attempt if the individual group member submits a predetermined
number of consecutive invalid orders, as taught by Kou, is nothing more
than a combination of prior art elements according to their established
functions, and yields a predictable result. Therefore, it would have been
obvious at the time of Appellant’s invention. See KSR Int’l Co. v. Teleflex
Inc., 550 U. S. 398, 416(2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results”).
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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 9 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claim 17, which stands or falls with claim 9.
Claims 4 and 12
Claims 4 and 12 depend from claims 1 and 10, respectively.
Appellant asserts that claims 4 and 12 are allowable with reference to
Appellant’s arguments with respect to claims 1 and 10. We found
Appellant’s arguments unpersuasive with respect to claims 1 and 10, and we
find them equally unpersuasive with respect to claims 4 and 12.
Therefore, we will affirm the Examiner’s rejection of claims 4 and 12
under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claim 19 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (2011).

AFFIRMED

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