Ex Parte Wu

Board of Patent Appeals and Interferences

Jun 20, 2012

10996516 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GUANGDIAN GORDON WU
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Appeal 2010-002366
Application 10/996,516
Technology Center 2100
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Before DENISE M. POTHIER, ERIC B. CHEN,
and STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002366
Application 10/996,516

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Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejections of claims 1-9, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates generally to a method and apparatus
whereby an individual user of a computer network can execute a financial
transaction with an Internet business while maintaining the user’s privacy.
See generally Spec. ¶ 0012; Fig. 1.
Claim 1 is representative with some key disputed limitations
emphasized:
1. A method of matching postings on a computer system that
includes a personal base process having a personal base instance and a
personal base server, said method comprising the steps of:
submitting a request post onto the personal base instance on
said computer system;
broadcasting the request post to at least one third party;
receiving at least one supply post from said computer system,
wherein the supply post is in response to the request post;1
comparing said request post to said at least one supply post,
wherein the comparing step is performed by the personal base server;2
and

1 Throughout this opinion, we refer to (1) the Final Rejection mailed May 7,
2008; (2) the Appeal Brief filed April 14, 2009; (3) the Examiner’s Answer
mailed July 24, 2009; and (4) the Reply Brief filed September 24, 2009.
2 We do not consider Appellant’s argument regarding the “comparing” step
because it was raised for the first time in the Reply Brief at p. 4. See Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”) See also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d
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determining if said step of comparing to provide a match result,
wherein said match result is presented to a user.

The Examiner relies on the following as evidence of unpatentability:
McGovern US 5,978,768 Nov. 2, 1999

THE REJECTION AND CONTENTIONS
Claims 1-9 stand rejected under 35 U.S.C. § 102(b) as anticipated by
McGovern. Ans. 3-6.
The Examiner finds that McGovern discloses every recited feature of
representative claim 1. Ans. 3-8.
Appellant’s Brief argues that McGovern does not disclose the
“submitting” step (App. Br. 5-6), “broadcasting” step (App. Br. 8-9) under a
second interpretation, and the recitation to the supply post being in response
to the request post (App. Br. 9). In the Reply Brief, Appellant argues for the
first time concerning the second interpretation that McGovern does not
disclose the “receiving” step, the “comparing” step, and the “determining”
step. Reply Br. 3-4.

ISSUE
Under § 102, has the Examiner erred by finding that McGovern
discloses:
(1) submitting a request post onto the personal base instance on said
computer system;
(2) broadcasting the request post to a third party;

978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its
opening brief . . . is waived.”) (citations and quotation marks omitted).
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(3) the supply post is in response to the request post?

ANALYSIS
Claims 1-7
We begin by discussing the key disputed limitations of claim 1.
1. Submitting a request post onto the personal base instance on
said computer system

Appellant first contends that McGovern does not disclose submitting a
request post onto a personal base instance. App. Br. 5; Reply Br. 2-3. We
disagree. McGovern job seeker’s computer 40 is a personal base instance
that is on a computer system. Col. 6, ll. 40-56; Col. 13, l. 27-32;3 Fig. 1.
Column 13, lines 28-31 states that the job seeker’s computer displays
commands on the display screen of the job seeker’s computer for the job
seeker to enter certain information. The information is necessarily entered
onto the job seeker’s computer before the information is transmitted to the
company’s web site, thereby “submitting a request post onto a personal base
instance.” Appellant’s reference to his Specification (Reply Br. 2) is not
given any weight because limitations from the specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Appellant also contends that the Examiner’s rejections contain two
inconsistent interpretations of McGovern. App. Br. 6-9. We disagree. The
Examiner cites, for example, col. 13, ll. 20-40 and col. 13, ll. 40-49, which
describe how a job seeker submits a request post. Ans. 3, 6-7. Appellant’s

3 In view of Fig. 1 and other references to a job seeker’s computer with
reference number 40, we conclude that McGovern’s reference to job
seeker’s computer 30 at col. 13, line 29 is a typographical error.
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“first interpretation” nevertheless posits an incorrect interpretation of the
rejection. Specifically, Appellant contends that the rejection can be
considered to mean that the third-party company provides the claimed
“personal base instance,” incorrectly implying that the Examiner interprets
McGovern as containing a “submitting” step that involves submitting a
request post onto the company’s site program and onto its remote site
computer. App. Br. 7. Because Appellant’s “first interpretation” of the
rejection is an incorrect interpretation of the Examiner’s position, we give no
further consideration to the additional arguments regarding the “submitting”
step or any other recited limitations based on the “first interpretation.” See
App. Br. 7-8.
2. Broadcasting the request post to at least one third party
Appellant contends that McGovern does not disclose this step because
“the job seeker’s criteria are never sent to the companies – the third parties.”
App. Br. 8; see also Reply Br. 3. We disagree. McGovern discloses that
after the job seeker inserts information onto the job seeker’s computer, the
computer hosting the web site will search the list of positions to determine if
a match exists. Col. 13, ll. 28-34. Thus, without first receiving the job
seeker’s information (e.g., a type of broadcasting a request post to the web
site or third party) from the job seeker’s computer, the hosting web site
cannot search the list of positions, including the job seeker’s information.

3. Receiving at least one supply post from said computer system,
wherein the supply post is in response to the request post
and
Determining if said step of comparing to provide a match result,
wherein said match result is presented to a user
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We do not consider Appellant’s arguments regarding these steps
based on the “first interpretation” (App. Br. 7-8) because, as we explained
above, the premise of the “first interpretation” is not consistent with the
Examiner’s position. Appellant’s “second interpretation” does not present
any arguments regarding the “determining” step nor does it present any
arguments regarding the “receiving” step, except for the supply post being in
response to the request post. See App. Br. 8-9. Appellant asserts that this
limitation is not disclosed in McGovern because McGovern fails to teach the
job seeker’s criteria being viewed by a company on a remote site. App. Br.
9. While this argument is not commensurate in scope with claim 1, we are
also not persuaded because, as explained above, McGovern teaches
broadcasting a request post to a third party, such as the computer hosting the
web site.
Also, Appellant presents an argument regarding a “providing” step
(App. Br. 8) even though claim 1 does not recite a “providing” step.
Lastly, because Appellant has not presented an argument in the
Appeal Brief regarding the “receiving” (related to the second interpretation)
or “comparing” steps, we do not consider any new argument. See Reply B.
3-4. That is, some arguments are being presented for the first time in the
Reply Brief. See supra note 2.
We are therefore, not persuaded that the Examiner erred in rejecting
(1) representative claim 1; and (2) claims 2-7 not separately argued with
particularity.

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Claims 8 and 9
Claim 8 is representative of apparatus claims 8 and 9, with key
disputed limitations emphasized:
8. A computer program, stored in a tangible medium, for matching
postings on a computer system, the computer system including a
personal base process on a computer network, the personal base
process having a personal base instance and a personal base server,
the program comprising executable instructions that cause a computer
to:
submit a request post to the personal base instance of the computer
system,
receive at least one supply post from the computer system, wherein
the supply post is in response to the request post;
compare the request post to the at least one supply post, wherein
the comparing step is performed by the personal base server, and
determine if the step of comparing provides a match result,
wherein the match result is presented to a user.

Because the “submit” instruction is commensurate with the
“submitting” step in claim 1, we incorporate by reference our discussion of
the “submitting” step in claim 1 and conclude that McGovern discloses it.
Appellant contends that McGovern does not disclose the “receive”
instruction. The Examiner finds that column 4, lines 25-30 discloses this
instruction. Ans. 5. We agree. Specifically, the cited portion of McGovern
states when the remote computer finds that its position file matches
information from the job seeker, the remote computer informs the job
seeker’s computer by an electronic message that a match was found. We
therefore find that when the job seeker’s computer receives the electronic
message, it “receive[s] at least one supply post from the computer system,
wherein the supply post is in response to the request post.”
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We are therefore not persuaded that the Examiner erred in rejecting
claim 8 and claim 9 having commensurate limitations for similar reasons.

DECISION
The Examiner’s decision rejecting claims 1-9 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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