Ex Parte Chiovari et al

Patent Trial and Appeal BoardApr 19, 2016

11332935 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111332,935 101373 7590 Sutherland I CEI 999 Peachtree Street Suite 2300 Atlanta, GA 30309 FILING DATE FIRST NAMED INVENTOR 01117/2006 Michael Chiovari 04/21/2016 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 26454-0021 4925 EXAMINER TROTTER, SCOTTS ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 04/2112016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patent. docket@sutherland.com pair_sutherland@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL CHIOV ARI and DALE POLLAK Appeal2013---005539 Application 11/332,935 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and TARA L. HUTCHINGS, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Michael Chiovari and Dale Pollak (Appellants) seek review under 35 U.S.C. Â§ 134 of a final rejection of claims 1, 3, 4, 6, 8-11, 15-18, 31, 34, and 35, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed September 11, 2012) and Reply Brief ("Reply Br.," filed March 8, 2013), and the Examiner's Answer ("Ans.," mailed January 9, 2013), and Final Action ("Final Act.," mailed March 13, 2012). Appeal2013-005539 Application 11/332,935 The Appellants invented a way of managing a business. Specification 1:7-8. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method of evaluating an acquisition of at least one used vehicle for subsequent sale by a dealer, comprising: [ 1] determining, by an application server system comprising at least one computing device, an initial water value of an inventory of the dealer by calculating a difference between a cost of each vehicle in the inventory and a wholesale value of each vehicle in the inventory; [2] determining, by the application server system, an initial average gross profit of the inventory of the dealer by calculating an average difference between a sales amount of each vehicle in the inventory and the cost of each vehicle of the inventory sold over a period of time; [3] calculating, by the application server system, an initial metric of the inventory, said initial metric of the inventory based at least in part on a relationship between said initial average gross profit of the inventory and said initial water value of the inventory 2 Appeal2013-005539 Application 11/332,935 by dividing said initial average gross profit of the inventory by said initial water value of the inventory; [ 4] receiving, by the application server system, an appraisal value for the acquisition of said at least one used vehicle; [5] determining, by the application server system, a revised water value of a revised inventory of the dealer, comprising the inventory and the at least one used vehicle, by calculating a difference between a cost of each vehicle in the revised inventory and a wholesale value of each vehicle in the revised inventory, the calculation including information from the at least one used vehicle; [ 6] calculating, by the application server system, a proposed metric by dividing said average gross profit of the inventory by said revised water value of the revised inventory; [7] comparing, by the application server system, and said initial metric to said proposed metric to evaluate the acquisition of said at least one used vehicle; [8] providing, by the application server system to the dealer, information associated with the comparing. 3 Appeal2013-005539 Application 11/332,935 The Examiner relies upon the following prior art: Ellenson US 2003/0200151 Al Sloan US 2003/0144936 Al Jarrett US 2003/0120564 Al Oct. 23, 2003 July 31, 2003 June 26, 2003 Claims 1, 3, 4, 6, 8-11, 15-18, 31, 34, and 35 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Ellenson, Jarrett, Sloan, and Official Notice. ISSUES The issues of obviousness tum primarily on whether the references applied describe the financial calculations recited in the claims. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Ellens on 01. Ellenson is directed to facilitating the sale of vehicles, and is more particularly concerned with pricing used vehicles for appraisal and sale. Ellenson para. 1. Sloan 02. Sloan is directed to computer implemented financial modeling systems. Sloan para. 02. 4 Appeal2013-005539 Application 11/332,935 Jarrett 03.Jarrett is directed to retail product management software for automobile dealerships. Jarrett para. 1. ANALYSIS We are persuaded by the Appellants' argument that the references fail to describe the specific calculations recited in the claims, particularly claim 1. Initially, we note that the Official Notice taken by the Examiner is under contention. As to claim 1, the Examiner took notice of three facts. ( 1) The definition of profit is the difference between the sales price of goods and all the costs of producing and selling the goods. Final Act. 4. (2) Whether a transaction is considered profitable is one of the basic tests for agreeing to a transaction or not. Id. (3) Profit margin may be expressed as a percentage while more commonly done as a percentage of sales. Id. at 5. We agree that each of these facts is notoriously well known to the general population, as well as those of ordinary skill in the financial analysis arts, and adopt them as facts. That said, the Examiner did not show how to get from these facts to the specific claim limitations. Instead, the Examiner found that analysis of sales transactions is well known, which is beyond dispute. As the Appellants contend, claim 1 is far more detailed than this. App. Br. 6-11. In response, the Examiner states that renaming basic concepts does not distinguish limitations. Ans. 17-18. We agree. The label of a result as a "water value" in claim 1 does not confer patentable weight per se. But the Examiner has 5 Appeal2013-005539 Application 11/332,935 not shown that the claim limitations simply rename known profit calculations. As Appellants contend, claim 1 computes metrics based on these profit measures. Id. The Examiner has not shown these metrics to be described by prior art or why they would be otherwise predictable. Each of the independent claims has calculations similar to those in claim 1. CONCLUSIONS OF LAW The rejection of claims 1, 3, 4, 6, 8-11, 15-18, 31, 34, and 35 under 35 U.S.C. Â§ 103(a) as unpatentable over Ellenson, Jarrett, Sloan, and Official Notice is improper. 2 DECISION The rejection of claims 1, 3, 4, 6, 8-11, 15-18, 31, 34, and 35 is reversed. REVERSED 2 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. Â§ 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the Examining Corps, June 25, 2014 and the July 2015 updates. 6