Ex Parte Erisman

Patent Trials and Appeals BoardAug 20, 2014

11776404 - (D) (P.T.A.B. Aug. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte TERRY ERISMAN ___________ Appeal 2012-000070 Application 11/776,404 Technology Center 3600 ___________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MEREDITH C. PETRAVICK, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-000070 Application 11/776,404 2 STATEMENT OF THE CASE1 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed March 21, 2011) and Reply Brief (“Reply Br.,” filed July 11, 2011), and the Examiner’s Answer (“Ans.,” mailed June 10, 2011). Terry Erisman (Appellant) seeks review under 35 U.S.C. § 134 of a non- final rejection of claims 88 - 93 and 103 -114, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of performing automated auctions by bidding on items that are somewhat mutually exclusive, and/or performing those types of auctions which are resolved on a collective basis with reference to more than one demand constraint provided in a bid (Specification 1:6-9). An understanding of the invention can be derived from a reading of exemplary claim 88, which is reproduced below [bracketed matter and some paragraphing added]. 88. A web based auction system interface configured for performing I/O operations through a browser between a bidder and an auction system operating on a server computing system, said web based auction system interface comprising: Appeal 2012-000070 Application 11/776,404 3 [1] an auction query interface controlled by the server computing system that is adapted for user viewing of auction items for an auction conducted by the auction system and receiving user queries through the browser concerning said auction items, and further for retrieving one or more of said auction items in response to such user queries; and [2] an auction bid entry interface controlled by the server computing system that is adapted for receiving user bids for said auction items, said auction bid entry interface including both a bid price entry field and a bid ranking field for a first auction item that receives a user bid; Appeal 2012-000070 Application 11/776,404 4 [3] wherein said bid ranking field represents a desired order in which said bid for said first auction item is to be resolved by the auction system compared to any other bids made by such bidder for other auction items. The Examiner relies upon the following prior art: Fisher US 5,835,896 Nov. 10, 1998 Brett US 6,023,685 Feb. 8, 2000 Lange US 6,321,212 B1 Nov. 20, 2001 Wellman US 6,952,682 B1 Oct. 4, 2005 Sako US 7,181,405 B1 Feb. 20, 2007 Porat US 7,330,826 B1 Feb. 12, 2008 John M. Doyle, NYSE seeks OK for after-hours trading, Chicago Sun- Times, May 20, 1991. (Hereinafter Doyle). Henry Copeland, Telekom Group in $875 Million Deal in Hungary, The New York Times, Decemebr 20, 1993. (Hereinafter Copeland). Beverly Hills Country Club and MindSpring Announce an Agreement to Launch internet Web site for Charity Actions, PR Newswire, June 23, 1998. (Hereinafter Beverly Hills Country Club). Claims 88-90, 92, 93, 107, 112, and 114 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher and Wellman. Claim 91 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Doyle. Appeal 2012-000070 Application 11/776,404 5 Claims 103 and 105 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Lange. Claims 104, 106, and 109 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Porat. Claim 108 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Copeland. Claim 110 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Brett. Claim 111 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Beverly Hills Country Club. Claim 113 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Sako. ISSUES The issues of obviousness turn primarily on the patentable weight afforded and breadth of the limitation “said bid ranking field represents a desired order in which said bid for said first auction item is to be resolved by the auction system compared to any other bids made by such bidder for other auction items.” Appeal 2012-000070 Application 11/776,404 6 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 Fisher 01. Fisher is directed to conducting an interactive auction over an electronic network. Fisher 1:7-9. 02. Fisher provides an electronic auction method and system for presenting merchandise for sale at auction to customers over an electronic network. Potential customers are presented with a series of descriptive merchandise catalog pages through which they may navigate to find items (lots) of interest. Upon finding a lot of interest, customers may click a button on screen to display a form for placing a bid on the lot. After submitting this bid, the electronic auction system records the bid and updates the lot's merchandise catalog page to show the current high bid or bids and to whom such bids are attributable. When the auction is closed, after a period of no bidding activity, at a predetermined time, or when a desired sales volume is reached, the electronic auction system notifies the winning and losing bidders by electronic mail and posts a list of the winning bidders on the closed lot's merchandise catalog page. Fisher 7:8-23. 03. Fisher runs on a central server host computer, attached to a wide area network accessible by many potential customers Appeal 2012-000070 Application 11/776,404 7 through remote terminals. Potential customers are presented with merchandise catalog pages, such as the one shown in FIG. 2, generated by merchandise catalog page generator. Each merchandise catalog page includes several action buttons that allow the customer to move from catalog page to catalog page and to place bids. Fisher 7:24-40. Wellman 04. Wellman is directed to matching multi-attribute auction bids to maximize an overall surplus. Wellman 1:7-10. 05. In some cases, a buyer and/or a seller may wish to negotiate non-price attributes of the good or service, particularly in business-to-business transactions. The price of the good or service may be dependent at least in part upon these non-price attributes. Such multi-attribute negotiation or auction may be particularly useful and beneficial in, for example, procurement transactions. Further, such multi-attribute or multidimensional negotiation or auction may be among multiple sellers and multiple buyers. However, conventional online auction mechanisms do not provide for collection of multi-attribute bids from buyers and sellers nor do they provide for optimal clearing of such multi- attribute buyer and seller bids. What is needed is a system and method for allowing systematic and simultaneous negotiation in multiple dimensions. It is desirable to provide a system and method for collecting multi-attribute bids from buyers and sellers. Ideally, each attribute of the bid collected from buyers and sellers Appeal 2012-000070 Application 11/776,404 8 is specified in relation to a uniform quantification unit. It is further desirable to provide a system and method for automated clearing of the multi-attribute buyer and seller bids to result in an optimal matching of buyer and seller bids. Wellman 1:27-49. 06. Wellman’s method of matching at least one multi-attribute bid from one or more buyers and at least one multi-attribute bid from one or more sellers generally comprises selecting a pair of bids having a highest surplus between each buyer and each seller, generating a weighted bipartite graph comprising buyer nodes and seller nodes and an edge between each buyer node and each seller node, each edge having the highest surplus of the pair of bids between the buyer and seller as a weight, and determining maximal weighted matching bids from the highest surplus pairs of bids using the weighted bipartite graph. Wellman 1:65 – 2:8. 07. A best match or a best matching pair of offers between each buyer and each seller is determined in step 506. In the example shown in FIG. 1, a best match or the best matching pair of offers is determined between each of Buyers A, B, C, and D and each of Sellers A, B, and C such that a total of 12 best matches are determined between the buyers and sellers. Wellman 7:29-35. 08. The best matching pair or bids between a buyer and a seller is defined as the pair of bids having the greatest surplus among all matching or compatible bids between the buyer and seller. Matching or compatible bids have attribute values that are better than what the buyer specified or not as good as what the seller Appeal 2012-000070 Application 11/776,404 9 specified, if the market system has such automatic attribute value expansions feature for a given attribute. For example, a pair of buyer and seller bids having matching or compatible attribute values must necessarily have a seller price that is less than or equal to the buyer price. The buyer price is in essence what the buyer has specified as the maximum price the buyer is willing to pay for a good or service having the associated set of attribute values. Similarly, the seller price is in essence what the seller has specified as the minimum price the seller is willing to accept for a good or service having the associated set of attribute values. Wellman 7:36-51. 09. After the best match between each buyer and each seller is determined in step 506, a weighted bipartite graph is generated in 508 using the results of step 506. The weighted bipartite graph is in turn used to determine a maximal weighted matching in step 510. Finally, the optimal matches are output in step 512. Thus, in a periodic clearing mechanism, the market system outputs one set of results in step 512 for each periodic clearing. Wellman 7:52- 60. 10. Determination of the maximal weighted matching of a weighted bipartite graph, also known as the assignment problem, is well known to those of ordinary skill in the art and described, in for example, Ahuja, Ravindra K., Thomas L. Magnanti, and James B. Orlin, "Network Flows: Theory, Algorithms, and Applications," 1993. Wellman 10:40-46. Appeal 2012-000070 Application 11/776,404 10 Lange 11. Lange is directed to methods and system for trading financial products having demand-based adjustable returns, and systems and methods for determining those returns. Lange 1:20-24. 12. In such hypothetical financial products, a set of states is typically chosen so that the states are mutually exclusive and the set collectively covers or exhausts all possible outcomes for the event. This arrangement entails that, by design, exactly one state always occurs based on the event outcome. Lange 2:1-6. 13. Lange describes a scenario in which the states are defined as discrete ranges of possible outcomes so that the entire distribution of states covers all the possible outcomes—that is, the states are collectively exhaustive. Lange 36:15-37; 58:47-66. ANALYSIS Initially, we find that although all claims recite some data entry field for entering a bid ranking, none of the claims, aside from claims 107-114 recite any further operational or functional use of such field. Even claims 107-114 recite no more than considering the field. Thus aside from claims 107-114, the remaining claims recite only the mental interpretation of the contents of the field. That is, the claims do no more than inform one of the aspired use to which the contents might be put outside the scope of the claim. In a non-precedential decision, our reviewing court reminded us of the applicability of the precedential In re Gulack, 703 F.2d 1381 (Fed. Cir. Appeal 2012-000070 Application 11/776,404 11 1983), In re Bernhart, 417 F.2d 1395 (CCPA 1969) and In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) decisions. We have held that patent applicants cannot rely on printed matter to distinguish a claim unless “there exists [a] new and unobvious functional relationship between the printed matter and the substrate.” In re Gulack, 703 F.2d 1381, 1386 (Fed.Cir.1983). . . . . . . . . . . [T]he Board did not create a new “mental distinctions” rule in denying patentable weight . . . . On the contrary, the Board simply expressed the above-described functional relationship standard in an alternative formulation— consistent with our precedents—when it concluded that any given position label’s function . . . is a distinction “discernable only to the human mind.” . . . ; see In re Lowry, 32 F.3d 1579, 1583 (Fed.Cir.1994) (describing printed matter as “useful and intelligible only to the human mind”) (quoting In re Bernhart, . . . 417 F.2d 1395, 1399 (CCPA 1969)). In re Jie Xiao, 462 Fed. Appx. 947, 950-52 (Fed. Cir. 2011) (Non- precedential). Thus non-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight. See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). “The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed Cir 2010). (The relevant inquiry here is whether the additional instructional limitation has a “new and unobvious functional relationship” with the method, that is, whether the limitation in no way depends on the method, and the method does not depend on the limitation). Appeal 2012-000070 Application 11/776,404 12 Here the operation of the recited web sites in claims 88-93 and 103-106 do not depend on the interpretation of the recited data entry field and the contents of the field do not depend on the recited operation of the web site. Were this limitation given patentable weight, nothing would prevent the indefinite patenting of the prior art by the simple inclusion of novel, yet functionally unrelated purposes the field might be put to. Thus, as to claims 88-93 and 103-106, no patentable weight is afforded the interpretation of the bid ranking field as a desired order. As to claims 107-114, it is sufficient that the art show some form of consideration of the field in determining which bids to evaluate, according to the limitation in independent claim 107. The Examiner found that Wellman described additional fields beyond a bid price in auction bid submission, and these fields were used in arriving at a weighting that was applied in a bid matching algorithm. Ans. 4-6 and 20- 21. Also see FF 04-10. Thus Wellman described entering at least a second field beyond the bid price field where the second field is used by Wellman’s algorithm in bid matching. We are not persuaded by the Appellant’s argument that Wellman’s data fields do not affect ranking. App. Br. 9-13. No patentable weight is afforded the mental interpretation of the field in question, as the field is not recited in any operation. But even were we to grant weight to this interpretation, Wellman’s field does influence the algorithmic bid selection which necessarily affects the manner in which bids are matched, and thus ranking. The limitation of “said bid ranking field represents a desired order in which said bid for said first auction item is to be resolved by the auction Appeal 2012-000070 Application 11/776,404 13 system compared to any other bids” does not narrow or otherwise specify the manner or degree of representation. We are not persuaded by the Appellant’s argument that there is no reason to combine the references. App. Br. 13. Wellman provides the reasoning that many auctions are for multi-attribute items. Fisher simply provides further implementation details. Separately argued claim 107 recites an auction status presentation interface controlled by the server computing system and adapted to monitor and present progress of auctions related to said one or more auction items, including at least a tentative unconditional winning bid for an auction item, and information identifying a number of conditional bids for said auction item Claim 107. This limitation does not use the so recited “tentative unconditional winning bid” other than to present it to the user. Thus, again this bid is non-functional and deserving of no patentable weight. We are accordingly not persuaded by the Appellant’s argument that the art does not describe this data element. Further, the Examiner found that the prior art teaches (Fisher) teaches that it is old and well known in the art for bids to be offered without condition and that the highest bid is accepted… As for the limitation "tentative" any bid submitted is inherently a tentative winning bid up until it is accepted or declined. Ans. 22. Thus, any auction system displays a tentative unconditional winning bid at some point. We are not persuaded by the Appellant’s argument that overly broad interpretation fails to consider the explanation of the term given the specification, which, as the Appellant pointed out refers to the auction system's determination during Appeal 2012-000070 Application 11/776,404 14 resolution of the auction (see FIG. 2, box 225) that a specific unconditional bid made by a user is designated (tentatively) as a winning bid, at least until such time as another bid supercedes (sic) it (see steps 250, 255 and 215). Reply Br. 5. No lexicographic definition of the term is in the Specification and we do not otherwise import the Specification into the claims. Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Separately argued claim 112 recites “wherein said site supports user bid entries that include user-specified time expiration limitations.” We are not persuaded by the Appellant’s argument that Wellman at col. 8, ll. 15 - 22 merely indicates that the auction process " ... may end when a certain time limit is reached." This teaching by itself is insufficient to clarify if it is indeed a user- specified time expiration limitation, or, instead, some system defined/specified parameter. App. Br. 15. The limitation does not narrow or specify the manner of support, or even the degree of such support. Wellman’s passage cited supra at least provides some degree of support, evidenced by the explicit recitation of a time limit. Separately argued claim 103 recites said auction bid entry interface allows a user to enter a plurality of mutually exclusive bids on a plurality of auction items to the Appeal 2012-000070 Application 11/776,404 15 computing system and the computing system is configured such that the user is guaranteed to win at most one of said plurality of auction items. Claim 103. We are not persuaded by the Appellant’s argument that there is no mention of" ... mutually exclusive bids" from a user, or any notion that the system is configured so that the user is "guaranteed to win at most" one item. Lange here discloses something quite different, namely, that certain investors (not bidders) can invest in different auction outcomes. Yet from the plain language of the reference once can determine that the investors are not participating in the auction itself, or presenting a plurality of bids to the computing system as set out in the above claims. Nor are they "guaranteed" to win at most one item; they are in fact investing in all of the outcomes App. Br. 15-16. The financial securities market is a known auction market. Characterizing transactions as investment does not negate the auction system operating. Further, any set of mutually exclusive events guarantees at most one of those occurs. CONCLUSIONS OF LAW The rejection of claims 88-90, 92, 93, 107, 112, and 114 under 35 U.S.C. § 103(a) as unpatentable over Fisher and Wellman is proper. The rejection of claim 91 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Doyle is proper. The rejection of claims 103 and 105 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Lange is proper. The rejection of claims 104, 106, and 109 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Porat is proper. Appeal 2012-000070 Application 11/776,404 16 The rejection of claim 108 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Copeland is proper. The rejection of claim 110 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Brett is proper. The rejection of claim 111 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Beverly Hills Country Club is proper. The rejection of claim 113 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Wellman, and Sako is proper. DECISION The rejection of claims 88-93 and 103-114 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED tkl