Ex Parte Johnson

Patent Trials and Appeals Board

Apr 28, 2016

11641262 - (D) (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/641,262 12/19/2006
132862 7590 05/02/2016
Schwegman Lundberg & Woessner, P.A. I PayPal
P.O. Box 2938
Minneapolis, MN 55402
Brian Johnson
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.
2043.361US 1 8585
EXAMINER
KANG, IRENE S
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
slw@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN JOHNSON
Appeal2013-008957
Application 11/641,262
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Brian Johnson (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1-30, 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 assigning a proprietary currency value
to goods to be bartered, the proprietary currency value linked to the current
pricing of the goods. Specification para. 1.
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed January 3, 2013) and Reply Brief ("Reply Br.," filed July 10,
2013), and the Examiner's Answer ("Ans.," mailed May 10, 2013), and
Final Action ("Final Act.," mailed May 23, 2012).
Appeal2013-008957
Application 11/641,262
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 barter system comprising:
[ 1] a processor;
[2] a first listing creation module
that is executable by the processor
to receive from a first user
an offered listing of goods to be bartered on a barter
system;
[3] a database
at an online marketplace
containing online marketplace data
relating to a current pricing of goods;
[ 4] a currency converter module
and
that is executable by the processor
to access the database at the online marketplace
and
to obtain the current pricing of the goods of the
offered listing to be bartered on the barter system
to assign a proprietary currency value to the goods on the
offered listing
based on the current pricing of the goods on the
online marketplace;
[5] a first listing management module
that is executable by the processor
to list the offered listing on the barter system to be
bartered,
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Application 11/641,262
the currency converter module
to further access the database at the online
marketplace periodically
and
to obtain an updated current pricing of the
goods on the offered listing that is listed on
the barter system to be bartered on the barter
system
to dynamically assign an updated proprietary
currency value
to the goods of the offered listing on the
barter system based on the current pricing of
the goods on the online marketplace.
The Examiner relies upon the following prior art:
Elias US 2001/0034694 Al
Chan US 2002/0073015 Al
Oct. 25, 2001
June 13, 2002
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Elias and Chan.
ISSUES
The issues of obviousness tum primarily on whether the art applied
describes periodically accessing the database at the online marketplace to
obtain an updated current pricing on the goods of the offered listing that is
listed on the barter system to be bartered on the barter system and assigning
an updated proprietary currency value to the goods of the offered listing on
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Appeal2013-008957
Application 11/641,262
the barter system based on the current pricing of the goods on the online
marketplace.
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
Elias
01. Elias is directed to computer based online commerce systems
and methods as applied to collectibles, used goods, or secondary
market goods ("collectibles") and to an online database service
("market site"), which provides a marketplace for completing
online transactions, said market site further providing
hierarchically catalogued descriptive information pertaining to the
associated collectibles, including information related to the market
conditions and sales trends of the collectibles, appraisal
information pertinent to the collectibles (including an up-to-date
"virtual" price guide), product information relating to the
collectibles, the means for signaling particular market events
associated with the collectibles, and lastly, the means for
identifying and managing collectibles inventory. Elias para. 3.
02. Elias describes an electronic appraisal warehouse associated
with the collectibles hierarchy and collectible item leaf nodes,
comprised of data related to a plurality of archived sales, barters,
and auctions. Elias para. 11.
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Application 11/641,262
03. Elias describes listings submitted by users being classified
according to the collectibles hierarchy or collectible item leaf
nodes, using interactive listing forms generated by the market site.
These listings have fields including pricing. Elias paras. 31-32.
04. Elias describes an electronic appraisal warehouse ( eAppraisal)
associated with each of the collectible item leaf nodes, comprised
of data related to a plurality of archived sales, barter and auctions
data, including associated graphical and media representations,
selling price (unless a barter), condition as described, etc.,
organized according to the collectible hierarchies and collectible
item leaf nodes, and sortable by selectable data attributes, such as
sales price, condition, color, etc. When a quantitatively significant
number of eAppraisal entries have been gathered with respect to
the collectible item leaf nodes, including price, grade, model
Chan
variations; etc.; then said eAppraisal information is
programmatically consolidated and made available to the user in
the form of a "virtual" collectibles price guide. Prior to that time,
price information as made available by publishing pricing
information derived by the cGuides. Over time, redundant,
outdated, cumulative eAppraisal information will be filtered and
removed for storage in an electronic data archive for historical
information access. Elias para. 33.
05. Chan is directed to trading redeemable assets and to converting
and realizing the intrinsic value of assets such as timeshare
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Application 11/641,262
intervals, frequent mileage points, credit card loyalty points, hotel
rewards programs, and other time sensitive yet valuable assets.
Chan para. 1.
06. Chan describes deriving an adjusted asset points-based or token
system for facilitating the conversion of any redeemable assets in
the present invention. Depending on the nature of the redeemable
asset, any such asset can be converted, e.g., credit card reward
points, hotel rewards programs and frequent flyer mileage or a
periodic usage, e.g., timeshare intervals. Furthermore, a periodic
usage can be current or future. The points-based or token system
comprises six components: an asset base point module, a member
feedback module, an asset co-efficient module, an adjusted asset
token module, a plurality of seasons factor modules; and a
weekday and weekend token classification. Each asset, such as
timeshare interval; frequent mileage; credit card loyalty points;
hotel rewards programs or any redemption program units, can be
evaluated according to a points-based or token system in order to
generate a normalized aggregate total of an asset owner's account
after he or she registered with the asset converter. Chan para. 32.
ANALYSIS
We are persuaded by Appellant's argument that the applied art fails to
describe
periodically accessing the database at the online marketplace to
obtain an updated current pricing on the goods of the offered
listing that is listed on the barter system to be bartered on the
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Application 11/641,262
barter system and assigning an updated proprietary currency
value to the goods of the offered listing on the barter system
based on the current pricing of the goods on the online
marketplace.
App. Br. 15-16 (emphasis omitted). The problem for the Examiner is that
this limitation, found in all independent claims, both retrieves updated
pricing information and assigns a price. As Appellant contends, Elias only
assigns a price when the price is fixed. Generally, prices are not fixed but
instead discovered through an online marketplace in Elias. To assist in this
price discovery, Elias offers an appraisal module that periodically accesses a
database at its online marketplace to obtain updated current pricing data, but
Elias never says this pricing data is used to assign a price. Elias instead
makes this data available to buyers and sellers for evaluation in bids and
offers. The Examiner does not rely on Chan for this. Ans. 9.
All independent claims have similar limitations.
CONCLUSIONS OF LAW
The rejection of claims 1-30 under 35 U.S.C. § 103(a) as unpatentable
over Elias and Chan is improper. 2
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. § 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.
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Application 11/641,262
DECISION
The rejection of claims 1-30 is reversed.
REVERSED
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