Ex Parte Krause et alDownload PDFPatent Trial and Appeal BoardSep 17, 201210092498 (P.T.A.B. Sep. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/092,498 03/08/2002 Thomas W. Krause 2002-0308-NCPY 1270 35197 7590 09/18/2012 PHILIP R KRAUSE 6911 Carlynn Ct Bethesda, MD 20817 EXAMINER CHEUNG, MARY DA ZHI WANG ART UNIT PAPER NUMBER 3667 MAIL DATE DELIVERY MODE 09/18/2012 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 THOMAS W. KRAUSE and PHILIP R. KRAUSE ___________ Appeal 2010-012399 Application 10/092,498 Technology Center 3600 ____________ Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012399 Application 10/092,498 2 STATEMENT OF THE CASE Thomas W. Krause et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for using a computer system to hold a cooperative auction to effectuate an action related to a cause comprising, in sequence: a) identifying a cause; b) identifying an entity capable of performing an action related to the cause; c) setting parameters for the cooperative auction, said parameters comprising identifying a price for the action and specifying, via a computer system, a deadline for receiving pledges earmarked for the action; 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Mar. 29, 2009), the Reply Brief (“Reply Br., filed Aug. 24, 2009), and Second Reply Brief (“Reply Br.,” filed Sep. 7, 2010), and the Examiner’s Answer (“Ans.,” mailed Jul. 7, 2010). Appeal 2010-012399 Application 10/092,498 3 d) receiving, via a computer system, before the deadline, a plurality of pledges of value units earmarked for the action; and e) providing consideration to the entity in exchange for performance of the action, where the consideration comprises value units pledged in step d. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Bounty Server, The Proposal http://web.archive.org/web/20001 017123028/www.bounty.org/proposals/proposaI1.html.Archived copies from October 17, 2000 of the website www.bounty.org/QroQosals/QroQosal1.html. [Hereinafter, Bounty.] The Examiner took official notice that: “it was old and well-known in the art at the time the invention was made to include a time limitation, such as a deadline, within an agreement for the purposes of ensuring that performance under the agreement is accomplished in timely manner consistent with the goals of the parties to the agreement” (Ans. 10); “it was old and well-known in the art at the time the invention was made for a bidder to include an expiration time on a bid, for the purpose of providing predictability for the bidder regarding outstanding potential financial obligations” (Id.); “it was old and well-known in the art at the time the invention was made to utilize only valid bids in an auction or similar system, for the purpose of ensuring the integrity of the auction” (Ans. 11); and Appeal 2010-012399 Application 10/092,498 4 “it was old and well-known in the art at the time the invention was made that new technologies, in particular software, may be covered by a wide-range of intellectual properties, including copyrights and patents, for the purpose of promoting the useful arts and sciences by providing specified rights and protections to the innovators (Ans. 11). [Hereinafter, Official Notice.] The following rejections are before us for review: 1. Claim 18 is rejected under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. 2. Claims 1-2, 6, 8-14, and 17-20 are rejected under 35 U.S.C. §102(a) as being anticipated by Bounty. 3. Claims 3-5, 7, and 15-16 are rejected under 35 U.S.C. §103(a) as being unpatentable over Bounty and Official Notice. ISSUE The first issue is whether claim 18 is indefinite under 35 U.S.C. § 112, second paragraph. Specifically, the issue is whether the Specification lacks a corresponding description for the claimed means for specifying a cause and the means for specifying an entity capable of performing an action related to the cause. The second issue is whether the Examiner has established a prima facie showing of anticipation in rejecting claims 1-2, 6, 8-14, and 17-20 under 35 U.S.C. § 102 by Bounty. The rejection of claims 3-5, 7, and 15-16 under 35 U.S.C. § 103(a) also turns on this issue. Appeal 2010-012399 Application 10/092,498 5 FINDINGS OF FACT We find that the findings of fact (FF), which appear in the Analysis below, are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). ANALYSIS The rejection of claim 18 under 35 U.S.C. § 112, second paragraph, as being indefinite We are not persuaded by the Appellants’ argument on pages 3-4 of the Second Reply Brief that the Examiner erred in rejecting claim 18 as indefinite under 35 U.S.C. § 112, second paragraph (see Ans. 3-5). The Appellants argue that the corresponding structure in the Specification for the recited means for specifying a cause and the recited means for specifying an entity recited in claim 18 is “a web page . . . which presents the specified information either in text or graphically.” Second Reply Br. 3. The Appellants point to paragraphs [0084]-[0099] and Fig. 3-4 of the Specification for support. Id. We have reviewed the cited paragraphs and Figures entirely, and while a website is generally disclosed, we see nothing that relates to the cited function of “specifying a cause” and “specifying an entity” specifically. Accordingly, we are not persuaded by the Appellants’ argument that the Examiner erred and the rejection of claims 182 under 35 U.S.C. §112, second paragraph is affirmed. 2 Claims 19 and 20 are dependent on claim 18. However, the Examiner did Appeal 2010-012399 Application 10/092,498 6 The rejection of claims 1-2, 6, 8-14, and 17-20 under §103(a) as being anticipated by Bounty We are persuaded by the Appellants’ argument, regarding the Examiner improperly equating the same entity recited in steps b and e of claim 1, to multiple different entities in Bounty (Appeal Brief 15-16, Reply Brief 2-4, and Second Reply Brief 5-6), that the Examiner erred in rejecting claim 1 under as being anticipated by Bounty. To meet the step b of claim 1, the Examiner equates the claimed entity to the “people who can add to the bounty.” Ans. 6 (“The Examiner notes that ‘entity’ corresponds to the people who can add to the bounty.”). See also Ans. 12. However, to meet step e of claim 1, the Examiner seemingly equates this same claimed entity to the technology developer, because the Examiner cites: “the second paragraph under the heading ‘The proposal:’, and the third and fourth paragraphs under the heading ‘To get more specific’” as disclosing this limitation. Ans. 7. See also Ans. 13-14. These cited paragraphs describe paying the bounty (i.e. the accumulated bids) to a developer and not the people who can add to the bounty. Further, we note that in the rejection of the dependent claims, the Examiner also seems to equate the same claimed entity to the developer and not the people who can add to the bounty. For example, see Ans. 16-17. not includes these claims in their rejection of claims under 35 U.S.C. § 112, second paragraph. Upon any further prosecution, the Examiner may want to consider whether claims 19 and 20 are indefinite. Appeal 2010-012399 Application 10/092,498 7 Therefore, we find that the Examiner failed to establish a prima facie showing of anticipation. We note that independent claims 17 and 18 were likewise rejected. See Ans. 6. Accordingly, the rejection of claims 1, 17, and 18, and claims 2, 6, 8-14, and 19-20, dependent thereon, under 35 U.S.C. §102(a) as being anticipated by Bounty is reversed. The rejection of claims 3-5, 7, and 15-16 under §103(a) as being unpatentable over Bounty and Official Notice This rejection is directed to claims dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejections of claims 3-5, 7, and 15-16 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). DECISION The decision of the Examiner to reject claims 1-17 and 19-20 is reversed and to reject claim 18 under 35 U.S.C. § 112, second paragraph 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)(iv). Appeal 2010-012399 Application 10/092,498 8 AFFIRMED-IN-PART MP Copy with citationCopy as parenthetical citation