Ex Parte Toompere

Patent Trials and Appeals BoardApr 11, 2016

12704016 - (D) (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121704,016 02/11/2010 Ragnar Toompere 20306 7590 04/12/2016 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32NDFLOOR CHICAGO, IL 60606 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. 10-007 5305 EXAMINER LEIVA, FRANK M ART UNIT PAPER NUMBER 3717 MAILDATE DELIVERY MODE 04/12/2016 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 RAGNAR TOOMPERE Appeal2014-002590 Application 12/704,016 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and FREDERICK C. LANEY, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134 of the Final Rejection of claims 1, 3-9, 11-21, 23-33, 35-39, 41--47, 49-59, 61-71, and 73-76. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE, and enter a NEW GROUND OF REJECTION pursuant to our authority under 3 7 C.F .R. Â§ 41. 50(b ). Appeal2014-002590 Application 12/704,016 THE INVENTION Appellant's invention relates to on-line gaming for games such as poker. Spec. 4. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method, performed by a gaming server, wherein an account is associated with a first alias, the method comprising: the gaming server allowing a client entity using the first alias to access the gaming server; the gaming server receiving a first request from the client entity to join a first instance of a game hosted by the gaming server and to use a second alias during the first instance of the game; in response to receiving the first request, the gaming server including the client entity in the first instance of the game; during play of the first instance of the game, the gaming server using the first alias to represent the account to the client entity, while using the second alias to represent the account to other client entities involved in the first instance of the game; the gaming server recording a first set of events occurring during the first instance of the game, wherein the recorded events in the first set represent the account with both the first alias and the second alias; the gaming server determining that the client entity has won the first instance of the game; and after completion of the first instance of the game, the gaming server providing a first version of the first set of events to one of the other client entities, wherein the first version of the first set of events uses the second alias to represent the account. 2 Appeal2014-002590 Application 12/704,016 THE REJECTION The Examiner relies upon the following as evidence in support of the rejections: Kelly US 2009/0104960 Al Apr. 23, 2009 Ask MetaFilter, eBay usernames with ***between to characters ... fraud? snipes? what is this? (http://ask.metafilter.com/105209/ebay-usemames-with- between-to-charactersfraud-snipes-what-is-this) (last accessed Mar. 6, 2012) ("eBay Usemames"). eBay, Bid History (http:// offer. ebay. com/ws/ eBayISAPI. dll ?View Bids&_trksid= p4340.12565&rt=nc&item=150771571637) (last accessed Mar. 4, 2012) ("eBay Bid History"). eBay, eBay Auction ended (http://www.ebay.co.uk/itm/Marzocco-Linea-2-Group- Espresso-CoffeeMachine-/321007024964) (posted Oct. 28, 2012) (last accessed Mar. 27, 2013) and eBay, eBay Auction ended bid history (http://offer.ebay.co.uk/ws/eBayISAPI.dll?ViewBi ds&_trksid=p2047675.12565&rt=nc&item=321007024964) (posted Oct. 28, 2012) (last accessed Mar. 27, 2013) (collectively "eBay Auction ended"). Claims 1, 3-9, 11-21, 23-33, 35-39, 41--47, 49-59, 61-71, and 73-76 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kelly, eBay U semames, eBay Bid History, and eBay Auction Ended (the eBay Usemames, eBay Bid History, and eBay Auction Ended documents shall hereinafter be collectively referred to as the "eBay Documents"). 1 1 The heading of the rejection indicates that claims 1-76 are rejected under this ground. Final Act. 3; Ans. 2. However, claims 2 and 40 have been cancelled (id. at 2), and the Examiner indicated that claims 10, 22, 34, 48, 60, and 72 stand objected to, and would be allowable if rewritten to include 3 Appeal2014-002590 Application 12/704,016 OPil'.rION Unpatentability of Claim 1 The Examiner finds that Kelly discloses all of the elements of claim 1 except for using different alias identifiers when reporting results to the client entity. Final Action 3--4. The Examiner relies on the eBay Documents as disclosing the claim elements missing from Kelly. Id. at 4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Kelly with the teachings of the eBay Documents to achieve the claimed invention. Id. According to the Examiner, a person of ordinary skill in the art would have been motivated to do this so that a player would be able to easily identify his score, yet still be able to maintain anonymity with respect to the other players. Id. In traversing the rejection, Appellant raises only one argument. Appellant argues that two of the three eBay documents (eBay Bid History and eBay Auction Ended) post-date the filing date of Appellant's application and, therefore, do not constitute prior art to the claimed invention. Appeal Br. 9-14. Consequently, Appellant argues that the Examiner failed to make out a prima facie case ofunpatentability. Id. at 14. In response, the Examiner states that the Final Office Action grounds of rejection should have characterized eBay Bid History and eBay Auction Ended as "evidence" instead of "applied references." Ans. 5. The Examiner states that use of evidence that post-dates the date of invention is permitted under Aianual of Patent Examining Procedure (MPEP) Â§ 2124 and In re Wilson, 311F.2d266 (CCPA 1962). Id. The Examiner takes the position all of the limitations of the base claim and any intervening claims. Final Action 1 (Office Action Summary), 17. 4 Appeal2014-002590 Application 12/704,016 that post-dated documentary evidence may be relied on to show that characteristics of prior art products were known. Id. In reply, Appellant argues that reliance on MPEP Â§ 2124 to use post- filing date documentary evidence to establish characteristics of prior art products is limited to invariable physical or chemical properties. Reply Br. 6. In essence, Appellant contends that MPEP Â§ 2124 and Wilson cannot be relied on as supporting evidence of a historical fact or event. 2 Id. Appellant also argues that it is well known that information displayed by internet web sites may change frequently. Id. at 6. Apart from the contention that two of the three eBay documents fail to establish the disclosed factual conditions prior to their date of the invention, Appellant presents no evidence that tends to controvert the Examiner's findings of fact with respect to the contents of the eBay documents. The question presented to us, therefore, is whether the Examiner made out a prima facie case of unpatentability that is unrebutted by Appellant. The Federal Circuit explains that "[ t ]he concept of prima facie obviousness in ex parte patent examination is but a procedural mechanism to allocate in an orderly way the burdens of going forward and of persuasion as between the examiner and the applicant." In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984). As adapted to ex parte procedure, Graham is interpreted as continuing to place the "burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103". In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967). After a 2 This would presumably include post-filing date documentary evidence that tended to show that a sale or public use occurred before the filing date. We do not reach or resolve this issue in our decision. 5 Appeal2014-002590 Application 12/704,016 prirna facie case of obviousness has been established, the burden of going forward shifts to the applicant. Id. If rebuttal evidence of adequate weight is produced, the holding of prima facie obviousness, being but a legal inference from previously uncontradicted evidence, is dissipated. Id. "If examination at the initial stage does not produce aprimafacie case ofunpatentability, then without more the applicant is entitled to grant of the patent." In re Oetiker, 977 F .2d 1443, 1445 (Fed. Cir. 1992). On appeal to the Board, an appellant my attempt to overcome an examiner's obviousness rejection by submitting arguments and/or evidence to show that the examiner made an error in either ( 1) an underlying finding of fact upon which the final conclusion of obviousness is based; or (2) the reasoning used to reach the legal conclusion of obviousness. Ex parte Frye 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). However, the Board will generally not reach the merits of any issues not contested by an appellant. Id. We agree with Appellant that it was improper for the Examiner to rely on two eBay internet web pages that post-date Appellant's filing date. We find persuasive Appellant's argument that information displayed by web pages may change frequently. Appeal Br. 6. The Examiner's rejection lacks evidence that tends to establish that what is disclosed in eBay Bid History and eBay Auction Ended accurately reflects a condition that existed at or before the filing date. For this reason, we determine that the Examiner failed to set forth a prima face case ofunpatentability. Consequently, the burden of production never shifted to Appellant to come forward with evidence that controverts the Examiner's findings of fact. 6 Appeal2014-002590 Application 12/704,016 For the foregoing reasons, we do not sustain the Examiner's rejection of claim 1. Unpatentability of Claims 3-9, 11-21, 23-33, 35-39, 41-47, 49-59, 61-71and73-76. Claims 16, 28, 39, 54, and 66 Claims 16, 28, 39, 54, and 66 are independent claims. Claims App. As with claim 1, the Examiner relies on eBay Bid History and eBay Auction Ended to support the rejection of these claims. Final Action 5-11. The rejection of these claims suffers from the same infirmity that we have identified with respect to the rejection of claim 1. For the same reasons, we do not sustain the rejection of claims 16, 28, 39, 54, and 66. Claims 3-9, 11-15, 17-21, 23-27, 29-33, 35-38, 41-47, 49-53, 55-59, 61-65, 67-71, and 73-76 These claims depend, directly or indirectly from independent claims 1, 16, 28, 39, 54, or 66. Claims App. The rejection of these claims suffers from the same infirmity that we have identified with respect to the rejection of the independent claims. For the same reasons, we do not sustain the rejection of claims 3-9, 11-15, 17-21, 23-27, 29-33, 35-38, 41--47, 49- 53, 55-59, 61-65, 67-71, and 73-76. New Ground of Rejection Independent Claims 1, 16, 28, 39, 54, and 66 Notwithstanding the foregoing, we take Official Notice of the fact that eBay.com is a well-known online auction and shopping website in which people and businesses buy and sell a broad variety of goods and services. We note that there is a considerable amount of information concerning eBay auction and bidding procedures available on the Internet Archive's 7 Appeal2014-002590 Application 12/704,016 \Vayback ~v1achine, which information is accessible on the internet at https://web.archive.org. MPEP Â§ 2128 (9th Ed., Mar. 2014) instructs that "[p]rior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted." Electronic documents are archived on the Wayback Machine and are dated as of the archived date of the website. 3 A relatively small sample of the available literature on eBay auction procedures is attached as Exhibits to this Decision in the accompanying Appendix. We find that each of the Exhibits contained in the Appendix was publicly accessible prior to the filing date of Appellant's invention. We further find that the Exhibits contained in the Appendix are evidence of public use of eBay buyer-seller transactions that took place prior to the filing date of Appellant's invention and took place in accordance with the procedures described therein. Appendix Exhibit A entitled "Getting Started on eBay" explains that, in order to buy and sell on eBay, a user must register as a member. Appendix Exhibit B entitled "How will eBay protect my privacy" explains that eBay uses a variety of techniques to safeguard the identity of members and data that is shared between users including that only the seller is allowed to view a user's user ID. Appendix Exhibit C entitled "How do I buy an item" explains that a user can buy an item on eBay by finding an item, 3 "Electronic documents that are not themselves dated and have no posting date, but are/were available as links on a website that is archived on the Wayback Machine, are dated as of the archived date of the website." See Wynn W. Coggins, Prior art in the Field of Business Method Patents - When is an Electronic Document a printed Publication for Prior Art Purposes? AIPLA (Fall 2002) (USPTO) (http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp ). 8 Appeal2014-002590 Application 12/704,016 reading a description of the item, bidding on an item, and paying for the item. Id. Appendix Exhibit D entitled "Bidding Overview" explains that: eBay limits how your bid history information is displayed by using anonymous names. When the highest bid, reserve or Buy It Now price on an item reaches or exceeds a certain level, other members cannot view your member-specific information-such as your User ID--on the Bid History page. Your complete User ID is shown to the seller of this item only. Bidders are assigned anonymous names, such as a***b. These anonymous names are used consistently across all auctions that exceed a certain level. Id. at 2. Appendix Exhibit E entitled "How do I pay for my item?" explains how buyers and sellers arrange for making payment of the purchase price and arranging for shipment and delivery of the purchased item. Finally, Appendix Exhibit F entitled "Receiving payment" explains procedures for exchanging the purchase price between the buyer and seller. We find that Exhibits A through F in the accompanying Appendix cure the deficiencies that the Appellant raises with respect to the publication dates of eBay Bid History and eBay Auction Ended in the Appeal Brief and Reply Brief. We further find that such Appendix Exhibits satisfy the limitations for which the Examiner relied on the eBay Documents in the Final Office Action for each of the independent claims. We conclude that it would have been obvious for a person of ordinary skill in the art at the time of the invention to combine Kelly with the eBay user registration, auction, bidding, payment, and account management procedures that were in public use and otherwise available to the public prior to the filing date of the application, as evidenced by the accompanying Appendix Exhibits, to achieve the invention claimed in each of independent claims 1, 16, 28, 39, 54, or 66. A person of ordinary skill in the art would 9 Appeal2014-002590 Application 12/704,016 have done this for essentially the same reasons that the Examiner articulated in the rejection of claims 1, 16, 28, 39, 54, and 66 in the Final Office Action. The Dependent Claims No inference should be drawn from the failure to make a new ground of rejection of other claims. Should there be further prosecution before the Examiner, we leave to the Examiner to determine whether to make a new ground of rejection of any other claims. 4 DECISION The decision of the Examiner to reject claims 1, 3-9, 11-15, 17-21, 23-27, 29-33, 35-38, 41--47, 49-53, 55-59, 61-65, 67-71, and 73-76 as unpatentable over Kelly and eBay documents is REVERSED. We enter a NEW GROUND OF REJECTION rejecting claims 1, 16, 28, 39, 54, or 66 as unpatentable under 35 U.S.C. Â§ 103(a) over Kelly and the evidence of prior public use of eBay auction procedures described in Exhibits A through F of the accompanying Appendix. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R Â§ 41.50(b) also provides that the Appellant, WITHIN 4 See 37 C.F.R. Â§ 41.50(b). See also Manual of Patent Examining Procedure (MPEP), 8th ed., rev. 8, July 2010, Â§ 1213.02. Under 37 C.F.R. Â§ 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case. Because the exercise of authority under 37 C.F.R. Â§ 41.50(b) is discretionary, no inference should be drawn from the decision to exercise that discretion with respect to some but not all of the claims on appeal. 10 Appeal2014-002590 Application 12/704,016 T\VO ~v10NTHS FRO~v1 THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the exammer .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). REVERSED; 37 C.F.R. Â§ 41.50(b) 11 Appeal2014-002590 Application 12/704,016 APPENDIX~ Exhibit A. Getting Started on eBay (https://web.archive.org/web/20091212004527 /http://pages.ebay.com/help/ account/ gettingstarted.html). Exhibit B. How will eBay protect my privacy (https://web.archive.org/web/20091212015104/http:/lpages.ebay.com/help/ account/ questions/protectpri vacy .html). Exhibit C. How do I buy an item (https://web.archive.org/web/20091211231857 /http://pages.ebay.com/help/ buy/ questions/buyitem.html). Exhibit D. Bidding Overview (https://web.archive.org/web/20071011005128/http://pages.ebay.com/help/ buy/bidding-ov.html). Exhibit E. How do I pay for my item (https://web.archive.org/web/200912120211 OO/http://pages.ebay.com/help/ buy I questions/paymentoptions. html). Exhibit F. Receiving payment (https://web.archive.org/web/20091211220104/http://pages.ebay.com/help/ pay/receivingpayment.html). 5 The documents listed in this Appendix were accessed on April 4 and 8, 2016. 12 EXHIBIT A 4/8/2016 Getting started on eBay Registration & signing in Managing your account Sharing with eBay members Protecting your account Rules & policies eBay glossary eBay acronyms A-Z index Getting started : http://pages.ebay.com/help/accounUgetting-started.html : Go : {..;..;..;..;..;..;..;..;..;~' Register Read information for new members Learn about trust and safety on eBay Start buying and selling Weicome to eBay. This is yo:.1r place lo buy what you want. seli wha:. y:;u have, and make a fsw friends while you're al it Here's how to get slE.ded: ~'-1; Y:;u can brotJ-...se for ;teiÂ·:is as 8 quest butt:; buy and sen, you need to rsD~ster. As '-' rnE.1mber you c3n: Buy and seli i:.erns on eBay. Track up to 200 items at a time. Create revie\NS Bnd post to ou: cornrnun;ty bGards. Usâ€¢J My â€¢J8ay lo manage your buyi:1g and selli:11oi activitios. Wher: you"re ready, register lo ~im slarled. When you registsr you"ll be asked to read and aqree lG our User Agreement. Lec.:m: hcN.,1 to get the help you ne~Jdby :...1sin~1 our on!ine he!p system. Stay ;n touch vv~th ou:" corn:nu;1ity. VV0 hc.rve 3 numbe: of community resources to help you slay infor:r1od about the latest evrn1ls, ;irograrns. ar:d r.evv'>. Us~> My ~>Bay to help yo:J trS~'ill1'l'>, ~lin by searching or browsing fo: itmr:s you're in!er(;~'tGd in. Thme ar~> loh of wG third-party privacy certification programs likG TRUST~> to h~ilp rnak'l sum cur privacy pmdic~is are c:onsis!ent with our lfllPI obligatim:s and indt;stry bm;t pmctices. ~~('=' VVs g~ve you control. in r\.1y eBay preferences, ovsr hovv vve uss your persona! :n"forrn8ti:;n :...:r contact you. Vi/e use soph;sticB.ts-d safE.1guc.,tds !:kE.1 fo'G\Â·vans, E.1ncrypt:on c_:md Secu:"e Socket Layers !o help protect your personal information from loss, thdt, and :...1nautho:"ized accE.1ss and disc!osure. V1/G us(; a vmiflty of tGchniqum; lo ~'afoguard your ID ar.d hfllp protrn:t data :hat is sharer: betwee:i users. For exarnple: Or:ly !he sofor is allowed to view your user ID whrn1 you bid on w1 i!e:n. O\r1(;r bidder~' sGe m:ly ar.onyrnous IDs. Your (;mail addrm;s is disclos,id only tc rnrnnbers with whorn you ar~> invo!v,id in m1 GBay transaclim:. You can co1:tact other rnernbers oniy fo: the purpose of fBcil::ating tra1:sactio:is. https://web.archive.org/web/20091212015104/http://pages.ebay.com/help/account/questions/protect-privacy.html Privacy Policy Minimizing unwantGd email Cookies, web beacons, and your privacy ,, Tnist and safety tutorials Security Center 1/1 EXHIBIT C 4/8/2016 How do I buy an item? http://pages.ebay.com/help/buy/questions/buy-item.html jiiJ â€¢â€¢â€¢[i!!m,~"'~'Â·Â·~ â€¢. ~!ll~l!!!m.im.1!!1Â· "'~""'.,,,;j,,~~~:~'.,. ~~:~"'p't~"Â·,.:.,;~,".~, .~, "'. """'"""!ll!!l""""""~""~"'"'"" ...... i.1i â€¢â€¢â€¢ ~ â€¢â€¢ ~ ..... 11 .... â€¢ ...... 'â€¢Â·Â·Â·Â·Â· .... -.â€¢~.I ..................... Â·Â·Â·Â·Â·"Â·Â·C.Â·(lâ€¢'~-Â· :.?;Ji Â·1 'ome ~~ IL~> .C'N .) c .V'>' d 11(" ',IÂ·' ~Â· Buying basics Ail about bidding Managing your buying activity Resolving buying prob!ems eBay giossary eBay acronyms A-Z index You can sh:;p for aimost a:iyt:ling o:i eBay. Ge:. started using these steps: 1. Find ;m ii.'ilffi. Enter keywords :nto tl:e search bo1< located at the t:;p ot any page, or browse lhmugh our iist of ca!eg:;ries on the horr.e pags. 2. L~:.~rn ab\..':u~. th\3 :t~:~n ~/o:..: f\..':unti. Rsad the item description carefully. If ycu :mv~2 any qw2st:ons about the :ts-m, you can ask thE.1 sâ€¢2n~2~Â· by cncki;1g th~J l!P ... sk sâ€¢Jl;~Jt 3 qw2stionÂ° link. 3. ~~ev:H~.._ .. thH ~en~:r~s F~3~db;~ck. v:evv the seller's busi;1ess r~Jputation by !ool\ing at hi'> or tmr Feedback Score, and r(> corr.rnrnit'> :dt by pmviou'> buyer'> to be SUf'l that !his is a 5e::er you foel ycu cm1 !rm't. 4. E~ki Qf Buy ~t NQ'.-~Â·Â·, Chf~ck thf: ~tern paâ€¢JG tcÂ· 2;ee vi/hat p:Jrcha~;n Gption~; are ava:lab:e. You c:an eitha1Â· place a bid on an iten1 Gr pt:1Â·chase it instantly '1sin[J Buy It Now. Ramsrnba1Â·, ail bids are activs 'mtil the m:cti:;n ends. :f yot: wi1: a listing, you're obkjaled to con::i:e!e tile transaction. 5. ~:~a~/ f\..':r th~: :t~::n. After y0Ll\1e vvon or bought the ;:.eiÂ·:i, send your payrnsr.t to the ssllsr within t:1ree days. If you wa1Â·:t to pay with one Gf !he electr;.:1Â·:ic: payment methods offered by the seiler, click Uie Pay Now bullm: en tho i!ern page m email r:mificatim:. Otherwise. the sdmÂ· wili let yGL' knovv how and who"e to send yoc1r pay:nenl. If yoc1'm pick:ng up the 'tern, you car: pay by any rn'J!hod the seller accepts (:ncl:Jdir:f,1 cash). Ba sure lo pay using one of !he methods spec:fisd by the seller. Checks, money orders, and bank vv:rs tr8nsfers aren:t alk:wed fr;r most purchasos. E:xceptio:1s inc:ude Â·,;ehicles, capital ar:d business equ:prr:o:1!, real 'Jslate. ilerr:s in the A.r_kilt On:y category. and local pickup. Fm specifics about payrnent rr.ethods, see our Accepted Payments policy. https://web.archive.org/web/20091211231857/htlp://pages.ebay.com/help/buy/questions/buy-item.html Buyer tips Ail about buying Different ways of buying 1/1 EXHIBIT D