Ex Parte Zivin

Patent Trial and Appeal Board

Aug 19, 2013

11517973 (P.T.A.B. Aug. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/517,973 09/08/2006 Michael A. Zivin 5014/75630 2896
23432 7590 08/20/2013
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
08/20/2013 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 MICHAEL A. ZIVIN
____________________

Appeal 2011-010941
Application 11/517,973
Technology Center 3600
____________________

Before MICHAEL W. KIM, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 24-30, 32-43, and 45-51.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The rejected claims are directed to a computerized method of
searching for a seller of a product, as well as an associated system and a
computer program stored on a computer readable medium, which determines
the lowest total cost for locally purchasing goods and services (Spec., p. 5,
ll. 11-21). Claims 24, 38, and 51 are the only independent claims.
EXEMPLARY CLAIM
Claim 24, reproduced below, is representative of the subject matter of
the appealed claims.
24. A computerized method of searching for
a seller of a product, the method comprising the
steps of:
electronically assigning a unique identifier
for the seller;
associating the unique identifier with one or
more two-dimensional geographical coordinates;

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed
September 8, 2006), Appeal Brief (“App. Br.,” filed February 8, 2011), and
Reply Brief (“Reply Br.,” filed May 26, 2011), as well as the Examiner’s
Answer (“Ans.,” mailed March 31, 2011).

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storing information regarding the seller in an
index on one or more server computers;
indicating a product;
indicating a geographical search location;
and
electronically searching, using a server
computer, for a seller of the product that is located
within a search distance of the geographical search
location based on a comparison of the
geographical search location and the one or more
two-dimensional coordinates associated with the
seller.
THE REJECTIONS
The following rejections made by the Examiner are under appeal:
Claims 24-30, 32-43, and 45-51 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement;
claims 24-30, 32-43, and 45-51 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement; and
claims 24-30, 32-43, and 45-51 are rejected under 35 U.S.C. § 102(e)
as anticipated by Hearn ‘697 (US 7,680,697 B2, iss. Mar. 16, 2010) or in the
alternative by Hearn ‘133 (US 2007/0174133 A1, pub. Jul. 26, 2007).
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ANALYSIS
Rejection of the claims as failing to comply with the enablement
requirement
Each of the claims is rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement. We note that the test
for compliance with the enablement requirement is whether the disclosure,
as filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Further, when rejecting a claim
for lack of enablement, the Examiner bears the initial burden of setting forth
a reasonable explanation as to why the scope of the claim is not adequately
enabled by the description provided in the specification. In re Wright, 999
F.2d 1557, 1561-62 (Fed. Cir. 1993). Factors that may be considered in
determining whether a disclosure would require undue experimentation
include (1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims. Wands, 858 F.2d at 737.
In this case, although the Examiner lists the Wands factors and
concludes there is no enabling disclosure for certain limitations in the
claims, the Examiner has not adequately addressed the Wands factors or
otherwise explained why one of ordinary skill in the art would have to
engage in undue experimentation to practice the claimed invention. Instead,
the Examiner states that the claims contain subject matter not described in
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the Specification in such a way as to enable one skilled in the art to make
and/or use the invention (Ans. 4). Specifically, the Examiner blanketly
asserts that “[t]he specification does not disclose what a unique identifier is
or how one associates it with a two-dimensional graphical coordinate. The
specification does not disclose how one or more two-dimensional
coordinates are associated with a seller.” (Id.). It is unclear how these
assertions are relevant to the Wands factor. Because there is no explanation
of why one of ordinary skill in the art would have to engage in undue
experimentation to practice these aspects, the Examiner has failed to
establish that the claims are not enabled. Thus, we do not sustain the
rejection of the claims under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
Rejection of the claims as failing to comply with the written
description requirement
Independent claim 24 is rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner states that neither the application filed on September 8, 2006,
nor the provisional application filed on December 28, 2005, provides
support for numerous limitations of the claim (Ans. 3-6 and 7). One such
limitation from claim 24 requires “storing information regarding the seller in
an index on one or more server computers.”
Appellant first argues that the Specification supports the claim
limitation of storing information in a server, stating “[a] system such as that
described . . . [on page 9, lines 17-24 of the Specification] necessarily
involves one or more servers because it 1) receives query information from
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customer devices and 2) transmits information responsive to the query back
to the customer devices” (App. Br. 18)2. We are not persuaded, however,
that the system described on page 9 of the Specification necessarily involves
a server. We note the Specification does not affirmatively state that a server
is used to receive information and transmit responsive information. Further,
Appellant has not shown that some other system other than a server is
incapable of receiving information and transmitting responsive information.
Appellant also argues that the Specification supports the claim
limitation “storing information . . . in an index” (App. Br. 18-19).
Specifically, Appellant states as follows:
As stated in the language quoted above,
information regarding goods is obtained by
“searching each vendor in a specific radius.” To
lookup information regarding goods by “searching
each vendor in a specific radius,” rather than by
searching every vendor in the server’s database
regardless of its location, necessarily requires that
the information (including goods sold) regarding a
particular seller be indexed by the vendor’s
location. Accordingly, the specification discloses
storing information regarding a seller in an index
on one or more servers.
Figure 3 further demonstrates indexing of
information regarding sellers by, inter alia, the
distance of the seller from the buyer. Reference
numeral 312 shows the limited distance range
within which the query is performed, only vendors

2 Although Appellant argues that the claim limitations are supported by the
Specification filed September 8, 2006, and does not refer to the provisional
application filed on December 28, 2005, we note the paragraph on which
Appellant relies is substantially the same as a paragraph on page 10 of the
provisional application.
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within that distance being shown. ([P]age 16, lines
1-2; page 17, lines 4-5). Thus, Figure 3 is a visual
representation of a portion of a seller database
indexed by information regarding the seller
(particularly, the seller’s location)
(id.). We are not persuaded, however, that the Specification supports the
claim limitation of storing information in an index. While the portion of the
Specification referenced by Appellant does state “[t]he goods are included in
the search results only if the goods are offered in the customer’s local area.
This is determined by searching each vendor in a specific radius,” contrary
to Appellant’s argument the Specification does not state whether every
vendor in a database is searched on or not. It would be mere speculation for
us to determine that the database was not limited to vendors only within the
specific radius, and for us to determine that not every vendor was searched
as stated by Appellant. Further, Appellant has not persuaded us that the
illustration in Fig. 3 of the vendors’ distances to the buyer requires “storing
information . . . in an index” as required by claim 24. Regardless of how the
information is displayed or filtered in Fig. 3, the figure does not require that
the information is stored in an index.
Based on the foregoing, we are not persuaded of error in the rejection
of independent claim 24, and thus we sustain the rejection under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement.
Appellant argues independent claims 38 and 51 comply with the
written description requirement for similar reasons as claim 24 (App. Br. 22,
29). We therefore also sustain the rejection of independent claims 38 and 51
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under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
The remaining claims depend from independent claims 24 and 38.
Therefore, we sustain the rejection of dependent claims 25-30, 32-37, 39-43,
and 45-50 under 35 U.S.C. § 112, first paragraph, for failing to comply with
the written description requirement.
Rejections of the claims under 35 U.S.C. § 102(e)
Appellant argues the claims are allowable because the application is
entitled to the filing date of the provisional application (App. Br. 32-33).
Because Appellant has not established that the claims are supported by the
earlier-filed provisional application, or even the Specification filed
September 8, 2006, Appellant has not successfully antedated either Hearn
reference, and thus we sustain the rejections under 35 U.S.C. § 102(e).
DECISION
The Examiner’s rejection of the claims under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement is
REVERSED.
The Examiner’s rejection of the claims under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement is
AFFIRMED.
The Examiner’s rejections of the claims under 35 U.S.C. § 102(e) are
AFFIRMED.
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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).
AFFIRMED
JRG