Ex Parte ZivinDownload PDFPatent Trial and Appeal BoardAug 19, 201311517973 (P.T.A.B. Aug. 19, 2013) Copy Citation 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 Appeal 2011-010941 Application 11/517,973 2 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). Appeal 2011-010941 Application 11/517,973 3 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). Appeal 2011-010941 Application 11/517,973 4 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 Appeal 2011-010941 Application 11/517,973 5 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 Appeal 2011-010941 Application 11/517,973 6 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. Appeal 2011-010941 Application 11/517,973 7 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 Appeal 2011-010941 Application 11/517,973 8 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. Appeal 2011-010941 Application 11/517,973 9 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 Copy with citationCopy as parenthetical citation