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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. 



09/869,538 



11/02/2001 



7590 



06/29/2004 



Darby & Darby 

805 Third Avenue 

New York, NY 10022-7513 



Daniel Nissanoff 



2637/1F581-US2 



4656 



EXAMINER 



MCCLELLAN, JAMES S 



ART UNIT 



PAPER NUMBER 



3627 

DATE MAILED: 06/29/2004 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 10/03) 



• 

Office Action Summary 


Application No. 

09/869,538 


Applicant(s) a 
NISSANOFFETAL / 




Examiner 

James S McClellan 


Art Unit 

3627 


!\ 






« The MAILING DATE of this communication appears on the cover sheet with the correspondence address ~ 
Period for Reply 

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM 







THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33). 
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1.704(b). 

Status 

1)^ Responsive to communication(s) filed on 02 November 2001 . 
2a)D This action is FINAL. 2b)[3 This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213. 

Disposition of Claims 

4) 03 Claim(s) 1-30 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) Q Claim(s) is/are allowed. 

6) I3 Claim(s) 1-30 is/are rejected. 

7) D Claim(s) is/are objected to. 

8) D Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). 
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d). 

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152. 

Priority under 35 U.S.C. § 119 

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f). 
a)D All b)Q Some * c)Q None of: 

1 .□ Certified copies of the priority documents have been received. 

2. D Certified copies of the priority documents have been received in Application No. . 

3. D Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 



Attachment(s) 

1) [X] Notice of References Cited (PTO-892) 

2) [H Notice of Draftsperson's Patent Drawing Review (PTO-948) 

3) I3 Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 

Paper No(s)/Mail Date 5. 



4) [H Interview Summary (PTO-413) 

Paper No(s)/Mail Date. . 

5) CI Notice of Informal Patent Application (PTO-152) 

6) □ Other: . 



U.S. Patent and Trademark Office 
PTOL-326 (Rev. 1-04) 



Office Action Summary 



Part of Paper No./Mail Date 6 



Application/Control Number: 09/869,538 
Art Unit: 3627 



Page 2 



DETAILED ACTION 

Information Disclosure Statement 

1. Applicant's submission of an information disclosure statement on June 16, 2003 was 
entered and fully considered and indicated by the signed PTO-1449 attached to the office action. 

Claim Rejections - 35 USC § 102 

2. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the 
basis for the rejections under this section made in this Office action: 

A person shall be entitled to a patent unless - 

(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed 
in the United States before the invention by the applicant for patent or (2) a patent granted on an application for 
patent by another filed in the United States before the invention by the applicant for patent, except that an 
international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this 
subsection of an application filed in the United States only if the international application designated the United 
States and was published under Article 21(2) of such treaty in the English language. 

3. Claims 1-3 and 5-30 are rejected under 35 U.S.C. 102(e) as being anticipated by U.S. 
Patent No. 6,263,317 (hereinafter "Sharp"). 

Regarding claim 1, Sharp discloses a method for matching host-selected vendor to a 
customer via the Internet without disrupting existing relationships between the customer and its 
vendors (see column 1, lines 50-54), comprising the steps of: obtaining a request from the 
customer (see column 3, lines 6-20); obtaining relationship data (see column 3, lines 20-39); 
conveying the request to the customer selected vendors (see column 4, lines 12-17); and 
conveying the request to the host-approved vendor only upon a prescribed condition (see column 
5, lines 50-55); [claim 2] reporting to the customer responses to the request (see column 4, lines 
8-11); [claim 3] the host-approved vendor is one of the host Web site and a third-party vendor 



Application/Control Number: 09/869,538 Page 3 

Art Unit: 3627 

(see column 3 5 lines 25-29); [claim 5] obtaining a product or service selection from the customer 
(see column 3, lines 16-20) and obtaining one or more vendor selections for said product or 
service from the customer (see column 3, lines 16-20; see column 5, lines 55-61); [claim 6] 
convey request to vendors via e-mail, fax, or telephone (see column 4, lines 15-17); [claim 7] the 
response is reported to the customer via e-mail (see column 3, lines 8-11); [claim 8] relationship 
data is maintained by the host web site (see column 3, lines 45-60); [claim 9] the host Web site 
maintains a catalog of information to satisfy the request (see column 3, lines 45-60); [claims 10, 
12, and 14] the step of conveying the request to a host-approved vendor is performed 
automatically (see column 4, lines 12-28); [claim 11] the prescribed condition is that no single 
one of the customer-selected vendors can fully satisfy the order (see column 5,lines 38-43); and 
[claim 13] the prescribed condition is that the customer-selected vendors collectively cannot 
fully satisfy the order (see column 5, lines 38-43). 

Regarding claim 15, Sharp discloses a method of facilitating e-commerce as set forth 
above in detail for claims 1-3 and 5-14, and further including recognizing the communication 
format of the vendor and delivering request information via the vendor selected format (see 
column 4, lines 12-17). 

Regarding claim 24, Sharp discloses a method for providing customer with responses 
that satisfy a request as set forth above in detail for claims 1-3 and 5-14. 

Claim Rejections - 35 USC § 103 
4. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 
obviousness rejections set forth in this Office action: 



Application/Control Number: 09/869,538 
Art Unit: 3627 



Page 4 



(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in 
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are 
such that the subject matter as a whole would have been obvious at the time the invention was made to a person 
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the 
manner in which the invention was made. 

5. Claim 4 is rejected under 35 U.S.C. 103(a) as being unpatentable over Sharp in view of 
Official Notice. 

Sharp fails to explicitly disclose a customer request and a vendor response being a quote. 

The Examiner takes Official Notice that is well-known in the art of electronic commerce 
for customer to request quotes and for vendors to respond with quotes. 

It would have been obvious to one of ordinary skill in the art at the time the invention 
was made to modify Sharp with request for quotes as is well-known in the art, because quotes are 
reasonable requests by customers during a procurement process. 

Conclusion 

6. The prior art made of record and not relied upon is considered pertinent to 
Applicant's disclosure. 

Eder is cited of interest for disclosing a method and system for generating feasible, profit 
maximizing requisition sets. 

Barnes is cited of interest for disclosing an electronic procurement system and method for 
trading partners. 

Carter is cited of interest for disclosing an apparatus and method for inband protocol 
correction in distributed object networking. 

Lautzenheiser is cited of interest for disclosing a method and apparatus for using prior 
results when processing successive database request. 



Application/Control Number: 09/869,538 
Art Unit: 3627 



Page 5 



7. 



Any inquiry concerning this communication or earlier communications from the 



examiner should be directed to Jim McClellan whose telephone number is (703) 305-0212. The 
examiner can normally be reached on Monday-Friday from 9:30 to 6:00. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Robert Olszewski, can be reached at (703) 308-5183. 

Any inquiry of a general nature or relating to the status of this application or proceeding 
should be directed to the receptionist whose telephone number is (703) 308-1 1 13. 

Any response to this action should be mailed to: 



Hand delivered responses should be brought to Crystal Park 5, 2451 Crystal Drive, 
Arlington, VA, 7 th floor receptionist. 



Commissioner of Patent and Trademarks 



Washington D.C. 20231 



or faxed to: 



(703) 872-9306 (Official communications) or 
(703) 746-3516 (Informal/Draft communications). 




A.U. 3627 



jsm 

June 25, 2004