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REMARKS 

Reconsideration of the application in light of the following remarks is respectfully 
requested. 

Applicants acknowledge the courtesy and effort extended their attorney, Richard J. 
Katz, during a telephone interview conducted on September 22, 2004. The distinctions of the 
pending claims over the Sharp patent were discussed. The Examiner indicated that the 
arguments presented appeared to overcome Sharp, but reserved judgment until the filing of an 
official response. 

During the telephone interview the Examiner questioned whether the present claims 
were doing more than just automating a known method of conducting business. Although not 
an official rejection, Applicant makes the following comments addressing the Examiner's 
question with the expectation of foreclosing such a rejection from being made in the future. 
The Examiner stated that it is a known business method for a customer to request quotes from 
multiple vendors, and then select a vendor based on the quote most suitable to the customer. 

Although the claimed inventions do convey vendor quotations to the customer in 
response to a request, the claimed inventions represent an advance in the art. In particular, the 
claimed inventions introduce a host-selected vendor to the customer, upon a prescribed 
condition, "without disrupting existing relationships between the customer and its vendors." 
(Claim 1, preamble.) The application discloses that "[b]y relating in [a] database particular 
goods, services or parts to specific vendors, the customer can identify a desired ware in a web 
browser form and submit the form to the host 106. .. . The customer can select a vendor from 



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that list, but will only be permitted to post the request to that vendor if the customer has an 
existing relationship with the selected vendor. In this manner, the customer is not able to 
"shop" a request for quote to a vendor with whom it does not have a prior relationship. 
Optionally, the system filters the set of vendors in the vendors selection list to include only 
those that the customer has previously identified as being one of its vendors." 

Application claim 1 also recites "obtaining at the host Web site relationship data which 
relates the request to one or more vendors selected by the customer." Applicants submit that 
the prior art does not disclose nor suggest such customer interaction with vendors based on 
"relationship-data which relates the request to one or more vendors selected by the customer." 
The method of claim 1 conveys "the request to the host-approved vendor only upon a 
prescribed condition." Thus, relationships between vendors and customers are not impacted 
by any transactions conducted over the Internet. In contrast, under the business method 
suggested by the Examiner, a customer can contact any number of potential vendors for a 
quotation, regardless of whether there was a prior relationship . That conduct causes the 
commoditization of wares and services, with customer seeking lowest prices and vendor- 
customer relationships being sidestepped. 
Status of the Claims 

Claims 1-30 are pending. 
Information Disclosure Statement 

Applicants respectfully note that an Information Disclosure Statement, accompanied by 
PTO Form 1449, was filed concurrently with the application on June 27, 2001. A photocopy 
of the IDS, the accompanying Form 1449, certificate of mailing, and return postcard stamped 



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by OIPE are included in Attachment A. Applicants note that the Office Action dated June 29, 
2004 does not include a copy of the June 27, 2001 Form 1449 initialed- by the Examiner and, 
therefore, request that the Examiner review the cited references and initial the Form 1449 so 
that the references are made of record and identified on the face of any patent which may issue 
from this application. 

The photocopy of the IDS submission and other documentation in Attachment A 
demonstrates that the references cited in the IDS were properly in the case at the time of the 
Examiner's action. However, there is no indication that the Examiner considered these 
references when formulating the first examination of the claims on the merits as required by 37 
C.F.R. § 1.104(b). Should the Examiner fail to allow all of the claims over these references 
or those cited by the Examiner, as currently urged by the Applicants, the Examiner should 
issue a non-final Office Action for a rejection premised on any of the references in the IDS. 
Rejection Under 35 U.S.C. § 102 

Claims 1-3 and 5-30 stand rejected under 35 U.S.C. § 102(e) as being anticipated by 
U.S. patent 6,263,317 to Sharp et al. ("Sharp"). Applicant respectfully traverses this 
rejection. 

The Examiner contends that Sharp discloses all the features of claims 1-3 and 5-30 
including conveying a request from a customer to one or more vendors selected by the 
customer. Applicants respectfully disagree with the Examiner's reading of Sharp. 

Sharp discloses a web-based system that allows manufactures and distributors of brand 
products to participate in the e-commerce marketplace without violating existing distribution 
channels. Sharp discloses that orders placed by customers are allocated to manufactures, 



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distributors, and retailers according to distribution channel protocols defined by the 
manufacturer. (Sharp, Abstract.) This allocation of orders is done by a computer program 
implementing a distribution channel conflict resolution scheme specified by the product's 
manufacturer. (Sharp, column 3, lines 22-25; column 4, lines 12-15.) 

In contrast, claim 1 recites "obtaining at the host Web site relationship-data which 
relates the request to one or more vendors selected by the customer" and "conveying the 
request obtained by the host Web site to the customer-selected vendors." Similarly, 
independent claim 25 recites "providing from the customer station information which relates 
one or more customer-selected vendors with whom the customer has an existing relationship 
with the product or service in the request" and "receiving from the host any responses to the 
request from the customer-selected vendors." (Emphasis added.) Independent claim 15 
recites "accepting over an Internet connection a request from a customer" and "for each of 
said pre-selected vendors formatting said request for delivery in the established communication 
format of the customer with that vendor." The preamble to claim 15 states that the pre- 
selected vendors are "vendors with whom the customer has an existing relationship." 

In contrast, Sharp discloses that the vendors are selected in accordance with distribution 
protocols defined by a manufacturer. Therefore, Applicant submits that Sharp does not 
disclose each and every feature of independent claims 1, 15 and 25. Thus, Sharp does not 
anticipate claims 1, 15 and 25. Claims 2, 3 and 5-14 depend from claim 1. Claims 16-24 
depend from claim 15. Claims 26-30 depend from claim 25. Applicant submits that Claims 2, 
3, 5-14, 16-24 and 26-30 distinguish over Sharp for at least the same reasons as their 
respective base claims. Withdrawal and reconsideration of the rejection is requested. 

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Rejection Under 35 U.S.C. § 103 

Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Sharp in 
view of the Examiner's statement of what was known by an ordinary person of skill in the art 
at the time of the invention. Applicant respectfully traverses this rejection. 

The Examiner acknowledges that Sharp fails to disclose all the features of claim 4. 
However, the Examiner contends by Official Notice that it is well known in the art for 
customers to request quotes and vendors to respond. The Examiner states that it would have 
been obvious for a person of ordinary skill in the art at the time of the invention to have 
combined Sharp with the Official Notice to achieve the invention of claim 4. 

Claim 4 depends from claim 1 and recites all the features of claim 1 in addition to its 
own features. Applicant submits that the combination of Sharp and the Official Notice neither 
discloses nor suggests, singly or in combination, the features of claim 4 which are missing 
from Sharp as discussed with respect to claim 1 in the previous section. Therefore, Applicant 
submits that the Examiner has not met the burden to establish a prima facie case of 
obviousness. Withdrawal and reconsideration of the rejection is requested. 

CONCLUSION 

Each and every point raised in the Office Action dated June 29, 2004 has been 
addressed on the basis of the above remarks. In view of the foregoing it is believed that claims 
1-30 are in condition for allowance and it is respectfully requested that the application be 
reconsidered and that all pending claims be allowed and the case passed to issue. 



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If there are any other issues remaining which the Examiner believes could be resolved 
through a Supplemental Response or an Examiner's Amendment, the Examiner is respectfully 
requested to contact the undersigned at the telephone number indicated below. 



Dated: December 23, 2004 




Attorney for Applicant 

DARBY & DARBY,. P.C. 
Post Office Box 5257 
New York, N.Y. 10150-5257 
Phone: (212) 527-7700 



Serial No. 09/869,538 Page 7 

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EXPfi 



rMAIL CERTIFICATE 



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ereby certify that, on the date indicated above, this pap 



- 01t * 

I hereby certify that, on the date indicated above, this paper or 
fee was deposited with the U.S. Postal Service & that it was 
addressed for delivery to the Assistant Commissioner for 
Patents, Washington, DC 20231 by "Exores ^flai l Office to 
Addressee" service. 



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Docket No.: 2637/1 F581-US2 



07278 



PATENT TRADEMARK OFFICE 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 
In re application of: 

Daniel NISSANOFF; Maark Allan SCHENECKER 
Serial No.: t/b/a 
Confirmation No.: 



Filed: 
For: 



Concurrently Herewith 

SYSTEMS AND METHODS FOR ELECTRONIC COMMERCE 



INFORMATION DISCLOSURE STATEMENT 

Hon. Commissioner of 

Patents and Trademarks 
Washington, DC 20231 



In order to comply with 37 CFR 1 .97 and 1 .98, attached hereto is a 
copy of Form PTO-1449 and copies of the documents listed thereon. 



In accordance with MPEP Sections 609 and 707.05(b), it is requested 
that each document cited (including any cited in applicant's specification which is 
not repeated on the attached Form PTO-1449) be given thorough consideration and 
that it be cited of record in the prosecution history of the present application by 
initialing Form PTO-1449 next to the document. Such initialing is requested even if 
the Examiner does not consider a cited document to be sufficiently pertinent to use 
in a rejection, or otherwise does not consider it to be prior art for any reason, or 
even if the Examiner does not believe that the guidelines for citation have been fully 
complied with. This is requested so that each document becomes listed on the 
face of the patent issuing on the present application. 

This submission is filed before a first action on the merits has been 

mailed. 

The present Information Disclosure Statement is being submitted in 
compliance with 37 CFR 1 .56, but the citation of such document is not to be 
construed as an admission that such document is necessarily relevant or prior art. 
No representation is intended that the cited documents represent the results of a 
complete search, and it is anticipated that the Examiner, in the normal course of 
examination, will make an independent search and will determine the best prior art 
consistent with 37 CFR 1 .104(a) and 1 .106(b) and, in the course of each search, 
will review for relevance every document cited on the attached form even if not 
initialed. 

Serial No. t/b/a Docket No. / 

- 2 - 



It is believed that no fee is due. However, if the Commissioner 
determines that a fee is due, the Commissioner is hereby authorized to charge the 
above deposit account for any deficiency. 

Early and favorable consideration is earnestly solicited. 



Respectfully submitted, 



Dated: June 25, 2001 




Registration No. 36,195 
Attorney for Applicant(s) 

DARBY & DARBY 
805 Third Avenue 
New York, NY 10022 
(212) 527-7700 



Serial No. t/b/a 



- 3 - 



Docket No. / 



SHEET 1 OF 1 

. DEPARTMENT OF COMMERCE PATENT & TRADEMARK OFFICE (REV. 7-80) 



DOCKET NO.: 

APPLICANT: 

Herewith 



LIST OF REFERENCES CITED BY APPLICANT 

(Use Several Sheets if Necessary) 



2637/1 F581-US2 SERIAL NO: 

Daniel NISSANOFF et al. FILING DATE: 



t/b/a 

Concurrently 



CONFIRMATION NO: 



U.S. PATENT DOCUMENTS 



•EXAMINER 


DOCUMENT 












INITIALS 


NUMBER 


DATE 


NAME 


CLASS 


SUBCLASS 


FILING DATE 


A. 


6,023,683 


2/8/00 


Johnson et al. 


705 


26 


8/10/94 


B. 


5,970,475 


10/19/99 


Barnes et al. 


705 


271 


10/10/97 


C. 


5,842,178 


1 1 /24/98 


Giovannoli 


705 


26 


1 /30/98 


D. 


5,319,542 


6/7/94 


King et al. 


364 


401 


9/27/90 


E. 


5,734,890 


3/31/98 


Case et al. 


395 


605 


8/22/95 


F. 


5,224,034 


6/29/93 


Katz et al. 


364 


401 


12/21/90 



FOREIGN PATENT DOCUMENTS 



♦EXAMINER DOCUMENT 
INITIALS NUMBER 



DATE 



COUNTRY 



TRANSLATION 
CLASS SUBCLASS YES NO 



♦EXAMINER 
INITIALS 



OTHER REFERENCES 
(INCLUDING AUTHOR, TITLE DATE. PERTINENT PAGES, ETC.) 



EXAMINER: 



DATE CONSIDERED: 



» EXAMINER : Initial if reference considered, whether or not citation is in conformance with MPEP 609; draw line through citation 
conformance and not considered. Include copy of this form with next communication to applicant. 



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