Skip to main content

Full text of "USPTO Patents Application 09869538"

See other formats

'ess Mail Label No. 


File No. 02637/1 00F581-US2 


In re application of: Daniel Nissanoff 

Confirmation No.: 4656 

Serial No.: 09/869,538 

Group Art Unit: 3627 

Filed: November 2, 2001 

Examiner: James S. McClellan 



MS Amendment 
Commissioner for Patents 
P.O. Box 1450 
Alexandria, VA 22313-1450 

Dear Sir: 

Concurrent with the filing of a Notice of Appeal, and in accordance with the Pre-Appeal 
Brief Conference Pilot Program, Applicants hereby request a pre-appeal brief review of the 
rejection mailed April 6, 2005 in the above-identified application. No amendments are being 
filed with this request. 

Claims 1-30 are pending in the application, with claims 1-30 having been twice rejected. 
An appeal is proper in accordance with 37 C.F.R. § 41.31(a), which provides that "[ejvery 
applicant, any of whose claims has been twice rejected, may appeal from the decision of the 
examiner to the Board 

The sole question on appeal is whether the rejection of all claims as being unpatentable 
over the combination of U.S. Patent No. 6,263,317 to Sharp in view of the U.S. Patent No. 

Docket No. : 02637/100F581-US2 

5,970,475 to Barnes et al. ("Barnes"), with dependent claim 4 being further rejected in view over 
the Examiner's Official Notice, is correct. See April 6, 2005 Office Action, items 3-4, pages 2-4. 

A. The Cited Combination Fails To Disclose Or Suggest The Claimed Invention 

The Examiner errs in rejecting claims 1-3 and 5-30 as being obvious over the 
combination of Sharp and Barnes. Sharp discloses a web-based system that allows 
manufacturers and distributors of brand products to participate in the e-commerce marketplace 
without violating existing distribution channels. Customers' orders are allocated to 
manufacturers, distributors, and retailers according to distribution channel protocols defined by 
the manufacturer. (Sharp, Abstract.) The allocation is in accordance with a distribution-channel 
conflict resolution scheme specified by the product's manufacturer. (Sharp, column 3, lines 22- 
25; column 4, lines 12-15.) The manufacturer in Sharp is the supplier (i.e., vendor) of the goods, 
and the distributors and retailers (i.e., the manufacturer's customers) are each a part of the supply 
chain providing the goods to the customer who placed the order. Thus, in Sharp it is the vendor 
who determines the relationship and selects the customers . 

Barnes discloses an electronic procurement system "which permits any buyer and 
supplier organizations to establish an electronic commerce relationship with each other without 
regard to other establishments or enterprises, that may likewise establish electronic commerce 
relationships with the same or other buyer and supplier organizations." (Barnes, column 3, lines 
31-37.) In contrast to the claimed invention, Barnes discloses buyers and suppliers entering into 
relationships without regard for disrupting existing relationships between customers and vendors . 

Appl. No.: 09/869,538 

Pre- Appeal Brief Request for Review 

Reply to Office Action of April 6, 2005 


Docket No. : 02637/ 100F581-US2 

In the present application, the claimed inventions are directed to methods which 
introduce a host-selected vendor to a customer, upon a prescribed condition, "without disrupting 
existing relationships between the customer and its vendors." (Claim 1, preamble.) Claim 1 
includes the step of "obtaining at the host Web site relationship-data which relates the request to 
one or more vendors selected by the customer." Thus, the claimed invention protects 
relationships between customers (who place orders) and vendors from being impacted by 
transactions conducted over the Internet. 

In contrast, Sharp addresses relationships between a manufacturer and its distributors and 
retailers (subordinate members in a supply chain), so as to fill the customer's order while 
preserving relationships according to an allocation scheme set by the manufacturer as the 
supplier (i.e., vendor) of the goods. Sharp discloses the vendor determining the allocation 
scheme without regard for the customer who placed the order, thus, setting the relationship in 
terms of vendor and its subordinates in the supply chain. This is in direct contrast to the claimed 
invention which seeks to preserve customer-vendor relationships selected by the vendor who 
places the order over the Internet. Sharp does not address existing customer-vendor 
relationships, nor does Sharp address customer-selected vendors as recited in the claimed 

In formulating the rejection the Examiner has turned the characters of Sharp on their 
head. The manufacturer (who does not sell to the customer) determines the preexisting 
relationship, and the distributors and retailers (who fill the customer's orders) are placed in the 
position of the customer. The Examiner's analysis strains the relevance of Sharp as a reference. 

Appl. No.: 09/869,538 

Pre- Appeal Brief Request for Review 

Reply to Office Action of April 6, 2005 


Docket No.: 02637/100F581-US2 

Further, Sharp discloses a customer seeking to buy a product landing at a product 
manufacturer's website, without a pre-existing relationship. The manufacturer arranges the 
distribution channel to supply the product to the customer. Claim 1 recites "conveying the 
request to the host-approved vendor only upon a prescribed condition," where dependent claim 
1 1 recites that "the prescribed condition is that no single one of the customer-selected vendors 
can fully satisfy the order." Thus, orders are fulfilled in the face of market failures. In contrast, 
Sharp and Barnes neither disclose nor suggest addressing market failures. 

With respect to the rejection of dependent claim 4, the Examiner takes Official Notice 
that it is well known for a customer to request a vendor quote. The subject matter of the Official 
Notice in combination with Sharp and Barnes does not disclose, nor suggest, the invention of 
claim 4. 

B. There Is No Motivation To Combine The References 

The Examiner has not established a prima face case of obviousness for combining Sharp 
and Barnes. The Examiner has not established a motivation (a reason or suggestion) in the art 
that would lead an individual to combine the references. According to the Examiner, a person of 
ordinary skill in the art would look to modify Sharp in view of Barnes in order to extend Sharp to 
customer-selected vendor relationships, which the Examiner acknowledges is missing from 

Applicants submit that Sharp teaches away from Barnes. Sharp discloses a solution to 
the problem of distributing brand products through e-commerce by implementing a distribution- 
channel conflict resolution scheme determined by a manufacturer, so as not to violate existing 

Appl. No.: 09/869,538 

Pre-Appeal Brief Request for Review 

Reply to Office Action of April 6, 2005 


Docket No.: 02637/100F581-US2 

relationships with its suppliers. In Sharp, the manufacturer (i.e., vendor) sets the relationship 
with its distributors and retailers (i.e., customers on the supply side). This is in direct difference 
with the claimed invention which seeks to maintain customer-vendor relationships determined by 
the customer, who places an order for a product. 

Barnes discloses an e-commerce system where any buyer and any seller are able to 
establish relationships among themselves, without regard to pre-existing relationship data. 
Indeed, Barnes is not concerned with preserving customer-vendor relationships at all. Therefore, 
a person of ordinary skill in the art at the time of the invention would not look to Sharp and 
Barnes to solve the problem of not "disrupting existing relationships between the customer and 
its vendor" while "conveying [a customer] request ... to the customer-selected vendor," as 
recited in the claimed invention. 

Applicants believe that claims 1-30 are patentable over the combination of Sharp and 
Barnes. Accordingly, Applicants request that the present rejection be withdrawn and the claims 
be passed to allowance. 

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

Appl. No.: 09/869,538 

Pre- Appeal Brief Request for Review 

Reply to Office Action of April 6, 2005 

Dated: October 6, 2005 

Reg. No. 47,698 
Attorney for Applicants