Ex Parte Davis (BPAI Aug. 5, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Crawford, affirmed-in-part a rejection of claims relating to a method and implementation for managing a bid/auction over the web or any of the of electronically-enabled procurement process.

One claim construction issue arose in this appeal concerning whether a prior art reference disclosed "selecting a plurality of sellers to each respectively provide at least one competitive bid for the predetermined transaction, wherein the sellers are selected from an appropriate category of a membership database of sellers so as to match buyer requirement information with appropriate seller expertise."

In its decision, the BPAI cited to a dictionary to define the terms "membership" (defined as "the body of members") and "member" (defined as "one of the individuals comprising a group" and "one of the elements of a class or set"). The BPAI subsequently found that the prior art disclosed "identifying suppliers who were predetermined as being 'qualified' to supply particular items for the buyer" and also found that each individual qualified supplier was a "member," therefore the collection of individual qualified suppliers defined a "body of members" or "membership." The claim rejection was affirmed.

The interesting part of this decision lies in the particular dictionary used by the BPAI. The dictionary used was the Merriam-Webster's Collegiate Dictionary, Eleventh Edition, 2007. However, the patent application at issue (10/044,430) was itself filed on January 11, 2002 off of a provisional application filed on January 12, 2001, a full six years before publication of the dictionary used by the BPAI in this appeal. As was noted in a post last month on this blog, the Federal Circuit has stated that the "ordinary and customary meaning of a claim term is the meaning the term would have to a person of ordinary skill in the art at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (emphasis added). The BPAI again used a dictionary published years after the filing date of the application, as it did last month in Ex parte Courtney (click here to see this blog's commentary on that decision).

The author has confirmed that in this case, as in Ex parte Courtney, the definitions from the same dictionary (albeit the tenth edition published in 1997) were identical to those in the dictionary as published in 2007. However, there may be future cases where applicable definitions change over time and using the wrong dictionary could therefore affect the result.

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