Appeal No. 2006-2541
Application No. 09/832,438
while the Pappalardo reference teaches determining if the business
request generates a profit or a penalty for the service provider (Entire
Document). Therefore, when combined, the Smith and Pappalardo
references teach each of the limitations of the Appellant’s [sic]
invention.
We disagree with the Examiner’s rationale. Initially, we note that
each of independent claims 1, 15 and 29 contain an ambiguity and therefore
pursuant to 37 C.F.R. § 41.50(b) we enter a new ground of rejection under
35 U.S.C. §112 second paragraph, as the scope of the claim cannot be fully
determined. Specifically, Claim 1 recites “wherein calculating a total profit
includes, for each request received by the computing system for the data
network site, determining whether processing of the request generates a
revenue or a penalty, wherein revenue is generated when an allocation of
resources is such that the request is processed in accordance with the service
level agreement and a penalty is generated when the allocation of resources
is such that the request is not processed in accordance with the service level
agreement.” Thus, claim 1 recites that for each request a determination is
made as to whether the request will generate a profit or a revenue, i.e. one
request generates one or the other but not both. However, claim 1 further
recites “wherein the total profit is obtained by subtracting the penalty from
the revenue for each request” which contradicts the earlier limitation as it
implies that for a request both a profit and a penalty are generated.
Independent claims 15 and 29 contain similar limitations. Thus, we are not
able to ascertain the scope of the claims and we now reject claims 1, 3
through 15, 17 through 29 and 31 under 35 U.S.C. §112 second paragraph.
Also, as we are unable to ascertain the scope of the claims we will not
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