Ex Parte 6473744 et al

Patent Trial and Appeal Board

Dec 31, 2013

90011296 (P.T.A.B. Dec. 31, 2013)

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.
90/011,296 10/22/2010 6473744 115191-006REX 7255
27189 7590 01/02/2014
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/02/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

ACACIA PATENT ACQUISITION LLC
Patent Owner and Appellant
____________________

Appeal 2013-010693
Reexamination Control 90/011,296
Patent No. US 6,473,744 B1
Technology Center 3900
____________________

Before JAMES T. MOORE, MARC S. HOFF, and
JEREMY J. CURCURI, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-3 and 28-36.
1
We have jurisdiction under 35 U.S.C. §§ 134(b) and
306.
We affirm.

1
Claims 4-27 have been confirmed.
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The ‟744 patent issued to David Tuck et al. on October 29, 2002, and
the real party in interest is Acacia Patent Acquisition LLC. The ‟744 patent
is an apparatus and method for trading electric energy in a common
marketplace that provides participants the ability to display buy and sell
offers to the other participants. The marketplace also allows the participants
to consummate a transaction for a quantity of electrical energy. The method
further allows the participants to curtail transactions and the delivery of the
electrical energy, if necessary (Abstract).
Claim 1 is exemplary of the claims on appeal:
1. A method for selling a quantity of electric energy
between at least two participants, said method comprising the steps of:

(a) connecting a first participant to a database display;

(b) connecting a second participant to the database display; and

(c) displaying a price for the quantity of electrical energy by;

(i) establishing a database of current hour offers; and

(ii) establishing a database of next hours offers.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Thomas W. Gedra, “Optical Forward Contracts for Electric Power
Markets,” (UMI 1991)(hereinafter “Gedra”).Throughout this decision, we
make reference to Appellant‟s Brief (“App. Br.,” November 13, 2012) and
the Examiner‟s Answer (“Ans.,” mailed March 20, 2013) for their respective
details.
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REJECTIONS
Claims 31-36 stand rejected under 35 U.S.C. § 112, second paragraph.
Claims 1-3 and 28-30 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Gedra.

ISSUES
Appellant argues that Gedra does not enable one of ordinary skill in
the art to make the claimed invention without undue experimentation (App.
Br. 5).
With respect to the § 102 rejection, Appellant argues that Gedra fails
to disclose connecting participants to a database display, displaying a price
for a quantity of electrical energy, or segmentation of offers by hour (App.
Br. 13-15).
Appellant‟s contentions present us with the following issues:
1. Would the disclosure in Gedra enable one of ordinary skill in the art
to make the claimed invention without undue experimentation?
2. Does Gedra disclose connecting participants to a database display?
3. Does Gedra disclose displaying a price for a quantity of electrical
energy?
4. Does Gedra disclose establishing a database of current hour offers
and establishing a database of next hour offers?
PRINCIPLES OF LAW
The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
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use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988); see also In re Wright, 999 F.2d 1557, 1561-
62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA
1971)) (The PTO bears the initial burden when rejecting claims for lack of
enablement.)
Factors to be weighed in determining whether a disclosure is in
compliance with the enablement requirement include: (1) the quantity of
experimentation necessary to practice the invention, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims. “Enablement is not precluded by
the necessity for some experimentation . . . . However, experimentation
needed to practice the invention must not be undue experimentation. The
key word is „undue,‟ not „experimentation.‟” Wands, at 736-37. The
analysis must consider all the evidence related to each of these factors, and
any conclusion of non-enablement must be based on the evidence as a
whole. Id.
ANALYSIS
§ 112, SECOND PARAGRAPH REJECTION
Appellant‟s proposed amendment of claims 31-36 to overcome this
rejection has not been entered. Appellant presents no further argument
directed to the merits of this rejection.
Accordingly, we will sustain pro forma the rejection of claims 31-36
under 35 U.S.C. § 112, second paragraph.
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ENABLEMENT
We have considered Appellant‟s remarks and the Examiner‟s
responses concerning the Wands factors, and we are not persuaded that
Gedra fails to enable one of ordinary skill in the art to make the invention
without undue experimentation (App. Br. 4).
With respect to the quantity of experimentation, we do not agree with
Appellant that Gedra “expressly acknowledges that its market could not be
implemented using communications and computational technologies of the
time” (App. Br. 5; emphasis omitted). We agree with the Examiner that the
meaning of Gedra‟s statement that “the ability to implement a market in
these contracts, or even to use them at all, depends critically on continued
technological improvement in communications and computation” (Gedra p.
5) is open to interpretation and may not necessarily mean that practicing the
invention is technologically infeasible. It may instead refer to the high cost
of implementing the market (see Ans. 13).
We are similarly unpersuaded by Appellant‟s allegation that Gedra
recognizes that the necessary technological advancements to implement the
Smart Grid market “were not expected to be available for „several decades‟”
(App. Br. 6; emphasis omitted). Gedra states only that “digital
communications media will become increasingly available and inexpensive
within the next several decades” (Gedra p. 2). Gedra‟s statement does not
communicate that the technology to implement the market was not available
at the time of writing.
Appellant‟s argument that Gedra does not disclose any of the
necessary infrastructure (App. Br. 7) is also unpersuasive. Rather, we agree
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with the Examiner that Gedra need not disclose the details of elements
known to one of ordinary skill in the art (Ans. 17). We agree with the
Examiner that the Patent Owner disclosed the use of a number of known off-
the-shelf items (general purpose computer, SVGA display, keyboard, mouse,
Ethernet interface, router interface to a WAN, and telephone lines) in the
„744 patent. We also agree with the Examiner that U.S. Patent No.
5,592,375 to Salmon, cited during prosecution, provides evidence that an
interactive electronic buyer-seller brokering system was known at the time
of invention (Ans. 18-19).
With respect to Appellant‟s argument that Gedra does not provide
direction or guidance (App. Br. 8), we reiterate our response to Appellant‟s
assertion, supra, that Gedra discloses no infrastructure. Appellant‟s
argument that Gedra provides no guidance as to how non-utility generators
are to be integrated into the Smart Grid is unpersuasive as it is not germane
to the claimed invention (see App. Br. 8; Ans. 19).
With respect to the alleged absence of working examples, we are not
persuaded by Appellant‟s repetition of the “several decades of technological
advancements” argument (App. Br. 9). Rather, we agree with the Examiner
that the prior art contains examples of infrastructure. Further, we note that
the Examiner cites to several sections in Gedra that contain examples (Ans.
22).
With respect to the complexity of the invention, we agree with the
Examiner that the declarations cited by Appellant contain only bare
statements that the invention is complex, without any supporting rationale
(Ans. 23). We further agree with the Examiner that Appellant admitted that
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the disclosure of the Salmon patent was known at the time of invention
(Ans. 24).
With respect to the level of development of the prior art, we agree
with the Examiner that the state of the prior art, for example as evidenced by
Salmon, was sufficient to enable the elements of Gedra relied upon in the
rejection (Ans. 24).
We agree with the Examiner that the cited prior art and background of
the „744 patent represent the level of ordinary skill in the art (Ans. 25). The
inventor of the „744 patent‟s particular education and experience are one
indicator, but far from the only indicator, of the level of skill (App. Br. 11).
We are not persuaded by Appellant‟s arguments concerning the
unpredictability of the art (i.e., of computer-implemented marketplaces in
electrical energy), because we agree with the Examiner that the proffered
arguments are directed to the business and regulatory environment around
electrical generation and distribution, rather than technological progress
(Ans. 25-26).
Considering together all of the evidence relating to the Wands factors,
we conclude that Appellant has not established that Gedra‟s disclosure fails
to enable the claimed invention.
§ 102 REJECTION OF CLAIMS 1-3 AND 28-30
We are not persuaded by Appellant‟s argument that Gedra fails to
disclose connecting participants to a database display (App. Br. 13). The
Examiner finds, and we agree, that “[t]he utility is assumed to offer a menu .
. . of options to each consumer” (Gedra p. 21; Ans. 27). In combination with
Gedra‟s statement that “[c]ommunications is necessary to communicate
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prices and contract orders” (Gedra p. 90), we agree with the Examiner‟s
finding that Gedra inherently teaches connecting a plurality of participants to
a display of information from a common database (Ans. 4-5). Appellant‟s
argument that, as of the filing date of the „744 patent, the term “menu”
would not suggest a display interface, is likewise unpersuasive.
Appellant‟s argument that Gedra fails to disclose displaying a price
for a quantity of electrical energy (App. Br. 14) is also unpersuasive to
establish Examiner error. We find supra that Gedra inherently teaches
displaying prices. Further, the menu of options offered by the utility to each
customer (Gedra p. 21) includes the parameters p, s, and r, “where p is the
price of the service (paid whether electricity is delivered or not), s is the
service charge (paid only when service is actually provided), and r is the
probability of service” (Id.). Contrary to Appellant‟s allegation that none of
Gedra‟s menu items include a price for a quantity of electrical energy (App.
Br. 14), we find that service charge s (“paid only when service is actually
provided”) corresponds to the recited “price for the quantity of electrical
energy.”
We are similarly unpersuaded by Appellant‟s contention that Gedra
fails to disclose segmentation of offers by hour (App. Br. 15). We agree with
the Examiner‟s finding that “Gedra teaches both trading to occur hourly . . .
and the trading of an hour‟s worth of power” (Ans. 31; Gedra p. 95). With
respect to hourly trading, in Gedra § 5.8, “Discrete Trading Times,” Gedra
suggests that trading could only occur at discrete times, that spot prices
might be updated every hour, and that optional forward contracts might be
traded every hour” (Gedra p. 95). With respect to trading of an hour‟s worth
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of power, Gedra gives an example whereby “a consumer may have a 1 MW
load which, if not called will operate for the entire 1 hour period” (Gedra p.
95; emphasis added). We agree with the Examiner that these disclosures
show that Gedra contemplates selling one-hour increments of electrical
energy, and that Gedra necessarily teaches the trading of a “current hour” of
electrical energy, a “next hour,” and a plurality of other hours. Taken
together with the other disclosures discussed, we find that Gedra teaches the
recited “establishing a database of current hour offers” and “establishing a
database of next hour offers.”
We find that the Examiner did not err in rejecting claims 1-3 and 28-
30 as being anticipated by Gedra. We sustain the rejection.
CONCLUSIONS
1. The disclosure in Gedra enables one of ordinary skill in the art to
make the claimed invention without undue experimentation.
2. Gedra discloses connecting participants to a database display.
3. Gedra discloses displaying a price for a quantity of electrical
energy.
4. Gedra discloses establishing a database of current hour offers and
establishing a database of next hour offers.
ORDER
The Examiner‟s rejection of claims 1-3 and 28-36 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

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AFFIRMED

lb

THIRD PARTY REQUESTER:

Thomas A. Rozylowicz
FISH & RICHARDSON, P.C.
P.O. Box 1022
Minneapolis, MN 55440-1022

PATENT OWNER:

PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B Street
Suite 2200
San Diego, CA 92101