Ex Parte 7293029 et al

Patent Trial and Appeal Board

Sep 30, 2013

95001392 (P.T.A.B. Sep. 30, 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.
95/001,392 07/08/2010 7293029 6115-0102L 5176
2292 7590 09/30/2013
BIRCH STEWART KOLASCH & BIRCH, LLP
PO BOX 747
FALLS CHURCH, VA 22040-0747
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/30/2013 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
____________

SAP AMERICA, INC.
Requester

v.

WELLOGIX TECHNOLOGY LICENSING LLC
Patent Owner
____________

Appeal 2013-005566
Reexamination Control No. 95/001,392
Patent 7,293,029 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and
STANLEY M. WEINBERG, Administrative Patent Judges.

SIU, Administrative Patent Judge.
Opinion Concurring-In-Part filed by POTHIER, Administrative Patent
Judge.

DECISION ON APPEAL
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Patent No. 7,293,029 B2

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Patent Owner Wellogix Technology Licensing LLC appeals under 35
U.S.C. §§ 134 and 315 (2002) the Examiner’s decision to reject claims 1-24
under certain grounds as discussed below. Requester SAP America, Inc.
appeals under U.S.C. §§ 134 and 315 (2002) the Examiner’s decision not to
reject claims 11-24 under certain other grounds as discussed below. We
have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). An oral hearing
was conducted on September 11, 2013. The transcript of the oral hearing
will be made of record in the future.

STATEMENT OF THE CASE
This proceeding arose from a request by SAP America, Inc. for an
inter partes reexamination of U.S. Patent 7,293,029 B2, titled “Modular and
Customizable Process and System for Capturing Field Documentation Data
in a Complex Project Workflow System,” and issued to Warren Scott Cope
on November 6, 2007 (the ’029 patent).
The ’029 patent describes business processes and systems (col. 1,
l. 46).
Claim 1 on appeal reads as follows:

1. A processing system for managing actual data compiled
in a field document, the actual data documenting the performance of
at least one component of a complex project, the system providing a
platform for a workflow process designed to facilitate the preparation
for and performance of the complex project conducted between
parties, the processing system comprising:
a memory for storing a modular data array, the modular data
array further comprising:
a standard data array module correlating to first,
standard data input interface of the field document, the
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first standard data input interface being used for
receiving input of standard actual data to populate the
standard data array module; and
one or more optional data array module correlating
to a second optional data input interface of the field
document, the second optional data input interface being
used for receiving input of optional data to populate the
at least one optional data array module;
wherein one or more optional data array module
and the correlative data input interface are added to the
workflow process as a conjunct to the standard data array
and correlative standard data input interface;
a processor controlling the first and second interfaces and the
memory;
a communication network connecting the parties to the
processing system; and
a third interface connected to the communication network for
recording an action of at least one of the parties taken with respect to
the field document.

Requester proposes rejections of the claims over the following prior
art references:
Livesay WO 01/67354 A1 Sept. 13, 2001

Elaine Mormel, “Microsoft Project 2000 Bible,” IDG Books Worldwide,
Inc., 2000 (“Project”).

Cary N. Prague et al., “Microsoft Access 2000 Bible,” IDG Books
Worldwide, Inc., 1999 (“Access”).

Grady Booch, “Object-Oriented Analysis and Design With Applications,”
Second Edition, 1994 (“Booch”).

Patent Owner appeals the Examiner’s rejection of the following
claims over the following rejections:
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Claims 1-24 under 35 U.S.C. § 102(b) as being anticipated by any one
of Project or Access.
Claims 1 and 10 under 35 U.S.C. § 102(b) as being anticipated by
Booch.
Claims 2-10 under 35 U.S.C. § 103(a) as being unpatentable over
Project and any one of Livesay or Booch.
Claims 2-24 under 35 U.S.C. § 103(a) as being unpatentable over
Access and Livesay.
Claims 11-24 under 35 U.S.C. § 112, 1st paragraph as failing to
comply with the written description requirement.
Claims 13-15, 19, and 22-24 under 35 U.S.C. § 112, 1st paragraph as
failing to comply with the enablement requirement.1
Claims 11-24 under 35 U.S.C. § 112, 2nd paragraph.

Requester appeals the Examiner’s determination to accord patentable
weight to various language in claims 1-24 (3PR App. Br. 11).
Requester also files an appeal to contest the Examiner’s possible
confirmation of claims 11-24 under 35 U.S.C. § 112, second paragraph
which, Requester contends, are impermissible mixed claims (3PR App. Br.
11-12, 20-23). The Examiner clarified his position in the Answer that
claims 11-24 are indefinite as being mixed claims (Ans. 2).
ISSUE
Did the Examiner err in rejecting claims 1-24?

1 The Examiner’s Answer clarifies that claims 13-15, 19, and 24 fails to
comply with the enablement requirement as set forth in the Requestor’s
Comments filed February 23, 2011. See Ans. 2.
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PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Claims 11-24 – Written Description (Patent Owner’s appeal)2

2 The Requester proposes a rejection of claims 11-24 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement
(Requester’s Comments filed February 23, 2011, pages 32-36). The
Examiner states that the proposed rejection “IS being adopted essentially as
proposed on pages 32-36” (RAN 36). The Answer somewhat inconsistently
includes claim 10 in this rejection. (Ans. 2). Based on the Examiner’s
statement that the Requester’s proposed rejection “IS being adopted,” we
assume that the Examiner rejects claims 11-24, but not claim 10, under 35
U.S.C. § 112, first paragraph as lacking written description.
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Claim 11
The Examiner finds that the ’029 Specification fails to disclose “the
transmitting or storing aspects of recited ‘data arrays’” (Ans. 1-2,
incorporating RAN 22-23). Requester argues that the Specification fails to
disclose “a recorded action being transmitted to a ‘modular data array’ or
stored in a ‘standard data array module’” (3PR Resp. Br. 16). Claim 11
recites that the recorded action is transmitted via the communication
network and stored in the standard data array module. Patent Owner argues
that the ‘029 Specification discloses that “a Field Document may be
submitted to the operator for approval” (PO App. Br. 27 (citing the
Specification at col. 6, ll. 30-35)). Patent Owner does not indicate, however,
where in the Specification transmitting a recorded action to a modular data
array or storing the recorded action in a standard data array module is
disclosed with reasonable clarity. We agree with the Requester and
Examiner that the Specification fails to provide written description support
for claim 11.

Claim 12
Claim 12 recites that the action is recorded by the field document, is
transmitted via the communication network to the modular data array, and is
stored in an optional data array module. The Requester argues that the ’029
Specification fails to disclose “an action being recorded ‘by the field
document’” (3PR Resp. Br. 17). The Examiner concurs with the Requester
(Ans. 1-2, incorporating RAN 23-24). Patent Owner argues that the
Specification discloses that “a Field Document may be submitted to the
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operator for approval,” “logging into an Internet . . . based system,” and an
operator receiving a “notification message . . . that a field document has
been prepared” (PO App. Br. 28, citing the Specification at col. 6, ll. 37-38;
col. 24, ll. 11-13; and col. 35, ll. 62-67).
The Specification discloses “communicating a Field Document . . . to
an operator” (col. 6, ll. 38-39); an Operator receiving “a message that a new
Field Document has been prepared” (col. 24, ll. 12-13); and storing “the
status of the Field Document as being ‘approved by operator’” (col. 35, ll.
65-66). None of these cited passages, however, discloses with reasonable
clarity an action being recorded by the field document, transmitted to the
modular array, and stored in an optional data array module, as recited in
claim 12.
We agree with the Requester and Examiner that the Specification fails
to provide written description support for claim 12.

Claim 13
Requester argues that the Specification fails to disclose “an ‘optional
data module and the correlative respective data input interface’ being
‘selected and activated’” (3PR Resp. Br. 17). In particular, Requester argues
that the Specification merely discloses “modify” and “submit” but does not
disclose “activation” (id.). The Examiner concurs with the Requester (RAN
24). Patent Owner argues that the Specification discloses “a workflow
history tracking tool,” that a field document “may be modified and then
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submitted,” and that “Fig. 16 makes it clear that a user can be ‘remote from
the processing system’” (PO App. Br. 28, citing col. 35, ll. 30-45).
The Specification discloses that the action of creating a new Field
Document is recorded as “Field Document created” while “a system
database may indicate the status of Field Document as being unsubmitted”
(col. 35, ll. 30-34). The Specification also discloses that if the Field
Document is modified before submission to the system, actions are
identified as “current working copy of Field Document” (col. 35, ll. 35-38).
Finally, the Specification discloses the database being recognized as
“submitted” while the workflow path indicates that the Field Document was
“submitted to the operator” when the Field Document is submitted for
approval (col. 35, ll. 35-45). Patent Owner does not persuasively
demonstrate how the Specification indicating the status of a Field Document
as “Field Document created,” “unsubmitted,” “current working copy of Field
Document,” or “submitted” supports the claim limitation of selecting and
activating an optional data array module and correlative respective data
input interface for conjunctive addition to the standard data array module
and correlative standard data input interface by a user remote from the
processing system, as recited in claim 13.
We agree with the Requester and Examiner that the Specification fails
to provide written description support for claim 13.

Claims 14-15
Requester argues that the Specification fails to disclose “that the field
documents used by the offline manager include either standard actual data or
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optional data” (3PR Resp. Br. 17). The Examiner concurs with the
Requester (Ans. 1-2, incorporating RAN 25). Patent Owner argues that the
Specification discloses an “offline manager” (PO App. Br. 28, citing
Specification at col. 39-42).
The Specification discloses an “offline manager that allows a user to
work with a Field Document” in which “a user can enter information . . . or
make selections” (see e.g., col. 39, ll. 65 – col. 40, l. 5). Hence, the
Specification discloses an offline manager using a field document and a user
entering information (or actual or optional data) into the field document of
the offline manager.
We agree with Patent Owner that the Specification discloses with
clarity to an ordinarily skilled artisan the disputed feature of claim 14.
Requester does not provide additional arguments in support of the rejection
of claim 15. Therefore, Requester has not persuasively demonstrated that
the Specification fails to disclose the disputed feature of claim 15.

Claims 16-19
The Examiner finds that the Specification fails to disclose comparing
“parameters” with “actual data” (Ans. 1-2, incorporating RAN 26). Patent
Owner argues that the Specification discloses a service provider that
provides data by entry into field documents (PO App. Br. 29, citing
Specification at col. 13, ll. 44-53), original Bid Awards amounts as
“preexisting parameters” (PO App. Br. 29, citing Specification at col. 24, l.
18), and that “comparing” and “reconciling” are “described throughout the
‘029 patent” (PO App. Br. 29). For example, the Specification discloses
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“review [of] the service provider’s cost entries for the project and
compar[ing] them to the original Bid Award amounts . . .” (col. 24, ll. 17-
18). Requester argues that the Specification discloses “Bid Awards
amounts,” which Requester characterizes as an “estimate” that allegedly
differs from “parameters” as recited in claims 16-19 (3PR Resp. Br. 18).
One of ordinary skill in the art would have understood the term
“parameters” to include any quantity or value. Hence, one of ordinary skill
in the art would have understood a “Bid Award amount” to constitute a
“parameter,” because the “Bid Award amount” would have represented
either a quantity or a value. While Requester argues that “Bid Award
amount” is an “estimate” and would not have been understood by one of
ordinary skill in the art to be a “parameter,” Requester does not does not
provide a definition of any of the terms “parameters” or “Bid Awards
amounts” as would have been understood by one of ordinary skill in the art
or how any such definitions would have differed from each other.
We agree with Patent Owner that the Examiner and Requester have
not persuasively demonstrated that the Specification fails to disclose the
recited limitations of claims 16 and dependent claims 17-19 for similar
reasons.
Claims 20-21
Requester argues that the Specification fails to disclose “approval of a
field document being ‘based on the one or more parameters and the standard
actual data’” because, according to Requester, “the Bid Award reflects
‘estimates’ and not ‘parameters’” (3PR Resp. Br. 19). Patent Owner argues
that the Specification discloses original Bid Awards amounts (PO App. Br.
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29, citing col. 24, l. 18), reconciliation of field documents (PO App. Br. 29,
citing col. 30), obtaining data totals (PO App. Br. 29, citing col. 31, ll. 15-
19), “approval,” and making a decision based on a tolerable difference (PO
App. Br. 29, citing Figs. 14A and 14B, steps 1408 and 1436). Claim 20
recites specifying parameters by a first party that describe the project,
inputting data by a second party into the field document, approving the field
document by the first party based on the parameters and data, revising the
field document when the field document is not approved, and resubmitting
the revised field document to the workflow process.
While Requester argues that a “Bid Award” is an “estimate” and not a
“parameter,” Requester has not persuasively demonstrated a difference
between a “Bid Award” estimate and a “parameter.” In both cases (i.e., a
“Bid Award” or a “parameter”), a quantity or value is utilized.
We agree with the Patent Owner that the Specification provides
written description support for claim 20 and dependent claim 21 for similar
reasons.

Claim 22
The Examiner finds that the Specification fails to disclose a well
drilling configuration (Ans. 1-2, incorporating RAN 28). Patent Owner
argues that “it is clear that the well ‘drilling’ configuration is supported” (PO
App. Br. 29, citing Specification at col. 1, l. 61 and Fig. 1). While Requester
argues that the Specification does not disclose specifying a well drilling
configuration (3PR Resp. Br. 20), Requester does not persuasively indicate
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how the step of “Specify Well Configuration” as disclosed in the
Specification (e.g., Fig. 1) differs from the claim limitation of “specifying a
well drilling configuration.”
We agree with the Patent Owner that the Specification provides
written description support for claim 22.

Claims 23-24
The Examiner finds that the Specification fails to disclose specifying
an oil well drilling configuration, gas wells, or specifying a gas well drilling
configuration (Ans. 1-2, incorporating RAN 29). Patent Owner argues that
the Specification discloses these features (PO App. Br. 30, citing
Specification at col. 1, ll. 56-66, col. 13, col. 10, l. 57, and Fig. 1). Claim 23
recites that the configuration is an oil well drilling configuration and claim
24 recites that the configuration is a gas well drilling configuration. The
Specification discloses a system used in “various operations and processes . .
. for the oil and gas industry” (col. 10, ll. 50-53), the operations and
processes including “oil and gas exploration and production” (see e.g., col.
10, l. 57). We agree with Patent Owner that one of ordinary skill in the art
would have understood that a system used for oil and gas exploration and
production would include a system with an oil or gas well drilling
configuration. Thus, the disclosure conveys with reasonable clarity to an
ordinarily skilled artisan that the Patent Owner had possession of the
disputed claimed limitation in claims 23 and 24.
We agree with the Patent Owner that the Specification provides
written description support for claims 23 and 24.
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In summary, we affirm the Examiner’s rejection of claims 11-13, but
reverse the Examiner’s rejection of claims 14-24 under 35 U.S.C. 112,
1st paragraph as failing the written description requirement.

Claims 13-15, 19, and 22-24 – Enablement (Patent Owner’s appeal)
Patent Owner argues that the Examiner “does not consider at all the
required element of undue experimentation and the knowledge of one of
ordinary skill in the art” (PO App. Br. 31). Requester argues that “the
statement that a claim is not enabled inherently concludes that undue
experimentation would be [required] since that is the standard of
enablement” (3PR Resp. Br. 21). We agree with Requester that a showing
of undue experimentation would be required to demonstrate that a claimed
invention fails the enablement requirement. However, we agree with the
Patent Owner that the Examiner and Requester have not persuasively
demonstrated that undue experimentation would have been required for one
of ordinary skill in the art to make or use the claimed invention in view of,
for example, the level of skill in the art, the state of the prior art, the
predictability of the art, etc.
We reverse the Examiner’s rejection of claims 13-15, 19, and 22-24
under 35 U.S.C. 112, first paragraph as failing the enablement requirement.

Claims 11-24 – 35 U.S.C. 112, 2nd paragraph (Appeals by Patent
Owner and Requester)

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Patent Owner argues that “[t]he broad allegation regarding ‘mixed’
claims raised by the RAN does not apply to claims 11-24” (PO App. Br. 33).
Requester argues that claims 11-24 are indefinite under 35 U.S.C.
§ 112, 2nd paragraph because “they violate the requirement that each claim
be directed to a single class of invention – either an apparatus or a method,
but not both” (3PR App. Br. 23). The Examiner states that “[t]he examiner
agrees with requester. The new claims appear to improperly mix apparatus
and method claims” (Ans. 1-2, incorporating RAN 35).3 We agree with the
Examiner that claims 11-24 are indefinite under 35 U.S.C. § 112, second
paragraph because they recite mixed claims.
Claim 1 recites a product, namely, a “processing system.” Claims 11-
24, each of which depends from claim 1, recite method steps of using the
product. Therefore, each of claims 11-24 recite both a product (or
apparatus) and the method steps of using the product or apparatus. Patent
Owner contends that these claims are not impermissible mixed claims
because “claims 11-24 do not mix statutory classes of invention” (PO Resp.
Br. 11).
We agree that claims 11-24 are indefinite under 35 U.S.C. § 112, 2nd
paragraph for at least the reasons set forth by Requester (3PR App. Br. 22-
23) and therefore conclude that the Examiner did not err in rejecting claims
11-24 as indefinite under 35 U.S.C. § 112 2nd paragraph.
Affirmance of the rejection for claims 11-24 under 35 U.S.C. § 112,
2nd paragraph, because they recite mixed claims renders it unnecessary to

3 The Examiner confirms that claims 11-24 are rejected under 35 U.S.C. §
112, 2nd paragraph as being indefinite for “the proposed mixed claim
indefiniteness” (Ans. 2).
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reach the propriety of the Examiner’s decision to reject any of those claims
under 35 U.S.C. § 112 2nd paragraph on a different basis. Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009).

Claims 1-24 – Project Reference – Anticipation
Patent Owner argues that Project fails to disclose “that a ‘project file’
is a database” or that “the .mpp file ‘is a database’” (PO App. Br. 9). Hence,
Patent Owner argues that Project fails to disclose a database. However, as
the Examiner (RAN 9) and Requester (3PR Resp. Br. 4) point out, claim 1
does not recite a “database.” In any event, claim 1 recites a modular data
array as an entity for receiving data. We agree with the Examiner and
Requester that Project discloses this feature for at least the reasons set forth
by the Examiner (RAN 9) and Requester (3PR Resp. Br. 4-5). Patent Owner
does not persuasively demonstrate that Project fails to disclose an entity for
receiving data and therefore has not demonstrated a difference between
Project and the “modular data array” as recited in claim 1.
Patent Owner argues that Project fails to “teach or suggest a ‘data
array module’ as claimed” (PO App. Br. 10). We disagree with Patent
Owner for at least the reasons set forth by the Examiner (RAN 5-6) and
Requester (3PR Resp. Br. 5). For example, while Patent Owner argues that
Project fails to disclose a “database table” (PO App. Br. 10)4, Patent Owner
does not demonstrate that the disputed claims include a “database table.”
Claim 1, for example, does not recite “database table.”

4 Patent Owner argues that Project discloses “that a view may contain a
table” but that the “table” of Project is “not a ‘database table’ [or] . . . ‘data
array modules’” (PO App. Br. 10).
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In any event, we agree with the Examiner (RAN 5-6) and Requester
(3PR Resp. Br. 5) that Project discloses a data structure (e.g., “data array
module”) that contains data. Even assuming that Project discloses “tables,”
as Patent Owner contends5, Patent Owner does not persuasively demonstrate
a difference between the data structures of Project and data structures (or
“data array module”) recited in claim 1, for example.
Patent Owner argues that Project fails to disclose a field document
(PO App. Br. 11-12). Claim 1 recites data compiled in a field document, the
data documenting the performance of at least one component of a complex
project. For at least the reasons set forth by the Examiner (RAN 5-6) and
Requester (3PR Resp. Br. 6-7), we agree that Project discloses the field
document as recited in claim 1, for example.
Patent Owner argues that “[n]othing in the claims supports [the]
allegation that ‘the’ field document . . . changes over time” (PO App. Br. 11-
12). We agree with Patent Owner that claim 1, for example, does not require
that the field document changes over time (PO App. Br. 12). We therefore
are not persuaded by Patent Owner’s implied argument that Project fails to
disclose a field document that changes over time.
Patent Owner argues that Project fails to disclose a “field document
that “includes ‘a standard data input interface’ which is correlated with a
‘standard data array module’” (PO App. Br. 12). Claim 1, for example,
recites a modular data array comprising “a standard data array module
correlating to first, standard data input interface.” Claim 1 does not recite a

5 Patent Owner cites various passages from the Project reference (PO App.
Br. 10, citing Project at pp. 133-135, 139-174, and Figs. 6-40).
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“field document” that includes a standard data input interface which is
correlated with a standard data array module, as Patent Owner contends.
Thus, even assuming Patent Owner’s argument to be correct that Project
fails to disclose a field document that includes a standard data input interface
which is correlated with a standard data array module, we cannot agree with
Patent Owner that Project fails to disclose the field document as recited in
claim 1.
Patent Owner appears to argue that, while Project discloses “a ‘voice
mail’,” “a hand-written ‘note’,” “an ‘e-mail’,” and “a data file,” Project fails
to disclose a “field document” as recited in claim 1 (PO App. Br. 12).
However, Patent Owner does not persuasively demonstrate a difference
between any of a voice mail, hand-written note, e-mail, or data file and the
“field document” as recited in claim 1, for example.Regarding claims 16-24,
Patent Owner argues that Project fails to disclose claims 16-24 (PO App. Br.
13-14). Requester states that “those claims add no language that is entitled
to patentable weight” (3PR Resp. Br. 8).
Our reviewing court has held that non-functional descriptive
material cannot lend patentability to an invention that otherwise would have
been unpatentable over the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). The Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
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between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994).
In the present case, claim 16 (and claims 17-19, which depend
therefrom) recites a process that compares data with preexisting parameters.
Claim 20 (and claims 21-24, which depend therefrom) recites steps in a
process including specifying parameters, inputting data into the field
document, approving the field document, revising the field document, and
resubmitting the revised field document. We disagree with Requester that
claim 16 and claim 20 (and claims 17-19 and 21-24, which depend from
claim 16 or claim 20) recite only non-functional descriptive material,
because claims 16 and 20 recite specific steps in a process. As described
above, Patent Owner states that Requester has not demonstrated that Project
discloses the limitations recited in claims 16-24 while Requester argues that
the limitations recited in claims 16-24 are non-functional descriptive
material and should not be accorded patentable weight. Because Requester
has failed to demonstrate persuasively that Project discloses each feature of
claims 16-24 and we disagree with Requester that claims 16-24 recite only
non-functional descriptive material, we cannot agree with Requester that
Project discloses each feature of claims 16-24.
Patent Owner does not provide additional arguments in support of
claims 2-15 with respect to the Project reference. We affirm the Examiner’s
rejection of claims 1-15 as anticipated by Project, but reverse the Examiner’s
rejection of claims 16-24 as anticipated by Project.
Affirmance of the rejection for the above-referenced claims 1-15
based on the Project reference renders it unnecessary to reach the propriety
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19
of the Examiner’s decision to reject those claims on a different basis as well
as the Requester’s appeal of the Examiner’s decision to accord patentable
weight to various recitations in those claims. Cf. In re Gleave, 560 F.3d
1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety of the
rejection of those claims over Access, Booch, Livesay, or Project in
combination with any of Livesay or Booch.

Claims 16-24 – Access Reference (Anticipation); Access and Livesay
(Obviousness)

Patent Owner argues that Access fails to disclose claims 16-24 (PO
App. Br. 20-21). Requester argues that the “rejection of claims 16-24 as
anticipated by Access is proper because those claims add no language that is
entitled to patentable weight” (3PR Resp. Br. 12). For at least the previously
stated reasons, we disagree with Requester.
Patent Owner argues that the combination of Access and Livesay fails
to disclose or suggest the features recited in claims 16-24 (PO App. Br. 26).
Requester argues that “Access anticipates claim 1” (3PR Resp. Br. 14) but
fails to persuasively demonstrate that Access teaches or suggests every
feature of claim 16 and claim 20 (or claims 17-19 and 21-24), which depend
from claim 1 and recite additional features not recited in claim 1. Nor does
Requester demonstrate or assert that Livesay cures any possible deficits of
the Access reference.
We therefore cannot agree with Requester that the combination of
Access and Livesay discloses or suggests claims 16-24.

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CONCLUSION
The Examiner did not err in rejecting claims 1-24.
DECISION
We affirm the Examiner’s decision to maintain the rejection of
claims 1-15 under 35 U.S.C. § 102(b) as being anticipated by Project; claims
11-13 under 35 U.S.C. § 112, first paragraph; and claims 11-24 under 35
U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision to reject claims 14-24 under 35
U.S.C. § 112, first paragraph as failing the written description requirement;
claims 13-15, 19, and 22-24 under 35 U.S.C. § 112, first paragraph as failing
the enablement requirement; claims 16-24 as anticipated by either Project or
Access; and claims 16-24 as obvious over Access and Livesay.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED

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PATENT OWNER:

BIRCH STEWART KOLASCH & BIRCH, LLP
PO BOX 747
FALLS CHURCH VA 22040-0747

THIRD PARTY REQUESTER:

KLARQUIST SPARKMAN, LLP
ONE WORLD TRADE CENTER
121SW SALMON STREET
SUITE 1600
PORTLAND OR 97204

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POTHIER, Administrative Patent Judge, CONCURRING-IN-PART.
I agree with the Majority’s decision. I write separately concerning the
rejection of claims 11-24 under 35 U.S.C. § 112, second paragraph, for
which I concur only in result.