10936541 (B.P.A.I. Aug. 27, 2012)

Ex Parte Chen et al

Board of Patent Appeals and InterferencesAug 27, 2012

10936541 (B.P.A.I. Aug. 27, 2012)

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. 10/936,541 09/09/2004 Justin Chen 11884/409601 8460 23838 7590 08/28/2012 KENYON & KENYON LLP 1500 K STREET N.W. SUITE 700 WASHINGTON, DC 20005 EXAMINER ABDI, KAMBIZ ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 08/28/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JUSTIN CHEN, TIMOTHY CROSSETT, and ARMIN RISCH ___________ Appeal 2010-011980 Application 10/936,541 Technology Center 3600 ____________ Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011980 Application 10/936,541 2 STATEMENT OF THE CASE Justin Chen et al., (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 THE INVENTION This invention is “directed to accounting for the production or sale of products sold by companies operating under production sharing contracts, and sometimes joint ventures or other multiple entity arrangements.” Spec. para. [01]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A programmable computer containing instructions that when executed comprise: [A] identifying a product lift from a first shared storage facility storing products produced by a plurality of entities, the products being commingled in the first shared storage facility; [B] creating a first lifting product group of two or more entities associated with a product comprising the product lift, the two or more entities being selected from among the plurality of entities; 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Dec. 18, 2009) and Reply Brief (“Reply Br.,” filed Jun. 14, 2010), and the Examiner’s Answer (“Ans.,” mailed Apr. 14, 2010). Appeal 2010-011980 Application 10/936,541 3 [C] determining an entitlement percentage for each entity in the first lifting product group, comprising: [C.1] calculating an estimated entitlement percentage for the each entity in the first lifting group using an estimated price of the product and an estimated production of the product over a predetermined time period; [C.2] monitoring an actual production of the product by the two or more entities of the first lifting group over the predetermined time period; [C.3] adjusting an actual price of the product to account for arm's length and non-arm's length transactions; and [C.4] calculating an actual entitlement percentage for the each entity in the first lifting product group for the predetermined time period using the estimated entitlement percentage, the actual production of the product, and the adjusted actual price of the product; and [D] allocating the product lift and a corresponding production revenue for the predetermined time period between the two or more entities of the first lifting product group using the actual entitlement percentage. (brackets added) THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Kwok US 2002/0188500 A1 Dec. 12, 2002 Outlines of the Presentation of Dr. Irina Paliashvili, the President of the Russian-Ukrainian Legal Group, at the Seminar on the Legislation on Production Sharing Agreements, Sept. 14, 1998. [Hereinafter, Paliashvili.] Production Sharing Contract for the Exploitation of Coalbed Methane Resources for the Qinnan Area in Shanxi Province, Qinshui Basin, The People’s Republic of China Between China United Coalbed Methane Corporation Ltd. And Philips China Inc., Beijin, China, April 16, 2002. [Hereinafter, PSC.] Appeal 2010-011980 Application 10/936,541 4 The Examiner took official notice “that a programmable computer containing instructions is used to execute these steps” and “for adjusting an actual price of the product to account for arm’s length and non-arm’s length transactions.” Ans. 4. [Hereinafter, Official Notice.] The following rejection is before us for review: Claims 1-27 are rejected as unpatentable under 35 U.S.C. §103(a) as being obvious over Paliashvili, Official Notice, PSC, and Kwok. ISSUE The issue is whether the Examiner has failed to establish a prima facie showing of obviousness in rejecting claims 1-27 under 35 U.S.C. § 103(a) over Paliashvili, Official Notice, PSC, and Kwok. Specifically, the issue is whether the prior art teaches the limitation marked C.1, C.3, and C.4 above. FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. Kwok’s paragraph [0009] states: In view of the potential risks, it is common in the Industry for the participants (on both the exploration and development sides) to adopt risk-sharing strategies, including partnerships, pooling and joint ventures. These arrangements can take place at almost any stage from exploratory “intermediate transactions” through which parties completely or partially enter or exit a venture. Appeal 2010-011980 Application 10/936,541 5 ANALYSIS We find that the Examiner has failed to establish a prima facie showing of obviousness in rejecting claims 1-27 under 35 U.S.C. § 103(a) as being unpatentable over Paliashvili, Official Notice, PSC, and Kwok. We agree with the Appellants’ argument on pages 6-8 of the Appeal Brief that paragraphs [0006]-[009] of Kwok, cited by the Examiner (see Ans. 4) fail to teach limitations C.1, C.3, and C.4 of claim 1. We also agree with the Appellants’ argument on pages 2-4 of the Reply Brief, that the Examiner’s argument that Kwok’s paragraph [0009] mention of “partnerships, poling, and joint ventures” (see FF 1) to teach limitations C.1, C.3, and C.4 above (see Ans. 7-9) is based on conceptual leaps and conclusory assertions unsupported by evidence, and still fails to arrive at the limitations at issue. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Independent claims 10 and 19 recite similar limitations and are rejected using the same rationale (see Ans. 3-5). Accordingly, this rejection of claims 1, 10, and 19, and claims 2-9, 11-18, and 20-27, dependent thereon, as unpatentable under 35 U.S.C. § 103(a) as being obvious over Paliashvili, Official Notice, PSC, and Kwok is reversed. DECISION The decision of the Examiner to reject claims 1-27 is reversed. Appeal 2010-011980 Application 10/936,541 6 REVERSED ke