Ex Parte Hajdukiewicz et al

Patent Trial and Appeal Board

Aug 23, 2016

09853196 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
09/853,196
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
FILING DATE FIRST NAMED INVENTOR
05/11/2001 Richard Stanley Hajdukiewicz
08/25/2016
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GOLDll-00033 5888
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/25/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
john.maxin@gs.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD STANLEY HAJDUKIEWICZ, JAMES P. RILEY, and
JOHN A. SQUIRES
Appeal2014-005211
Application 09/853,196 1
Technology Center 3600
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 31, 38--41, 55, 61, 65---68, and 115. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Goldman, Sachs &
Co. Appeal Br. 2.
Appeal2014-005211
Application 09/853, 196
ILLUSTRATIVE CLAIM
31. A processor-implemented method for providing a
program price for the purchase of vehicle fuel, the method
compnsmg:
retrieving, by a computer processor, customer-specific
expected fuel usage data;
retrieving, by the computer processor, program sponsor data
including an amount of a finder's fee paid by a program sponsor to a
program operator, wherein the finder's fee comprises a fee paid in
conjunction with establishment of a new account relationship
between a customer and the program sponsor;
calculating, by the computer processor, a customer-specific,
fixed, and guaranteed program price the customer is authorized to
pay for a qualified fuel purchase from a qualified fuel seller, wherein
the qualified fuel purchase is for a customer-specific type of vehicle
fuel and said calculating is performed using the customer-specific
expected fuel usage data, the customer's conditions, and said finder's
fee amount of said program sponsor data, and wherein said
customer-specific expected fuel usage data includes a customer-
specific quantity of fuel to be purchased and a customer-specific
number of months during which the customer is authorized to
purchase the fuel at the customer-specific, fixed, and guaranteed
program price for the customer-specific type of fuel to be purchased;
using said customer-specific expected fuel usage data, other
customers' conditions, and said finder's fee amount of said program
sponsor data to develop a financial hedging strategy to diminish a
risk to the program operator in connection with guaranteeing of the
customer-specific, fixed, and guaranteed program price in light of
volatility of fuel prices, wherein said financial hedging strategy
includes hedging a commodity price of fuel and other non-
commodity costs associated with the purchase of fuel; and
providing, by the computer processor via a communications
network, said customer-specific, fixed, and guaranteed program price
to a second computer processor for facilitating a purchase of said
vehicle fuel.
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Appeal2014-005211
Application 09/853, 196
CITED REFERENCES
The Examiner relies upon the following references:
McCall et al.
(hereinafter "McCall")
US 6,321,984 Bl Nov. 27, 2001
Infinity Trading Group, Heating Oil-Futures and Options, Jan. 9,
1998 (hereinafter "Infinity")
Alan D. Fischer, Weather Futures 'Bet' Will Give Tucson Firms a
Hedge Against Losses, Arizona Daily Star, Feb. 5, 1999, at 4B
(hereinafter "Weather Futures")
REJECTIONS
I. Claims 31, 38--41, 55, 61, 65---68, and 115 are rejected under
35 U.S.C. § 112, first paragraph (Pre-AIA), as failing to comply with the
written description requirement.
II. Claims 31, 38--41, 55, 61, 65---68, and 115 are rejected under
35 U.S.C. § 103(a) as unpatentable over McCall, Infinity, and Weather
Futures.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action at pages 2--4 and the Answer at pages 2-7, unless stated otherwise in
the Analysis below. Additional findings of fact may appear in the Analysis
below.
ANALYSIS
Rejection I
According to the Final Office Action, claim 31 fails to satisfy the
written description requirement of 35 U.S.C. § 112, first paragraph (Pre-
AIA), because the Specification does not reasonably convey to one of
ordinary skill in the art that the Appellants possessed, as of the filing date,
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Application 09/853, 196
the claimed subject matter. Final Action 2-3. The Final Office Action
identifies two claim limitations subject to this shortcoming (id.):
"calculating, by the computer processor, a customer-specific,
fixed, and guaranteed program price"; and
"using said customer-specific expected fuel usage data, other
customers' conditions, and said finder's fee amount of said
program sponsor data to develop a financial hedging strategy."
The Appellants allege two grounds of error in the Final Office Action:
(1) the Final Office Action mischaracterizes the scope of the claims; and (2)
the Final Office Action fails to provide reasons why a person skilled in the
art would not recognize that the Appellants possessed the claimed subject
matter. Appeal Br. 6.
In regard to the alleged mischaracterization of the claim language, the
Appellants state that the claims recite a general use of the factors employed
in "calculating ... [a] program price" because, as the Specification explains,
the "conditions of each participant will, of course, be individual." Id. at 7
(quoting Spec. 17). Similarly, the Appellants argue that persons of skill in
the art will "recognize many different methodologies" for accomplishing the
claimed "calculating ... [a] program price" and "using [particular
information] to develop a financial hedging strategy." Id. (citing Spec. 18).
This argument is not persuasive. As the Examiner correctly
determines, the Appellants' argument highlights defects in the Specification,
by emphasizing that the limitations at issue are claimed generically, whereas
the Specification fails to disclose any particular species supporting the
claimed genus. See Answer 3-5. "[A]n adequate written description of a
claimed genus requires more than a generic statement of an invention's
boundaries." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349
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Application 09/853, 196
(Fed. Cir. 2010) (en bane) (citing Regents of the Univ. of Cal. v. Eli Lilly &
Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)). "One needs to show that one
has truly invented the genus, i.e., that one has conceived and described
sufficient representative species encompassing the breadth of the genus.
Otherwise, one has only a research plan, leaving it to others to explore the
unknown contours of the claimed genus." Abb Vie Deutschland GmbH &
Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300 (Fed. Cir. 2014).
In regard to the second allegation of error, the Appellants contend that
the Final Office Action lacks reasons why a person skilled in the art would
not recognize that the Appellants possessed the claimed subject matter and,
in addition, contend that the Final Office Action provides evidence to the
contrary, by stating that a hedging strategy for fuel based upon various
factors is old and well-known. Appeal Br. 7-8 (citing Final Action 13).
This argument is not persuasive, because the Final Office Action
properly establishes the lack of written description support for the identified
claim limitations by pointing out the absence of any disclosure that teaches
how the invention is accomplished. See Answer 6-7. In addition, the
Examiner's determination that hedging strategies are old and well-known in
the art does not mean that the written description requirement must be
satisfied for claim limitations drawn thereto. See id. Indeed, written
description support "does not extend to subject matter which is not
disclosed, but would be obvious over what is expressly disclosed."
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997).
Accordingly, the Appellants' arguments are not persuasive of error in
the Examiner's determination that claim 31 fails to satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph (Pre-AIA).
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Application 09/853, 196
Rejection I is thus sustained as to claim 31, as well as to claims 38--41, 55,
61, 65---68, and 115, for which the Appellants rely upon the same arguments.
See Appeal Br. 8.
Rejection II
The Appellants argue (Appeal Br. 11) that the Examiner erred in
rejecting claim 31 as unpatentable under 35 U.S.C. § 103(a) because the
Examiner failed to provide explicit reasoning, as opposed to a merely
conclusory statement, to support the determination that it would have been
obvious to use the various recited features in a hedging strategy, as set forth
in the following limitation of claim 31:
using said customer-specific expected fuel usage data,
other customers' conditions, and said finder's fee amount of
said program sponsor data to develop a financial hedging
strategy to diminish a risk to the program operator in
connection with guaranteeing of the customer-specific, fixed,
and guaranteed program price in light of volatility of fuel
prices, wherein said financial hedging strategy includes hedging
a commodity price of fuel and other non-commodity costs
associated with the purchase of fuel.
The Appellants argue that, although the Final Office Action relies
upon Weather Futures for a general teaching of hedging (see Final Action
13-14), the Final Office Action does not explain why it would be obvious to
develop a hedging strategy "using" the particular features recited in claim 31
(i.e., "said customer-specific expected fuel usage data, other customers'
conditions, and said finder's fee amount of said program sponsor data").
Appeal Br. 11.
Indeed, the Final Office Action states a conclusion of obviousness, but
does not articulate an explanation for the conclusion:
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It would have been obvious to one of ordinary skill in the art at
the time the invention was made to use the customer expected
usage data, customer conditions, and the program sponsor
"finder fee", as well as any other data deemed as necessary or
relevant data, to develop a financial hedging strategy to help
prevent foreseeable losses due to changing demand and fuel
pnces.
Final Action 13 (emphasis omitted). The Examiner's Answer does not
rectify the deficiency. Answer 10-11.
"[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'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
The lack of adequate support for the determination of obviousness is
persuasive of error in the rejection of independent claim 31. Therefore, the
rejection of claim 31 is not sustained. For the same or similar reasons, the
rejection of independent claims 5 5 and 115 is also not sustained. See Appeal
Br. 11-12. Accordingly, the rejection of dependent claims 38--41, 61, and
65---68 is not sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 31, 38--41, 55,
61, 65---68, and 115 under 35 U.S.C. § 112, first paragraph (Pre-AIA), as
failing to comply with the written description requirement.
We REVERSE the Examiner's decision rejecting claims 31, 38--41,
55, 61, 65---68, and 115 as unpatentable under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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