Ex Parte Lindores et al

Patent Trial and Appeal Board

Aug 5, 2016

13280306 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/280,306 10/24/2011
112877 7590 08/09/2016
Kilpatrick Townsend & Stockton LLP
Trimble Navigation Limited
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Robert J. Lindores
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.
TRMB-3031 4642
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. LINDORES, KATHERINE SANDFORD,
RICHARD W. HILLIKER, and JEFFREY A. HAMIL TON
Appeal2014-002225
Application 13/280,3061
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to "exchanging water allocation
credits." (Spec. 1, Title.)
1 According to Appellants, the real party in interest is Trimble Navigation
Limited. (Appeal Br. 1.)
Appeal2014-002225
Application 13/280,306
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is
representative and is reproduced below (bracketing and some paragraphing
added):
1. A method of exchanging water allocation credits
compnsmg:
accessing, by a computer system, data describing a water
allocation credit reserved for a first user;
determining, by said computer system,
an unused amount of said water allocation credit
[a] which will not be used by said first user
and
[b] which is advised to be sold;
brokering, by said computer system, a sale of said unused
amount of said water allocation credit to another user.
REJECTIONS
Claims 1, 2, 8, 9, 15, and 16 are rejected under 35 U.S.C. § 102(e) as
anticipated by \Vorkman (US 2010/0274657 1A .. l, pub. Oct. 28, 2010).
Claims 3-7, 10-14, and 17-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Workman and Zyskowski (US 2010/0306012 Al, pub.
Dec. 2, 2010).
ANALYSIS
Appellants argue that Workman discloses "a neutral menu of a full
range of options" and that Workman "'does not make a decision or
recommend decisions.'" (Appeal Br. 6.)
Workman relates to
[a] scalable integrated credit exchange system for incentivizing
conservation of a resource . . . . Data is utilized from a
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Appeal2014-002225
Application 13/280,306
measuring system . . . . The incentive is provided in the form of
an awarded "ECOSHARE credit" that can be traded in the
provided online trading system or can be utilized to reduce the
consumer's utility bill.
(Workman, Abstract.) In relevant part, Workman discloses "[t]he trading
system 50 displays information supplied by the multi-agent system
platform 51 to aid the consumer in making decisions on the timing and
quantity of sales or purchases of ECOSHARE credits." (Workman i-f 131.)
The Examiner finds that in the above-quoted passage from
paragraph 131 of Workman, "the 'multi-agent system' aids the consumer to
make a decision or 'advises' the consumer in deciding the timing and
quantity of the 'ecoshare credits' they wish to trade." (Answer 4.) Further,
the Examiner determines that "[b ]y definition, 'to advise or to be advised'
means, 'to offer advice to or to counsel or to recommend."' (Id.)
Appellants reply that "Appellants do not understand providing a
neutral menu of a full range of options to anticipate advising (or providing a
recommendation or opinion) as to which unused water allocation credits are
to be sold." (Reply Br. 3.)
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Claim 1 recites "determining ... an unused amount of said water
allocation credit which will not be used by said first user and which is
advised to be sold." In other words, the method of claim 1 determines a
subset of the unused amount of the water allocation credit. This subset of
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Appeal2014-002225
Application 13/280,306
credit is determined by the amount of allocation credit that will not be used
by the first user and that is advised to be sold.
The Examiner does not indicate where Workman discloses
determining a subset of the unused amount of the water allocation credit
where this subset of credit is determined by the amount of allocation credit
that will not be used by the first user and that is advised to be sold.
Therefore, we do not sustain the Examiner's rejection of claim 1 as
anticipated by Workman. Independent claims 8 and 15 include similar
language. Thus, for the same reasons, we do not sustain the Examiner's
rejection of independent claims 8 and 15 and dependent claims 2, 9, and 16
as anticipated by Workman.
In rejecting claims 3-7, 10-14, and 17-20 under§ 103(a), the
Examiner does not rely on Zyskowski to cure the deficiency of Workman
discussed above. Therefore, for the reasons discussed above, we do not
sustain the Examiner's rejection of dependent claims 3-7, 10-14, and 17-20
under§ 103(a).
DECISION
The Examiner's rejection of claims 1, 2, 8, 9, 15, and 16 under
35 U.S.C. § 102(e) is reversed.
The Examiner's rejection of claims 3-7, 10-14, and 17-20 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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