William L. Wittsche

Patent Trials and Appeals Board

Oct 31, 2019

13472429 - (D) (P.T.A.B. Oct. 31, 2019)

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.
13/472,429 05/15/2012 William L. Wittsche 013643.00007 4482
33649 7590 10/31/2019
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS AVENUE
SUITE 600
DALLAS, TX 75201
EXAMINER
BORLINGHAUS, JASON M
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
10/31/2019 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
____________

Ex parte WILLIAM L. WITTSCHE1
____________

Appeal 2017-001985
Application 13/472,429
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MATTHEW S. MEYERS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as EMK3,
LTD. Appeal Br. 4.
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Application 13/472,429

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THE INVENTION
Appellant claims a system and method for selling wellhead production
assets online that allow a seller to control the types of variables that can be
modified in the bid and the parties that can bid on the wellhead production
asset. (Spec. ¶ 1, Title).
Claim 1 is representative of the subject matter on appeal.
1. A system for selling wellhead production assets that
reduces associated data communications requirements,
comprising:
a bid request system operating on a processor and
configured to display one or more bidders for wellhead
production assets in one or more HTML data fields of a graphic
user interface and to receive one or more bidder selections of
HTML data fields from the user interface; and
a production posting system coupled to the bid request
system through one or more semiconducting devices to
facilitate a reduction in data transmission, the production
posting system operating on the processor and configured to
receive the bidder selections of HTML data fields and to
provide lease data in an HTML format to the bidders for a lease
associated with a property from which the wellhead production
assets are produced, the lease data including pipeline location
data for at least one pipeline in relation to the property.

THE REJECTIONS
Claims 1–9 are rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more.
Claims 1–9 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention.

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Claims 8–9 recite a means (or step) plus function limitation that
invokes 35 U.S.C. § 112, sixth paragraph.
Claims 1–9 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement.
Claims 1–9 are rejected under pre-AIA 35 U.S.C. § 103(a) as being,
unpatentable over Holden (PG Pub. 2001/0032175 A1, published Oct. 18,
2001) in view of Miller (Miller, The Complete Idiot's Guide to Online
Auctions. Que Press. pp. 1–49 and 199–207 (1999)) and Gallun (Gallun,
Fundamentals of Oil & Gas Accounting 4th Edition. PennWell Corporation.,
pp. 8–13, 23, 84, 97, 305–306, 312, 319–320, 331–333, 469–471, and 483–
485 (2001)).

ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, 2ND PARAGRAPH
The Examiner holds that the recitations “reduces associated data
communications requirements,” and “to facilitate a reduction in data
transmission” are indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the invention. (Final
Act. 4, 16; Ans. 15).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification. Orthokinetics, Inc. v. Safety Travel
Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
The Examiner holds that the limitation “reduces associated data
communication requirements” is indefinite because it is unclear whether this
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language relates to actually reducing data communication requirements or
just performing a function with the motivation or intention that the claimed
function will result in reduced data communication (Final Act. 4). In
addition, the Examiner finds that it is unclear what the baseline requirements
against which these reductions are being contrasted are.
Appellant relies on page 9, line 6 to page 10, line 24 of the
Specification to explain this recitation. (Appeal Br. 6). However, these
pages of the Specification do not address data communication much less
reducing data communication requirements. In particular, it is not clear
from this portion of the Specification what the communication requirements
that are reduced are. As such, we agree with the Examiner that this language
does not comply with 35 U.S.C. §112, second paragraph.
The Examiner also finds that the recitation “to facilitate a reduction in
data transmission” is indefinite because it can have multiple interpretations.
One interpretation is that the ability to transmit data between two
systems, without more, would facilitate a reduction in data transmission
because it would be easier to process the data to reduce size if the
component actually had the data that it could later compress.
Another interpretation is that the recitation merely denotes a
motivation for the coupling as the claims do not affirmatively recite that any
of the system components are configured to actually reduce data
transmission. In this interpretation, the actual data reduction takes place
outside of the system.
A still further interpretation is that the semiconducting device is
configured to actually perform some sort of data processing of data
transformation. (Final Act. 16; Ans. 16).
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We agree with the Examiner that it is unclear from a reading of claim
1, in light of the Specification what interpretation should be applied to this
language of claim 1 and therefore, this language is indefinite. This is so
because the aforementioned claim language is subject to multiple plausible
interpretations. See Ex parte Miyazaki, 89 USPQ2d at 1211 (“[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.”).
We are not persuaded of error on the part of the Examiner in making
this rejection by Appellant’s argument that the Examiner has not addressed
the limitations of claim 1 and failed to articulate a basis for the rejection.
The Examiner clearly identified the limitations of “that reduces associated
communications requirements” and the limitation “to facilitate a reduction in
data transmission” as a focus for the rejection at page 4 of the Final Action
and page 14 of the Answer.
We are not persuaded that the Examiner erred by Appellant’s
argument that the Office does not dispute that coupling systems directly to
other systems through one or more semiconducting devices, such as by
operating both systems within a work space of the same processor would
facilitate a reduction in data transmission. (Appeal Br. 13). We agree with,
and adopt as our own, the Examiner’s response to this argument found on
page 17 of the Answer. Specifically, we agree with the Examiner that the
semiconductor recited in claim 1 could just be a router or network switch
and in any case, claim 1 does not recite that the semiconductor device is
configured to reduce data transmission rather all that is recited is that a
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semiconducting device of some sort is coupled between the production
posting system and the bid request system. There is no recitation in claim 1
that the semiconducting device performs actions that facilitate a reduction in
data transmission.
In regard to claims 2 and 3, the Examiner holds that the language
“with reduced data transmission requirements” of claim 2 and the language
“to reduce data storage requirements” of claim 3 is indefinite. Specifically,
the Examiner finds, as with the similar recitation in claim 1 regarding
communication requirements, that it is not clear what the baseline
requirements against which the reduction in transmission requirements and
storage requirements are measured. (Final Act. 4). We agree.
In view of the foregoing, we will sustain this rejection as it is directed
to claims 1, 2, and 3. We will also sustain this rejection as it is directed to
the remaining claims because the Appellant has not argued the separate
compliance with the requirements of 35 U.S.C. §112, second paragraph for
these claims.

REJECTION UNDER 35 U.S.C. §112, FIRST PARAGRAPH
The Examiner finds that there is no written description in the
Specification for “reduction of data communication requirements, receipt of
bid request data in a single package, storage of data in a single record,
reduction in data storage requirement . . . or preventing unnecessary
transmission (see Claims 1–5).” (Final Act. 4–5).
In order to satisfy the written description requirement, the
specification must describe an invention so as to be understandable to a
skilled artisan and show that the inventor actually invented the invention
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claimed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc). “[T]he test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date.” Id.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that it is unclear exactly what the Office is arguing
because the rejection does not address the specific claim limitations at issue.
As detailed above, the Examiner clearly details the recitations in claims 1–5
which are the reason for this rejection.
Appellant presents no further argument to this rejection. In this
respect, Appellant does not argue or demonstrate that the Specification does
include support for the limitations that are the subject of the rejection.
In view of the foregoing, we will sustain this rejection.

REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH OF
CLAIMS 8 AND 9.
Claim 8 recites “means for allowing a seller to specify bidding
variables,” and claim 9 recites “means for allowing a seller to specify
bidding variables.”
The Examiner finds that the written description fails to disclose the
corresponding structure, material or acts for the claimed functions. (Final
Act. 5).
For a computer-implemented means-plus-function claim limitation
that invokes 35 U.S.C. § 112, sixth paragraph, the corresponding structure is
required to be more than simply a general purpose computer.
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Techs. Austl. Pty v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.2008)
(“For a patentee to claim a means for performing a particular function and
then to disclose only a general purpose computer as the structure designed to
perform that function amounts to pure functional claiming. Because general
purpose computers can be programmed to perform very different tasks in
very different ways, simply disclosing a computer as the structure designated
to perform a particular function does not limit the scope of the claim to ‘the
corresponding structure, material, or acts' that perform the function, as
required by section 112 paragraph 6.”). The corresponding structure for a
computer-implemented function must include the algorithm as well as the
general purpose computer. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d
1339 (Fed. Cir. 1999). For means plus function limitations under § 112,
sixth paragraph, an indefiniteness rejection under § 112, second paragraph,
is appropriate if the specification discloses no corresponding algorithm
associated with a computer or processor. Aristocrat, 521 F.3d at 1337–38.
Mere reference to a general purpose computer or processor with appropriate
programming without providing an explanation of the appropriate
programming or to “software” without providing detail about the means to
accomplish the software function is not an adequate disclosure. Id. at 1334;
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
2008). In addition, simply reciting the claimed function in the specification,
while saying nothing about how the computer or processor ensures that those
functions are performed, is not a sufficient disclosure for an algorithm
which, by definition, must contain a sequence of steps. See Blackboard, Inc.
v. Desire2Learn Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (“The [purported
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disclosed structure] is essentially a black box that performs a recited
function. But how it does so is left undisclosed.”).
Appellant argues that the flow charts in Figures 5 and 6 provide the
necessary algorithm for the means recited in claims 8 and 9. (Appeal Br.
10).
Appellant’s Specification discloses that bidder data comprises (1)
identification of one or more parties from which the bid data is to be
solicited and accepted and (2) the indication that the lot should be publicly
listed so that any qualified or interested bidders can request permission to
bid. Appellant’s Specification also discloses that the system includes a
graphical user interface that prompts a user to enter data and return data in
response to data entered by the user. Figure 5 is described as a flow chart
for allowing a seller to specify bidding variables (Spec. ¶ 48). Figure 6 is
described as a flow chart for selecting bidder data. (Spec. ¶ 55).
In regard to claim 8, Figure 6 depicts a flowchart in which at step 602,
a bidder is selected from a list of bidders. In step 614 it is decided whether
the lot should be publicly listed. The selections are input using the user
interface. (Spec. ¶¶ 20–21). In regard to claim 9, Figure 5 depicts steps for
the seller to select, using the user interface, bidding variables such as
transportation, trade criteria etc.
While the Examiner is correct that simply disclosing a general
purpose processing unit is not sufficient structure to satisfy 35 U.S.C. § 112,
sixth paragraph, here, the Specification discloses algorithms in the form of
flowcharts in Figures 5 and 6, and a user interface that, taken together,
provide a sufficient disclosure to enable a person having ordinary skill in the
art to implement a general purpose computer to perform the functions recited
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in the means-plus-function elements. See Finisar Corp. v. DirecTV Grp.,
Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (patentee may “express that
algorithm in any understandable terms including as a mathematical formula,
in prose, . . . or as a flow chart, or in any other manner that provides
sufficient structure”) (internal citation omitted). As such, we agree with the
Appellant that the depictions in Figures 5 and 6 plus the disclosure of a user
interface which is used to make selections is sufficient to satisfy 35 U.S.C.
§ 112, sixth paragraph. Therefore, we will not sustain this rejection.

REJECTIONS UNDER 35 U.S.C. §§ 101 AND 103
As we discussed above, it is unclear what is meant by the language,
“reduces associated data communication requirements” and
“semiconducting device to facilitate a reduction in data transmission,”
recited in claim 1. As such, determining whether the claim recites a judicial
exception that is integrated into a practical application, whether the claim
recites “significantly more” than the abstract idea and whether the prior art
discloses this subject matter is not possible without speculation. Because we
are unable to construe the claims due to the indefinite claim term and any
attempt to do so would be speculative, we pro forma reverse the rejections
under 35 U.S.C. §§ 101 and 103. In re Steele, 305 F.2d 859, 863 (CCPA
1962).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–9 under
35 U.S.C. § 112, first and second paragraph.
We reverse the rejections under 35 U.S.C. §§ 101 and 103.
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DECISION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9 112 (a) First paragraph 1–9
1–9 112 (b) Second paragraph 1-9

8–9 112 Sixth paragraph 8, 9

1-9 101 Eligibility 1-9
1–9 103(a) Holden, Miller,
Gullun
1-9
Overall
Outcome
1-9

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED