Ex Parte Montepeque

Board of Patent Appeals and Interferences

Feb 27, 2012

10337432 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JORGE EDUARDO MONTEPEQUE
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Appeal 2010-009534
Application 10/337,432
Technology Center 3600
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Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009534
Application 10/337,432

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
rejection of claims 1-6 which have been twice rejected and are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to the creation of a
virtual grade of a commodity that encompasses two or more representative
grades of the commodity (Spec. [0002]). Claim 1, reproduced below with
the numbering in brackets added, is representative of the subject matter on
appeal.

1. A method of facilitating a trade of a commodity between a
buyer and seller, said method comprising:
defining a virtual grade of the commodity, the virtual grade of
the commodity encompassing two or more specified physically
deliverable grades of the commodity; and
adopting rules regulating sales of the virtual grade whereby in a
sale of a quantity of the virtual grade between a buyer and seller, the
buyer and seller agree on a price to be paid by the buyer, and then,
following agreement on the price, [1] the seller may designate for
delivery to the buyer one physically deliverable grade of the two or
more specified physically deliverable grades encompassed by the
virtual grade.

Appeal 2010-009534
Application 10/337,432

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Appellant’s admitted prior art in Background Section of the
Specification (3:1-21, 4:3, 5:23-24, 6:3-4).

The following rejections are before us for review:
1. Claims 1-6 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
2. Claims 1-6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over prior art admitted in the Appellant’s Specification.

THE ISSUES
With regard to the rejection under 35 U.S.C. § 101 the issue turns on
whether the Appellant has properly met their burden and rebutted the
Examiners rejection of record.
With regard to the rejection under 35 U.S.C. § 103(a) the issue turns
on whether the Examiner properly considered the Declaration filed to show
nonobviouness.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner has presented an analysis for patentability under 35
U.S.C. § 101 taking into account both mental steps and insignificant extra
solution activity into account (Ans. 4-5). In contrast, the Appellant merely
argues that the rejection of claim 1 is improper because the case In re Bilski,
545 F.3d 943 (Fed. Cir. 2008) should be overturned. (Reply Br. 1-4).
Appeal 2010-009534
Application 10/337,432

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The Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner's position. Here, the Appellant has not addressed the
merits of the Examiner’s rejection which identified the claim to be capable
of being performed in the human mind with only insignificant extra solution
activity and have thus failed to meet their burden to rebut the rejection on
the merits and show it to be improper. For these reasons this rejection of
claim 1, and its dependent claims, under 35 U.S.C. § 101 is sustained.

Rejection under 35 U.S.C. § 103(a)
The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) and
determined that the cited claim limitation [1] would have been obvious in
light of the cited prior art in the Specification (Ans. 6-7, 9-10). In contrast,
the Appellant argues that the rejection of claim 1 is improper (Br. 4-10) and
has filed a Declaration to show non-obviousness.
Regardless of whether the Examiner has presented a prima facie case
of obviousness, we have determined that the Examiner has not properly
addressed the Declaration of record which was filed to show non-
obviousness and was addressed in the Appeal Brief at pages 10-15. We
recognize that evidence of secondary considerations, such as that presented
by the Appellant must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, the
Examiner’s Answer was required to consider anew the issue of obviousness
under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence
relied upon by the Examiner and the objective evidence of nonobviousness
provided by the Appellant. ‘“An applicant may rebut a prima facie case of
obviousness by providing a ‘showing of facts supporting the opposite
Appeal 2010-009534
Application 10/337,432

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conclusion.”’ Such a showing dissipates the prima facie holding and requires
the examiner to “consider all of the evidence anew”. In re Kumar 418 F.3d
1361, 1368 (Fed. Cir. 2005). Here, the Examiner (see Answer at 6-7 and 10-
11) has failed to properly address many points raised in the Declaration and
the rejection of record is therefore not sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-6 under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-6 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1-6 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1-6 under 35 U.S.C. § 103(a) is
reversed.

AFFIRMED

MP