Ex Parte 6115698 et al

Patent Trial and Appeal Board

Dec 31, 2013

90011295 (P.T.A.B. Dec. 31, 2013)

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.
90/011,295 10/22/2010 6115698 115191-005REX 7206
27189 7590 01/02/2014
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/02/2014 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
____________________

ACACIA PATENT ACQUISITION LLC
Patent Owner and Appellant
____________________

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Patent No. US 6,115,698 B1
Technology Center 3900
____________________

Before JAMES T. MOORE, MARC S. HOFF, and
JEREMY J. CURCURI, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-43. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm-in-part.
The 698 patent issued to David Tuck et al. on September 5, 2000, and
the real party in interest is Acacia Acquisition LLC . The 698 patent is an
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apparatus and method for trading electric energy between connected
participants such as utility companies. A common marketplace provides
participants the ability to display buy and sell offers to the other participants
and consummate a transaction for a quantity of electrical energy. The
method further allows the participants to curtail transactions and the delivery
of electrical energy, if necessary (Abstract).
Claim 1 is exemplary of the claims on appeal:
1. A method for selling a quantity of electric energy
between at least two participants, said method comprising the steps of:

(a) connecting a first participant to a database display;

(b) connecting a second participant to the database display;

(c) displaying a price for the quantity of electrical energy;

(d) consummating a transaction between the participants for
the quantity of electrical energy; and

(e) curtailing the transaction between the participants.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:

Thomas W. Gedra, “Optical Forward Contracts for Electric Power
Markets,” (UMI 1991)(hereinafter “Gedra”).
Wagner US 4,903,201 Feb. 20, 1990

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Throughout this decision, we make reference to Appellant‟s Brief
(“App. Br.,” November 13, 2012) and the Examiner‟s Answer (“Ans.,”
mailed March 20, 2013) for their respective details.

REJECTIONS
Claims 1-7, 9-19, 21-24, and 26 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Gedra.
Claims 8-20, 25, and 27-43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gedra.
Claims 6-8, 10-12, 18-20, 22-24, 30-35, and 38-43 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Gedra in view of
Wagner.
1

ISSUES
Appellant argues that Gedra does not enable one of ordinary skill in
the art to make the claimed invention without undue experimentation (App.
Br. 11-18).
With respect to the rejection of claim 1, Appellant argues that Gedra
fails to disclose connecting participants to a database display or displaying a
price for a quantity of electrical energy (App. Br. 20-21).
With respect to claims 2 and 26, Appellant argues, inter alia, that
Gedra fails to disclose computing a performance index (App. Br. 22).

1
The rejection of claims 25 and 27-43 under 35 U.S.C. § 112, second
paragraph, has been withdrawn by the Examiner (Ans. 61).
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With respect to claim 3, Appellant argues that Gedra fails to display a
price for the quantity of electrical energy for next hour offers, displaying the
next hour offers during the current hour, or stopping the consummation of
next hour transactions at a predetermined time during the current hour (App.
Br. 24).
With respect to claims 4 and 16, Appellant argues that Gedra fails to
disclose storing a list of transaction conditions wherein said list comprises
“(i) a parameter associated with a quantity of units that can be physically
delivered wherein said parameter is a limit on an electrical energy unit
transmission capacity; (ii) a parameter associated with a contractual
agreement between at least one or more buyer and seller participants” (App.
Br. 26).
With respect to the rejection of claim 25, Appellant further asserts that
Gedra fails to disclose “determining a path of delivery of a quantity of
electric energy from the first participant to the second participant, the path of
delivery comprising wheeling the quantity of electrical energy through a
third participant” (App. Br. 29-33).
Appellants‟ contentions present us with the following issues:
1. Does the disclosure in Gedra enable one of ordinary skill in the art
to make the claimed invention without undue experimentation?
2. Does Gedra disclose connecting participants to a database display?
3. Does Gedra disclose displaying a price for a quantity of electrical
energy?
4. Does Gedra disclose computing a performance index?
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5. Does Gedra disclose displaying a price for the quantity of
electricity for next hour offers, displaying the next hour offers during the
current hour, and stopping the consummation of next hour transactions at a
predetermined time during the current hour?
6. Does Gedra disclose storing a list of transaction conditions wherein
said list comprises (i) a parameter associated with a quantity of units that can
be physically delivered wherein said parameter is a limit on an electrical
energy unit transmission capacity; (ii) a parameter associated with a
contractual agreement between at least one or more buyer and seller
participants?
7. Does Gedra disclose determining a path of delivery of a quantity of
electric energy from the first participant to the second participant, the path of
delivery comprising wheeling the quantity of electrical energy through a
third participant?

PRINCIPLES OF LAW
The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988); see also In re Wright, 999 F.2d 1557, 1561-
62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA
1971)) (The PTO bears the initial burden when rejecting claims for lack of
enablement.)
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Factors to be weighed in determining whether a disclosure is in
compliance with the enablement requirement include: (1) the quantity of
experimentation necessary to practice the invention, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims. “Enablement is not precluded by
the necessity for some experimentation . . . . However, experimentation
needed to practice the invention must not be undue experimentation. The
key word is „undue,‟ not „experimentation.‟” Wands, at 736-37. The analysis
must consider all the evidence related to each of these factors, and any
conclusion of non-enablement must be based on the evidence as a whole. Id.
ANALYSIS
ENABLEMENT
We have considered Appellant‟s remarks and the Examiner‟s
responses concerning the Wands factors, and we are not persuaded that
Gedra does not enable one of ordinary skill in the art to make the invention
without undue experimentation (App. Br. 11).
With respect to the quantity of experimentation, we do not agree with
Appellant that Gedra “expressly acknowledges that its market could not be
implemented using communications and computational technologies of the
time” (App. Br. 12; emphasis omitted). We agree with the Examiner that the
meaning of Gedra‟s statement that “the ability to implement a market in
these contracts, or even to use them at all, depends critically on continued
technological improvement in communications and computation” (Gedra p.
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5) is open to interpretation and may not necessarily mean that practicing the
invention is technologically infeasible. It may instead refer to the high cost
of implementing the market (see Ans. 63).
We are similarly unpersuaded by Appellant‟s allegation that Gedra
recognizes that the necessary technological advancements to implement the
Smart Grid market “were not expected to be available for „several decades‟”
(App. Br. 12; emphasis omitted). Gedra states only that “digital
communications media will become increasingly available and inexpensive
within the next several decades” (Gedra p. 2). Gedra‟s statement does not
communicate that the technology to implement the market was not available
at the time of writing.
Appellant‟s argument that Gedra does not disclose any of the
necessary infrastructure (App. Br. 13) is also unpersuasive. Rather, we
agree with the Examiner that Gedra need not disclose the details of elements
known to one of ordinary skill in the art (Ans. 64). We agree with the
Examiner that the Patent Owner disclosed the use of a number of known off-
the-shelf items (general purpose computer, SVGA display, keyboard, mouse,
Ethernet interface, router interface to a WAN, and telephone lines) in the
„698 patent (Ans. 68). We also agree with the Examiner that U.S. Patent No.
5,592,375 to Salmon, cited during prosecution, provides evidence that an
interactive electronic buyer-seller brokering system was known at the time
of invention (Ans. 68-69).
With respect to Appellant‟s argument that Gedra does not provide
direction or guidance (App. Br. 14-15), we reiterate our response to
Appellant‟s assertion, supra, that Gedra discloses no infrastructure.
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Appellant‟s argument that Gedra provides no guidance as to how non-utility
generators are to be integrated into the Smart Grid is unpersuasive as it is not
germane to the claimed invention (see App. Br. 15; Ans. 70).
With respect to the alleged absence of working examples, we are not
persuaded by Appellant‟s repetition of the “several decades of technological
advancements” argument (App. Br. 16). Rather, we agree with the
Examiner that the prior art contains examples of infrastructure. Further, we
note that the Examiner cites to several sections in Gedra that contain
examples (Ans. 72).
With respect to the complexity of the invention, we agree with the
Examiner that the declarations cited by Appellant contain only bare
statements that the invention is complex, without any supporting rationale
(Ans. 73). We further agree with the Examiner that Appellant admitted that
the disclosure of the Salmon patent was known at the time of invention
(Ans. 74).
With respect to the level of development of the prior art, we agree
with the Examiner that the state of the prior art, for example as evidenced by
Salmon, was sufficient to enable the elements of Gedra relied upon in the
rejection (Ans. 74).We agree with the Examiner that the cited prior art and
background of the „698 patent represent the level of ordinary skill in the art
(Ans. 75). The inventor of the „698 patent‟s particular education and
experience are one indicator, but far from the only indicator, of the level of
skill (App. Br. 17-18).
We are not persuaded by Appellant‟s arguments concerning the
unpredictability of the art (i.e., of computer-implemented marketplaces in
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electrical energy), because we agree with the Examiner that the proffered
arguments are directed to the business and regulatory environment around
electrical generation and distribution, rather than technological progress
(App. Br. 18-19; Ans. 75-76).
Considering together all of the evidence relating to the Wands factors,
we conclude that Appellant has not established that Gedra‟s disclosure fails
to enable the claimed invention.
§ 102 REJECTION OF CLAIM 1
We are not persuaded by Appellant‟s argument that Gedra fails to
disclose connecting participants to a database display (App. Br. 20). The
Examiner finds, and we agree, that “[t]he utility is assumed to offer a menu .
. . of options to each consumer” (Gedra p. 21; Ans. 78). In combination with
Gedra‟s statement that “[c]ommunications is necessary to communicate
prices and contract orders” (Gedra p. 90), we agree with the Examiner‟s
finding that Gedra inherently teaches connecting a plurality of participants to
a display of information from a common database (Ans. 3). Appellant‟s
argument that, as of the filing date of the „698 patent, the term “menu”
would not suggest a display interface, is likewise unpersuasive.
Appellant‟s argument that Gedra fails to disclose displaying a price
for a quantity of electrical energy (App. Br. 21) is also unpersuasive to
establish Examiner error. We find supra that Gedra inherently teaches
displaying prices. Further, the menu of options offered by the utility to each
customer (Gedra p. 21) includes the parameters p, s, and r, “where p is the
price of the service (paid whether electricity is delivered or not), s is the
service charge (paid only when service is actually provided), and r is the
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probability of service” (Id.). Contrary to Appellant‟s allegation that none of
Gedra‟s menu items include a price for a quantity of electrical energy (App.
Br. 21), we find that service charge s (“paid only when service is actually
provided”) corresponds to the recited “price for the quantity of electrical
energy.”
We find that the Examiner did not err in rejecting claim 1 as being
anticipated by Gedra, and we sustain the rejection.
CLAIMS 2 AND 26
We agree with Appellant‟s that Gedra fails to disclose computing a
performance index (App. Br. 22). While Gedra discloses a “probability of
service” r (Gedra p. 21), we find no disclosure by Gedra of computation or
calculation of this value.
The Examiner‟s response concerning the probability distribution of
p(w) (Ans. 81, citing Gedra p. 21) is not relevant to this issue, because
Gedra‟s variable p refers to price.
We find that Gedra does not teach all the elements of claims 2 and 26.
We will not sustain the Examiner‟s § 102 rejection of these claims.
CLAIM 3
Appellant‟s argument that Gedra does not disclose displaying a price
for the quantity of electrical energy for next hour offers, or displaying next
hour offers during the current hour (App. Br. 24) is not persuasive. We
agree with the Examiner‟s finding that Gedra teaches both trading to occur
hourly, and the trading of an hour‟s worth of power (see Ans. 83; Gedra p.
95). With respect to hourly trading, in Gedra § 5.8, “Discrete Trading
Times,” Gedra suggests that trading could only occur at discrete times, that
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spot prices might be updated every hour, and that optional forward contracts
might be traded every hour” (Gedra p. 95). With respect to trading of an
hour‟s worth of power, Gedra gives an example whereby “a consumer may
have a 1 MW load which, if not called will operate for the entire 1 hour
period” (Gedra p. 95; emphasis added). We agree with the Examiner that
these disclosures show that Gedra contemplates selling one-hour increments
of electrical energy, and that Gedra necessarily teaches the trading of a
“current hour” of electrical energy, a “next hour,” and a plurality of other
hours.
Taken together with the other disclosures discussed, we find that
Gedra teaches the recited “displaying a price for the quantity of electrical
energy for next hour offers” and “displaying the next hour offers during the
current hour.”
We also agree with the Examiner that, given Gedra‟s teachings
concerning trading one-hour increments of electrical energy, Gedra
inherently teaches stopping the consummation of next hour transactions at a
predetermined time during the current hour (Ans. 7).
Because we find that Gedra teaches all the limitations of claim 3, we
will sustain the Examiner‟s § 102 rejection of claim 3 over Gedra.
CLAIMS 4-7, 9-19, AND 21-25
We do not agree with Appellant that Gedra fails to disclose storing a
list of transaction conditions comprising storing a parameter which is a limit
on an electrical energy unit transmission capacity (App. Br. 26) and a
parameter associated with a contractual agreement (App. Br. 27).
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Rather, we agree with the Examiner‟s findings that Gedra discloses
the need to balance supply and demand from moment to moment (Gedra p.
23), just as Appellant does, and Gedra discloses a transmission line flow
constraint (Gedra p. 99). We agree with the Examiner that this constraint is
necessarily stored so that operators can carry out transaction parameters
within limits of line flow constraint (Ans. 84). We also agree with the
Examiner‟s finding that Gedra inherently teaches storing bid and ask quotes
in a database, so as to collect, store, display, and match them as part of
electronic market (Ans. 84), corresponding to the recited parameter(s)
associated with a contractual agreement.
We find that the Examiner did not err in rejecting claims 4 and 16, or
claims 5-7, 9-15, 17-19, and 21-25 dependent therefrom, as being
anticipated by Gedra. We sustain the rejection.
§ 103 REJECTION OF CLAIMS 25, 27, 28, AND 36 OVER GEDRA
We are unpersuaded that Gedra fails to disclose determining a path of
delivery, or wheeling through a third participant (App. Br. 30-32). We agree
with the Examiner that it is inherent that Gedra would include transmission
of energy along a determined path between the two participants and through
a wheeling participant, consistent with the accepted definition of wheeling
(Ans. 86).
We find that the Examiner did not err in concluding that claim 25
would have been obvious over Gedra. We sustain the rejection.
Claims 27, 28, and 36 contain limitations similar to those of claim 25
concerning wheeling. (Each claim also contains other limitations which have
been discussed supra with respect to other claims, and those discussions
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apply to these claims as pertinent.) We sustain the § 103 rejection of claims
27, 28, and 36 over Gedra, for the reasons given with respect to claim 25.
§ 103 REJECTION OF CLAIMS 8, 20, 29-35, AND 37-43
These claims are not argued separately from independent claims 4, 16,
28, and 36 from which they depend (App. Br. 34-35). We therefore sustain
the § 103 rejection of claims 8, 20, 29-35, and 37-43, for the same reasons
given with respect to independent claims 4, 16, 28, and 36.
§ 103 REJECTION OF CLAIMS 6-8, 10-12, 18-20, 22-24, 30-35, AND 38-43 OVER
GEDRA IN VIEW OF WAGNER
These claims are not argued separately from independent claims 4, 16,
28, and 36 from which they depend (App. Br. 35). We therefore sustain the
§ 103 rejection of claims 6-8, 10-12, 18-20, 22-24, 30-35, and 38-43 over
Gedra in view of Wagner, for the same reasons given with respect to
independent claims 4, 16, 28, and 36, rejected over Gedra alone.

CONCLUSIONS
1. The disclosure in Gedra enables one of ordinary skill in the art to
make the claimed invention without undue experimentation.
2. Gedra discloses connecting participants to a database display.
3. Gedra discloses displaying a price for a quantity of electrical
energy.
4. Gedra does not disclose computing a performance index.
5. Gedra discloses displaying a price for the quantity of electricity for
next hour offers, displaying the next hour offers during the current hour, and
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stopping the consummation of next hour transactions at a predetermined
time during the current hour.
6. Gedra discloses storing a list of transaction conditions wherein said
list comprises (i) a parameter associated with a quantity of units that can be
physically delivered wherein said parameter is a limit on an electrical energy
unit transmission capacity; (ii) a parameter associated with a contractual
agreement between at least one or more buyer and seller participants.
7. Gedra discloses determining a path of delivery of a quantity of
electric energy from the first participant to the second participant, the path of
delivery comprising wheeling the quantity of electrical energy through a
third participant.
ORDER
The Examiner‟s rejection of claims 2 and 26 is reversed. The
Examiner‟s rejection of claims 1, 3-25, and 27-43 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

lb

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THIRD PARTY REQUESTER:

Thomas A. Rozylowicz
FISH & RICHARDSON, P.C.
P.O. Box 1022
Minneapolis, MN 55440-1022

PATENT OWNER:

PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B Street
Suite 2200
San Diego, CA 92101