Ex Parte 7669133 et al

Patent Trial and Appeal Board

Sep 30, 2013

95001397 (P.T.A.B. Sep. 30, 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.
95/001,397 07/16/2010 7669133 6115-0101L 4982
7590 09/30/2013
WELLOGIX TECHNOLOGY LICENSING LLC
440 LOUISIANA
SUITE 2100
HOUSTON, TX 77019
EXAMINER
DESAI, RACHNA SINGH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/30/2013 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
____________

SAP AMERICA, INC.
Requester

v.

WELLOGIX TECHNOLOGY LICENSING LLC
Patent Owner
____________

Appeal 2013-004229
Reexamination Control No. 95/001,397
Patent 7,669,133 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and STANLEY M.
WEINBERG, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2013-004229
Reexamination Control No. 95/001,397
Patent No. 7,669,133 B2

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Requester SAP America, Inc. appeals under U.S.C. §§ 134 and 315
(2002) the Examiner’s decision not to reject claims 1-4 and 6-71 under
certain grounds as discussed below. Patent Owner Wellogix Technology
Licensing, LLC appeals under 35 U.S.C. §§ 134 and 315 (2002) the
Examiner’s decision to reject claims 1, 2, 6-10, 13-19, 21-27, 29-33, 39, 41-
44, 58, and 59 under certain grounds as discussed below. We have
jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). An oral hearing was
conducted on May 15, 2013.

STATEMENT OF THE CASE
This proceeding arose from a request by SAP America, Inc. for an
inter partes reexamination of U.S. Patent 7,669,133 B2, titled “System and
Method for Developing Rules Utilized in a Knowledge Management
System,” and issued to Bill S. Chikirivao and Jeff A. Livesay on
February 23, 2010 (the ’133 patent).
The ’133 patent describes creating rules utilized by knowledge
management systems (col. 1, ll. 27-28).
Claim 1 on appeal reads as follows:
1. A system for developing rules utilized in a
knowledge management system for validating a selected
process having one or more parameters, comprising:
a builder module for creating one or more new rules
utilized to validate at least one parameter of the selected
process, wherein the selected process comprises a complex
transaction relating to a transfer of oilfield goods, oilfield
services, or combinations thereof, and the one or more rules
determine compliance of the at least one parameter of the
complex transaction to reconcile errors, to facilitate adherence
to an industry standard, or combinations thereof;
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a repository for storing the one or more rules; and
a server for obtaining the one or more parameters relating
to the selected process, said server retrieving the one or more
parameters relating to the selected process, said server
retrieving the one or more rules associated with the selected
process from the repository and utilizing the one or more rules
to validate the one or more parameters of the selected process,
and permitting a user to selectively modify the one or more
parameters of the selected process when the one or more
parameters do not comply with the one or more rules.

Appellant/Requester proposes rejections of the claims over the
following prior art references:
Moore US 5,446,885 Aug. 29, 1995
Chender US 2003/0055815 A1 Mar. 20, 2003
Pokorny US 2003/0154144 A1 Aug. 14, 2003
Kogan US 6,820,069 B1 Nov. 16, 2004
Elsey US 6,845,155 B2 Jan. 18, 2005
Kintzer US 6,968,328 B1 Nov. 22, 2005

M. Zamora and M.A. Merchant, “Optimized PC-Based Expert Systems,”
SPE 16488, 1987 (“Zamora”).

M.J. Fear, N.C. Meany, and J.M. Evans, “An Expert System for Drill Bit
Selection,” IADC/SPE 27470, 1994 (“Fear”).

John Hedtke, “Peachtree Accounting for Windows Made Easy,” Osborne
McGraw-Hill, 1995 (“Peachtree”).

Thomas Kelly, “Blaze Software, Inc. Investors Brief,” 2000 (“Blaze”).

Business Wire, “Wellogix Pushes Forward with Rapid Product
Development; Oil and Gas Industry Software Again Released Ahead of
Schedule,” 2001 (“eField Ticket”).

Brokat Blaze Advisor Version 3.2 Press Release, 2001 (“Brokat”).
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Reexamination Control No. 95/001,397
Patent No. 7,669,133 B2

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Requester appeals the Examiner’s refusal to adopt the following
rejections:
1

Claims 1, 2, 7-17, 19-22, 24-30, 32, 33, 35, 36, 39-42, 44-47, 49, 51-
59, 61-63, and 66-68 under 35 U.S.C. § 102(e) as being anticipated by
Kintzer.
Claims 1-4 and 6-71 under 35 U.S.C. § 103(a) as being unpatentable
over Kintzer.
Claims 3, 4, 11, 12, 20, 28, 34-38, and 40 under 35 U.S.C. § 103(a) as
being unpatentable over Elsey and Zamora.
Claims 34, 46, 50, 52, 61, and 66 under 35 U.S.C. § 103(a) as being
unpatentable over Kintzer and Pokorny.
Claims 37 and 38 under 35 U.S.C. § 103(a) as being unpatentable
over Kintzer and Peachtree.
Claims 44-71 under 35 U.S.C. § 103(a) as being unpatentable over
Kintzer and Blaze.
Claim 57 under 35 U.S.C. § 103(a) as being unpatentable over
Kintzer, Blaze, and eField Ticket.

1
Requester filed a petition on July 22, 2011 for entry of additional proposed
rejections after the closing of prosecution. The petition was denied (see
Decision on Petition dated April 5, 2012, page 7). The Examiner’s refusal to
consider the additional proposed rejections is therefore not subject to appeal.
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Claims 48, 52, 60, 64, 65, 69, and 70 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kintzer and Brokat alone or in
combination with any one of Pokorny or Chender.
Claim 52 under 35 U.S.C. § 103(a) as being unpatentable over
Kintzer, Brokat, and Moore.
Claims 44, 58, and 59 under 35 U.S.C. § 103(a) as being unpatentable
over Kintzer and Fear.
Claims 53, 62, 67, and 71 under 35 U.S.C. § 103(a) as being
unpatentable over Kintzer and Kogan.

The Patent Owner appeals the Examiner’s rejection of the following
claims:
Claims 1, 2, 6-10, 13-19, 21-27, 29-33, 39, and 41-43 under 35 U.S.C.
§ 103(a) as being unpatentable over Elsey and Zamora (RAN 11).
Claims 44, 58, and 59 under 35 U.S.C. § 112, first paragraph as filing
to comply with the written description requirement (RAN 14-15).

ISSUE
Did the Examiner err in refusing to reject claims 1-4 and 6-71 over
certain grounds and rejecting claims 1, 2, 6-10, 13-19, 21-27, 29-33, 39, 41-
44, 58, and 59 over other grounds?

Appeal 2013-004229
Reexamination Control No. 95/001,397
Patent No. 7,669,133 B2

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PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Claims 44, 58, and 59 – Written Description
Claim 44 recites the complex transaction comprises subjective
selection of oilfield goods and services based on conditions experienced in
the field, such that there is a degree of variance between anticipated goods
and services and goods and services actually provided. The Examiner states
that the Specification fails to support this claim limitation.
Patent Owner (PO) argues that the Specification supports the claim
limitation “at, e.g., col. 10, lines 6-8” (PO App. Br. 16). The Specification
discloses “[i]n short, the Rules system 100 can be configured to monitor,
verify, approve, route, check and various other operations for any data, task,
request, process, or the like” (col. 10, ll. 6-9). In other words, the
Specification discloses a system that monitors operations.
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While Patent Owner cites the Specification at “col. 10, lines 6-8” as
providing support for the claim limitation of subjective selection of goods
and services based on conditions experienced in the field and a degree of
variance between anticipated and provided goods and services, Patent
Owner does not indicate how the disclosure of a system that monitors
operations (as disclosed at col. 10, ll. 6-9) supports the claim feature of
selecting goods/services based on conditions in the field and a degree of
variance between anticipated and provided goods and services.
Patent Owner also states that the Specification discloses that the rules
system improves the selection of product or services based on various
factors (PO App. Br. 16, citing Spec. at col. 9, ll. 36-42). Even assuming
Patent Owner’s contention to be correct that the Specification discloses
improving the selection of products or services based on various factors,
Patent Owner has not demonstrated that the Specification also discloses
actual selecting goods/services based on conditions in the field and a degree
of variance between anticipated and provided goods and services, as recited
in claim 44.

Kintzer – Claims 1-4 and 6-71 (Requester’s Appeal)
The Examiner states that the “questionnaire metaphor” of Kintzer
“asks follow up questions but does not expressly state that the user can
selectively modify the parameters when they do not comply with one or
more rules” (RAN 39). The Examiner also states that Kintzer fails to
disclose or suggest “modification by a user of parameters” (RAN 38). Patent
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Owner concurs with the Examiner with respect to this issue (PO Resp.
Br. 12-14) and further argues that “the ‘questionnaire metaphor’ described in
Kintzer simply drives questions of a customer questionnaire . . . and in no
way teaches or even contemplates the claimed server for interactive
parameter modification for complex oilfield goods/services transactions”
(PO Resp. Br. 13).
However, as Requester points out, Kintzer discloses that the system
defines conflicts (e.g., “option X does not work with option Y” – col. 12,
l. 66) in one example in which a “customer orders a car” (col. 12, ll. 51-52).
We agree with Requester that one of ordinary skill in the art would have
understood that if a customer violates a rule so as to create a conflict, the
system would enable the user to modify choices so as to resolve the conflict.
For example, in another example, Kintzer discloses that “if option K then
option L must be chosen” (col. 13, ll. 3-4). In other words, the user in
Kintzer modifies the parameters to ensure that both option K and option L
are chosen (as opposed to option K being chosen alone) because selecting
option K alone would not comply with the rule that “if option K then option
L must be chosen.” Similarly, if “option X does not work with option Y”
(col. 12, l. 66), then the user modifies the parameters to ensure that option Y
is not selected if option X is selected (and vice versa) because selecting both
option X and option Y together would not comply with the rule that “option
X does not work with option Y.”
Patent Owner argues that Kintzer fails to disclose “a complex
transaction relating to transfer of oilfield goods, oilfield services, or
combinations thereof” (PO Resp. Br. 13). We disagree with Patent Owner
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for at least the reasons set forth by the Examiner (see e.g., RAN 32-33, 35-
38). While Patent Owner argues that Kintzer discloses automating decisions
“in a business workflow” (PO Resp. Br. 12), a “workflow for handling credit
applications” (id.), a “questionnaire for selling a product” (PO Resp. Br.13),
and a “process for configuring options of an automobile purchase” (id.),
Patent Owner does not demonstrate that Kintzer also fails to disclose or
suggest a process relating to a transfer of oilfield goods, services, or
combination, as recited in claim 1, for example. As the Examiner points out,
Kintzer explicitly discloses “knowledge based systems . . . can be used [in] .
. . oil exploration” (col. 1, ll. 18-20).
Given that Kintzer discloses a system in which rules are created that
validate a parameter of a process and that such a “knowledge based system”
can be “used in” an embodiment where the process relates to “oil
exploration,” we agree that it would have been obvious to one of ordinary
skill in the art to create rules to validate a parameter in a process including a
transaction that relates to a transfer of oilfield goods, services, or
combinations thereof, as recited in claim 1, for example. Such a
combination would have entailed no more than the mere combination of
known functions (i.e., (1) a known knowledge based system involving
creating rules to validate a parameter of a process and (2) known processes
in knowledge based systems including processes relating to oilfield
exploration – both disclosed by Kintzer) to achieve the predictable result of
a known knowledge based system involving creating rules to validate a
parameter of a process relating to oilfield exploration. “The combination of
familiar elements according to known methods is likely to be obvious when
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it does no more than yield predictable results.” KSR Int’l Co., 550 U.S. at
416.
Patent Owner argues that Kintzer fails to disclose “a repository for
storing complex oilfield rules” (PO Resp. Br. 13). As above, we agree with
Requester that given that Kintzer discloses creating rules for use in a
“computerized” (e.g., col. 1, l. 43) knowledge based system (including, for
example, a knowledge based system relating to oilfield exploration), it
would have been obvious to one of ordinary skill in the art to have stored the
rules in some type of a “repository” after creating the rules because the user
would have been unable to use the rules at a subsequent time (i.e., when
utilizing the system) if the rules had not been stored. In other words, if the
rules had not been stored in Kintzer, there would be no rules for the user to
use and the system would be inoperable, which is contrary to what is
disclosed by Kintzer.
Patent Owner argues that “requester continues to ignore most of the
claim limitations recited in claims of the ‘133 patent” (PO Resp. Br. 15) but
does not indicate which specific claim features, if any, are not disclosed or
suggested by Kintzer. In the absence of Patent Owner’s additional specific
arguments, we do not independently identify specific claim features which
are not disclosed or suggested by Kintzer. See 37 CFR § 41.67(c)(1)(vii)
(“Any arguments or authorities not included in the brief permitted under this
section . . . will be refused consideration by the Board, unless good cause is
shown.”).
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For the above reasons, we conclude that the Examiner erred in
refusing to reject claims 1-4 and 6-71 as unpatentable over Kintzer under 35
U.S.C. § 103(a).

Claims 1-4 and 6-71 – Other rejections and proposed rejections

Our conclusion that the Examiner erred in refusing to reject the
above-referenced claims as unpatentable over the Kintzer reference renders
it unnecessary to reach the propriety of the Examiner’s decision not to adopt
the proposed rejections of those claims on a different basis and the
Examiner’s rejection of some of those claims on other bases. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach
the propriety of the proposed anticipation rejection of the claims over
Kintzer alone, the proposed rejections of the claims over Kintzer in
combination with Pokorny, Peachtree, Blaze, eField Ticket, Brokat,
Chender, Moore, Fear, and/or Kogan, or the rejection of claims over Elsey in
combination with Zamora . We also need not reach the propriety of the
Examiner’s actual rejection over Elsey and Zamora.

CONCLUSION
The Examiner erred in refusing to adopt the proposed rejection of
claims 1-4 and 6-71 as unpatentable over Kintzer. The Examiner did not err
in rejecting claims 44, 58, and 59 under 35 U.S.C. § 112, 1
st
paragraph.
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Reexamination Control No. 95/001,397
Patent No. 7,669,133 B2

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DECISION
We affirm the Examiner’s rejection of claims 44, 58, and 59 under 35
U.S.C. § 112, 1
st
paragraph but we reverse the Examiner’s decision not to
adopt the rejection of claims 1-4 and 6-71 as unpatentable over Kintzer.
The decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.77(b). Section 41.77(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” That section also provides
that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal proceeding
as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected
or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that
the proceeding be reheard under § 41.79 by the Board
upon the same record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
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must be in accordance with 37 C.F.R. § 41.79(c), respectively. Under 37
C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of
this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRM-IN-PART
37 C.F.R. § 41.77(b)

ak

Appeal 2013-004229
Reexamination Control No. 95/001,397
Patent No. 7,669,133 B2

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Birch Stewart Kolasch & Birch
P.O. Box 747
Falls Church, VA 22040-0747

Third Party Requester:

One World Trade Center
121 SW Salmon Street
Suite 1600
Portland, OR 97204