Ex Parte Pous et al

Board of Patent Appeals and Interferences

Sep 1, 2010

10043856 (B.P.A.I. Sep. 1, 2010)

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.
10/043,856 01/11/2002 Jean-Luc Pous 22.1489 8450
7590 09/01/2010
Patent Counsel
Schlumberger Reservoir Completions
Schlumberger Technology Corporation
14910 Airline Road
Rosharon, TX 77583
EXAMINER
ROSEN, NICHOLAS D
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
09/01/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JEAN-LUC POUS, DAVID L. MALONE, 8
IAN T. SCHUUR, and PETER A. GOODE 9
___________ 10
11
Appeal 2010-001334 12
Application 10/043,856 13
Technology Center 3600 14
___________ 15
16
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL1 20
21

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001334
Application 10/043,856

2
STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 8, 2007) and Reply Brief (“Reply Br.,” filed November 5,
2007), and the Examiner’s Answer (“Ans.,” mailed September 4, 2007).
Jean-Luc Pous, David L. Malone, Ian T. Schuur, and Peter A. Goode 2
(Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection of 3
claims 42-62, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a way of supplying custom engineered products 6
(Specification 2: Field of Invention). An understanding of the invention can 7
be derived from a reading of exemplary claim 42, which is reproduced 8
below [bracketed matter and some paragraphing added]. 9
42. A method comprising: 10
[1] providing an online catalog on a computer, 11
the catalog having an unavailable product/attribute 12
selector to select an unavailable product or attribute that 13
is not offered for sale; and 14
[2] using selections of unavailable products or attributes that are 15
not offered for sale obtained via the unavailable 16
product/attribute selector as market research 17
to determine whether to extend a product offering that 18
includes the unavailable products or attributes. 19
20
Appeal 2010-001334
Application 10/043,856

3
The Examiner relies upon the following prior art: 1
Joseph US 5,878,401 Mar. 2, 1999
House US 6,785,805 B1 Aug. 31, 2004
Hunter US 6,850,901 B1 Feb. 1, 2005
EMCORE Announces Expectations For Record Year End Revenue And 2
Substantial Increases In 2001 Backlog. Business Wire, October 30, 2000 3
at p. 0144 (hereinafter referred to as “Emcore”) 4
Claims 42, 44, 45, 53, 54, and 56-59 stand rejected under 35 5
U.S.C. § 103(a) as unpatentable over House and Emcore. 6
Claim 51 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 7
House, Emcore, Official Notice, and Hunter. 8
Claim 43 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 9
House, Emcore, and Joseph. 10
Claims 46-50, 52, 55, 60, and 62 stand rejected under 35 U.S.C. § 103(a) 11
as unpatentable over House, Emcore, and Official Notice. 12
Claim 61 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 13
House, Emcore, Joseph, and Official Notice. 14
15
ISSUES 16
The issue of obviousness hinges on whether it was predictable for House 17
to use data from product customization requests to extend its product line. 18
Appeal 2010-001334
Application 10/043,856

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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to Claim Construction 4
01. The disclosure states that “[a]n unavailable product/attribute [] 5
is one that the seller does not currently offer and that requires 6
engineering, testing, or both before it may be produced/sold.” 7
Specification 6:9-11. 8
Facts Related to the Prior Art 9
House 10
02. House is directed to network-based methods for configuring 11
and building integrated systems, such as integrated test, 12
automation, and/or measurement systems. The methods may be 13
internet or intranet-based applications that configure and price an 14
integrated system in response to selection of system features 15
and/or system configurations by a network user. House 1:16-18. 16
03. House provides online and offline selection tools to identify 17
individual components. The components may be off the shelf or 18
custom designed and made. House 2:12-27; 48-63. 19
04. The customized components may require engineering design 20
and test services to complete. House 4:59 – 5:3; 5:34-40. 21
22
23
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Application 10/043,856

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Emcore 1
05. Emcore is directed to a notice that Emcore would increase R&D 2
expenditures to capitalize on new market opportunities. Emcore 3
1:1st ¶. 4
06. Emcore stated that such increases were in direct response to 5
customer demand. Emcore 1:5th ¶. 6
ANALYSIS 7
Claims 42 and 56 are the only independent claims and the only claims 8
argued. Accordingly the remaining claims stand or fall with their parent 9
claims. 10
The Appellants argue that the art fails to show a reason for one to have 11
expanded a product line based on selection of an unavailable 12
product/attribute selector of an online catalog as required by limitation [2] of 13
claim 42. Appeal Br. 10-11. The Examiner found that this was mere 14
product development based on customer demands made apparent by requests 15
for customization in House. Ans. 13-14. The Appellants characterize the 16
Examiner’s findings as an obvious to try analysis, and argue that the 17
Examiner has not shown a solution to the problem in the art. Reply Br. 2-3. 18
The Appellants also argue for the first time that House does not describe an 19
unavailable product/attribute selector for an unavailable product or attribute 20
that is no offered for sale. Reply Br. 3. 21
As to the most recent argument regarding whether House offers 22
unavailable products, we find that the Appellants have acted as their own 23
lexicographer and defined an unavailable product as “one that the seller does 24
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Application 10/043,856

6
not currently offer and that requires engineering, testing, or both before it 1
may be produced/sold.” FF 01. House offers to add components it does not 2
currently sell, but may be custom made, in its test systems. FF 03. These 3
customized components may require engineering design and test services to 4
complete. FF 04. Accordingly, we find that House does offer unavailable 5
products in its online system (catalog). 6
As to the reason for combining the references to have expanded a 7
product line based on selection of an unavailable product/attribute selector 8
of an online catalog, the Examiner articulated a compelling line of reasoning 9
that recognized customer demand would typically trigger an expansion in a 10
product line with the rational underpinning being evidence in the form of 11
Emcore. The Examiner elaborated on this at Answer 13-16 and we adopt 12
those Examiner’s findings and rationale. 13
“[R]ejections on obviousness grounds cannot be sustained by mere 14
conclusory statements; instead, there must be some articulated reasoning 15
with some rational underpinning to support the legal conclusion of 16
obviousness”). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) 17
citing In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006). 18
This is not an obvious to try analysis, as one of ordinary skill would have 19
known exactly how to implement the resultant method – merely observing 20
sales statistics to decide to make standard what was already custom designed 21
and built. This is standard product marketing fare. 22
Claim 56 is to a system that is used to perform the method of claim 42. 23
Since this is a system claim, certain structural elements are added that are 24
not explicit in claim 42, such as a processor to compile the selections. The 25
Appeal 2010-001334
Application 10/043,856

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Appellants argue that the art fails to describe a processor to compile the 1
selections as recited in claim 56. Appeal Br. 12. The Examiner responded 2
that for House to see which custom designs (unavailable products) were 3
worthy of making standard, some compilation must have been performed 4
and House has the server that would have the capacity to do such a 5
compilation. Ans. 16. We agree with the Examiner for those reasons. 6
7
CONCLUSIONS OF LAW 8
Rejecting claims 42, 44, 45, 53, 54, and 56-59 under 35 U.S.C. § 103(a) 9
as unpatentable over House and Emcore is not in error. 10
Rejecting claim 51 under 35 U.S.C. § 103(a) as unpatentable over 11
House, Emcore, Official Notice, and Hunter is not in error. 12
Rejecting claim 43 under 35 U.S.C. § 103(a) as unpatentable over 13
House, Emcore, and Joseph is not in error. 14
Rejecting claims 46-50, 52, 55, 60, and 62 under 35 U.S.C. § 103(a) as 15
unpatentable over House, Emcore, and Official Notice is not in error. 16
Rejecting claim 61 under 35 U.S.C. § 103(a) as unpatentable over 17
House, Emcore, Joseph, and Official Notice is not in error. 18
19
DECISION 20
To summarize, our decision is as follows. 21
• The rejection of claims 42, 44, 45, 53, 54, and 56-59 under 35 U.S.C. 22
§ 103(a) as unpatentable over House and Emcore is sustained. 23
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Application 10/043,856

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• The rejection of claim 51 under 35 U.S.C. § 103(a) as unpatentable 1
over House, Emcore, Official Notice, and Hunter is sustained. 2
• The rejection of claim 43 under 35 U.S.C. § 103(a) as unpatentable 3
over House, Emcore, and Joseph is sustained. 4
• The rejection of claims 46-50, 52, 55, 60, and 62 under 35 5
U.S.C. § 103(a) as unpatentable over House, Emcore, and Official 6
Notice is sustained. 7
• The rejection of claim 61 under 35 U.S.C. § 103(a) as unpatentable 8
over House, Emcore, Joseph, and Official Notice is sustained. 9
No time period for taking any subsequent action in connection with this 10
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 11
§ 1.136(a)(1)(iv) (2007). 12
13
AFFIRMED 14
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17
mev 18
19
Address 20
Patent Counsel 21
Schlumberger Reservoir Completions 22
Schlumberger Technology Corporation 23
14910 Airline Road 24
Rosharon TX 77583 25