Ex Parte Aldrich et al

Board of Patent Appeals and Interferences

Mar 24, 2009

09315141 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte STEVEN P. ALDRICH, MARK T. MCCRERY, SLAWEK I. 8
LIGIER, TIMOTHY J. FROEMLING, and ADRIENNE FETROW 9
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Appeal 2008-4857 12
Application 09/315,141 13
Technology Center 3600 14
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Decided:1 March 25, 2009 17
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Before MURRIEL E. CRAWFORD, ANTON B. FETTING, and DAVID B. 20
WALKER, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL25

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 09/315,141

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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 7. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellant invented an online insurance system that includes a 4
customer interfacing subsystem coupled to a quoting system (Specification 5
1, 7; Figures 1 and 2). 6
Claim 1 under appeal reads as follows: 7
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1. In an online insurance information system 9
comprising an insurance quoting system, an agent 10
contact system, agent systems, and customer 11
systems, said insurance quoting system, said agent 12
contact system, said agent systems, and said 13
customer systems being separate and remote from 14
each other, said agent contact system comprising: 15
a customer interfacing subsystem coupled to 16
said quoting system and to a given said customer 17
system for presenting on said given customer 18
system plural different agents representative of 19
different insurance companies from which to 20
choose, the different agents comprising separate 21
agent systems, and for receiving an online 22
indication by a given customer of a desire to 23
pursue a policy with a given agent, said given 24
customer comprising a given contact; 25
a create contact engine for identifying said 26
given agent system and saving in a database local 27
to said agent contact system a personal insurance 28
profile and contact information corresponding to 29
said given customer; 30
an agent interfacing subsystem coupled to 31
said given agent system for receiving an online 32
indication by said given agent of a desire to view, 33
print, or modify said contact information; and 34
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a process contact engine for contacting said 1
given agent system with information regarding 2
said contact, and for accessing and modifying said 3
contact information in accordance with online 4
indications made by said given agent. 5
6
The Examiner rejected claims 1 to 4 and 7 under 35 U.S.C. § 103(a) 7
as being unpatentable over Burger in view of Erickson. 8
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as 9
being unpatentable over Burger in view of Erickson and DeBruin-Ashton. 10
The prior art relied upon by the Examiner in rejecting the claims on 11
appeal is: 12
DeBruin-Ashton US 6,014,629 Jan. 11, 2000 13
Erickson US 6,014,644 Jan. 11, 2000 14
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Burger, Networking computing becomes a reality for insurers, 21 16
Insurance & Technology 16-18 (Dec. 1996)(hereinafter referred to as 17
“Burger”). 18
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ISSUES 20
Have Appellants shown that the Examiner erred because the Examiner 21
has failed to establish a prima facie case of obviousness? 22
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FINDINGS OF FACT 24
Burger discloses a system called PolicyNet which is an application 25
that permits insurance companies, regardless of the system they are using, to 26
exchange data with any other system (Page 1). Burger discloses that an 27
insurer could decide what functionality you want to provide on the Internet 28
to what set of users. Burger also discloses that the insurance companies’ 29
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problem of communicating with external users is solved by PolicyNet’s use 1
of the Internet (Page 2). Burger also discloses another system called Insure 2
which tracks electronic addresses and therefore at least suggests 3
communication via the Internet (Page 2). 4
Erickson discloses a system for facilitating communication between a 5
plurality of buyers and a plurality of suppliers (col. 3, ll. 1 to 9). Buyers and 6
suppliers may submit information to a central database maintained by a 7
service provider (col. 3, ll. 31 to 32). Buyers or suppliers may extract 8
information from the database in order to identify goods and services that 9
are available or desired in the marketplace (col. 3, ll. 3 to 5). When a buyer 10
wishes to purchase goods or services or request a bid from various suppliers 11
for particular goods or services, the buyer can browse the database using 12
various criteria (col. 3, ll. 43 to 46). 13
The instant application was the subject of a decision of the Board 14
mailed on August 20, 2004. In that decision, the previous panel of the Board 15
determined that Erickson does not disclose a process contact engine for 16
accessing and modifying said contact information in accordance with online 17
indications made by said given agent as is required by claim 1 on appeal 18
from which claims 2 to 7 depend. 19
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PRINCIPLES OF LAW 21
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the 22
Examiner to establish a factual basis to support the legal conclusion of 23
obviousness. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In so 24
doing, the Examiner must make the factual determinations set forth in 25
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Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Furthermore, "'there 1
must be some articulated reasoning with some rational underpinning to 2
support the legal conclusion of obviousness" KSR Int’l Co. v. Teleflex Inc., 3
127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. 4
Cir. 2006)). 5
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ANALYSIS 7
We will not sustain the Examiner’s rejection. First, although the 8
Examiner is correct that there are circumstances in which the preamble may 9
not be given patentable weight, the recitation of a “customer interfacing 10
subsystem coupled to said quoting system” is not in the preamble but in the 11
body of the claim. As such, the connection of the customer interfacing 12
subsystem to the insurance quoting system is a positive element of claim 1. 13
We agree with the Appellants that the Examiner has not identified 14
which of the referenced portions and/or various described products and 15
features correspond to the claimed invention. In this respect, the Examiner 16
has not identified which elements in the prior art references corresponds to 17
the claimed customer interfacing subsystem coupled to an insurance quoting 18
system, create contact engine, agent interfacing subsystem and process 19
contact engine. The Examiner merely refers to large portions of the 20
references and then reiterates the language of claim 1. The Examiner has 21
failed to explain how the limitations of claim 1 are disclosed by these 22
sections of the references. 23
For example, the Examiner at page 5 of the Answer, refers to the 24
Abstract, page 1, paragraph 2 to page 2 paragraph 1, paragraph bridging 25
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pages 2 to 3 of the Burger reference for disclosing the recited insurance 1
quoting system, agent contact system, customer system, and that these 2
systems are separate and remote from each other. The Examiner does not 3
explain how these portions of the Burger reference disclose the various 4
elements. Again, when referring to the Erickson reference the Examiner 5
cites large portions of the Erickson reference as disclosing the various 6
elements the Examiner found missing in the Burger reference. For example, 7
the Examiner at page 6 reiterates the language of claim 1 and cites Figure 2, 8
column 3, lines 12 to 58, column 4, lines 21 to 55, column 8, lines 1 to 50, 9
column 9, lines 4 to 49, column 10, line 1 to column 11 line 19, column 18, 10
line 25 to column 19, line 8). Absent is any analysis of how the various 11
elements of claim 1 are disclosed in the cited portions of Erickson. As such, 12
the Examiner has not properly apprised the Appellants of the details of the 13
rejection. 14
In addition, we note that the Examiner relies on Erickson for teaching 15
the recited process contact engine for modifying said contact information in 16
accordance with the online indication made by said given agent in spite of 17
the previous finding by the board panel in the earlier appeal to the contrary. 18
Still further, the Examiner states that one would have been motivated 19
to modify the teachings of Burger in accordance with the teachings of 20
Erickson so as to analyze and compare responses and facilitate exchange of 21
information between a plurality of buyers and suppliers. The Erickson 22
reference relates to buyers and suppliers. However, the Burger reference 23
does not relate to buyers and suppliers. We must remind the Examiner that 24
the stated rationale for the combination was based on modifying the Burger 25
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reference in view of the teachings of Erickson not modifying the Erickson 1
reference in view of the Burger reference. The Examiner has not established 2
why one using one of the Burger insurance systems would have desired to 3
facilitate exchange of information between a plurality of buyers and a 4
plurality of suppliers. If the Examiner is equating buyers with potential 5
insurance customers and suppliers with insurance companies, it is not clear 6
why one would use the method of Erickson for communication when the 7
Burger reference discloses that data can be exchanged and both the 8
PolicyNet system and the Insure system disclose or at least suggest 9
communication between insurance companies and customers.2 As such, the 10
Examiner has not articulated a reasoning with a rational underpinning to 11
support the legal conclusion of obviousness based a combination of Burger 12
and Erickson. 13
In view of the foregoing, we conclude that the Examiner has failed to 14
establish a prima facie case of obviousness of the appealed claims. 15
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CONCLUSION OF LAW 17
On the record before us, Appellants have established that the 18
Examiner erred in finding that the claims are unpatentable over the teachings 19
of Burger and Erickson. 20

2 The Examiner is reminded that it is not the responsibility of this panel of
the Board to mine through the huge sections of the references cited by the
Examiner to find support for the various elements claimed or to fashion a
rational underpinning for the rejection.
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DECISION 1
The Examiner's decision is REVERSED. 2
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REVERSED 4
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CAMPBELL STEPHENSON, LLP 14
11401 CENTURY OAKS TERRACE 15
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AUSTIN, TX 78758 17
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