Ex Parte Bross et al

Patent Trial and Appeal Board

Jun 26, 2013

10495670 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WOLFGANG BROSS, NORBERT HEUMUELLER,
and FRITZ OESTERLE
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Appeal 2011-005293
Application 10/495,670
Technology Center 2100
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 12, 14, 16 to 24, and 27 to 35. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A computer-based method for completing missing
data for a transaction-tax-related application, the method using
completing rules which define, depending on which missing data
is to be completed, what further data might be considered for
deriving the missing data, the method comprising:
receiving, by a computer system, a completing request for
completing missing data for the transaction-tax-related
application;
evaluating, by the computer system, at least one completing
rule associated with the missing data while using the further data
as defined within the at least one completing rule to automatically
derive data for completing the missing data, wherein the at least
one completing rule specifies jurisdictional criteria for completing
the missing data, wherein deriving the data for completing the
missing data varies depending upon which jurisdiction is
associated with the missing data;
determining, by the computer system, an auto-completion
certainty parameter as a result of the completing-rule evaluation;
comparing, by the computer system, the certainty parameter
with a certainty requirement;
opening, by the computer system, a user dialog, in response
to the certainty parameter's failure to fulfill the certainty
requirement, and determining data to be used as the completed
data in the user dialog;
using, by the computer system, the automatically derived
data as the completed data without opening the user dialog, in
response to the certainty parameter fulfilling the certainty
requirement; and
returning, by the computer system, the completed data.

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Appellants appeal the following rejections:
1. Claims 1 to 4, 6 to 12, 14 to 17, 19 to 25, 27, and 32 under 35 U.S.C. §
103(a) as unpatentable over Stanley (US 2006/0178961 A1; pub. Aug.
10, 2006), Payne (US 6,092,090; iss. Jul. 18, 2000), White (US
2003/0236720 A1; pub. Dec. 25, 2003), and Johnson (US 2007/0208636
A1; pub. Sep. 6, 2007).
2. Claims 5 and 18 under 35 U.S.C. § 103(a) as unpatentable over Stanley,
Payne, White, Johnson, and Box (US 7,194,426 B1; iss. Mar. 20, 2007).
3. Claims 28 to 31 under 35 U.S.C. § 103(a) as unpatentable over Stanley,
Payne, White, Johnson, and Maxwell (US 7,062,706 B2; iss. Jun. 13,
2006).

ANALYSIS
The Appellants argue that that there is no reason to combine the
teachings of Stanley, Payne, and Johnson and even if these references were
hypothetically combined, the hypothetical combination would not have
disclosed each and every element of the claim. We agree.
We find that Stanley discloses a system to automatically prepare a tax
return with universal data import. In the Stanley system, missing or
incomplete imported tax data is flagged for the user’s attention before the
tax return is prepared (para. [0015]).
We find that Payne discloses a management system for documents
stored electronically which presents a pick list for the user to complete an
index (col. 7, l. 64 to col. 8, l. 5).
We find that White discloses an accounts receivable error processing
system and method in which the missing or invalid data is detected, the
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system records are searched for the missing or invalid data, and the missing
or invalid data is added (para. [0040]).
The Examiner reasons that it would have been obvious to a person of
ordinary skill in the art to combine the teachings of Stanley, Payne, and
White to arrive at a method which provides an automatic matching error
handling action process. However, the Examiner has not explained why a
person of ordinary skill in the art would have combined the teachings of
Stanley and Payne to produce a system with automatic error correction when
both Stanley and Payne teach a system of error correction. In this regard, in
both Stanley and Payne a user provides the missing data or corrects the
incorrect data. As both of these references disclose a method of correcting
missing and inaccurate data, it is unclear why a person of ordinary skill in
the art would have modified the Stanley/Payne method so as to include an
automatic process to supply missing or inaccurate data. Further, the
Examiner has not explained how the proposed combination would do so in
response to the certainty parameter fulfilling the certainty requirement. The
Examiner relies on paragraph [0040] of White for teaching this subject
matter (Ans. 9). We find that this paragraph of White teaches only that data
is filled in by the system when it is determined that the data is missing or
invalid. The Examiner has not directed our attention to a disclosure in the
prior art of using the computer system to supply completed data in response
to the certainty parameter fulfilling the certainty requirement.
In view of the foregoing, we will not sustain the Examiner’s rejection
under 35 U.S.C. § 103(a) as being unpatentable over Stanley in view of
Payne, White, and Johnson of claim 1 and claims 2 to 4 and 6 to 12
dependent thereon. We will also not sustain the rejection as it is directed to
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claims 14 to 17, 19 to 25, 27, and 32 because each of the remaining claims
includes the requirement that the computer system inputs data in response to
the certainty parameter fulfilling the certainty requirement.
We will also not sustain the remaining rejections because each of the
claims rejected include the requirement that data be inputted in response to
the certainty parameter fulfilling the certainty requirement and the Examiner
has not directed our attention to disclosure in Box and Maxwell which
discloses this subject matter.

DECISION
The decision of the Examiner is reversed.

REVERSED

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