Ex Parte Burrows

Board of Patent Appeals and Interferences

Sep 6, 2006

09910654 (B.P.A.I. Sep. 6, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RODGER BURROWS
_____________
Appeal No. 2006-1910
Application No. 09/910,654
______________
HEARD: August 9, 2006
_______________
Before KRASS, JERRY SMITH, and RUGGIERO, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-15, 17 and 18, which
constitute all the claims in the application.
The disclosed invention pertains to a method and
apparatus for electronically generating, storing and retrieving
airline ticket agency coupon data.
Representative claim 1 is reproduced as follows:
1. A method for electronically generating, storing, and
retrieving airline ticket agency coupon data, comprising the
steps of:
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Application No. 09/910,654
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generating agent coupon data simultaneously with the
printing of an airline ticket;
transmitting and storing said agent coupon data
electronically to and in data storage apparatus;
providing each agent coupon data with an identifier;
storing said agent coupon data in a
director/directory/image file arrangement; and
retrieving said electronically stored agent coupon
data and printing the same in the format of an agent coupon.
The examiner relies on the following references:
Industry Agents’ Handbook (IAH), Section 70.0 (2000 Ed.).
Prior art submitted by appellant relating to events involving
Airlines Reporting Corporation, collectively referred to as ARC.
Claims 1-15, 17 and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the prior art submitted by
appellant which has collectively been labeled ARC. The basis for
this rejection was quoted from a prior Board decision in making a
new ground of rejection against the claims in a prior appeal of
this application (Appeal No. 2004-2110, mailed January 25, 2005).
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
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Application No. 09/910,654
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OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
relied upon by the examiner as support for the rejection. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellant’s arguments set forth in the
briefs along with the examiner’s rationale in support of the
rejection and arguments in rebuttal set forth in the examiner’s
answer.
It is our view, after consideration of the record before
us, that the evidence relied upon does support the rejection of
the claims under 35 U.S.C. § 103(a). Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). The examiner must articulate
reasons for the examiner’s decision. In re Lee, 277 F.3d 1338,
1342, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). In particular, the
examiner must show that there is a teaching, motivation, or
suggestion of a motivation to combine references relied on as
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Application No. 09/910,654
4
evidence of obviousness. Id. 277 F.3d at 1343, 61 USPQ2d at
1433-34. The examiner cannot simply reach conclusions based on
the examiner’s own understanding or experience - or on his or her
assessment of what would be basic knowledge or common sense.
Rather, the examiner must point to some concrete evidence in the
record in support of these findings. In re Zurko, 258 F.3d 1379,
1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the examiner
must not only assure that the requisite findings are made, based
on evidence of record, but must also explain the reasoning by
which the findings are deemed to support the examiner’s
conclusion. However, a suggestion, teaching, or motivation to
combine the relevant prior art teachings does not have to be
found explicitly in the prior art, as the teaching, motivation,
or suggestion may be implicit from the prior art as a whole,
rather than expressly stated in the references. The test for an
implicit showing is what the combined teachings, knowledge of one
of ordinary skill in the art, and the nature of the problem to be
solved as a whole would have suggested to those of ordinary skill
in the art. In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006) citing In re Kotzab, 217 F.3d 1365, 1370,
55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). See also In re
Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir.
2002). These showings by the examiner are an essential part of
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complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden
then shifts to the applicant to overcome the prima facie case
with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In
re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered and are deemed to be waived [see 37 CFR
§ 41.37(c)(1)(vii)(2004)].
As noted above, the basis for the examiner’s rejection is
the same as was set forth in the previous decision by the Board
in this application. With respect to independent claims 1 and
15, which are the only claims argued by appellant in the briefs,
appellant essentially makes the following arguments:
1) The examiner and the Board misconstrued the teachings
of ARC with respect to the storing of an image of the agent
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coupon and the storing of agent coupon data. Specifically,
appellant argues that ARC only discloses that the image of the
agent coupon is stored, and not that the agent coupon data should
be optically stored.
2) An image is not data and data is not an image, as the
words are commonly used.
3) The finding of obviousness based on facsimile
transmission is erroneous because facsimile transmission involves
transmission of an image rather than data.
4) The finding of obviousness based on multimedia network
transmissions is erroneous because the prior art would still not
teach the step of generating the agent coupon data as claimed.
5) IAH completely prohibits the storage of data so that
the portion of IAH cited by the examiner should be interpreted to
mean that the copying of an image of the coupon to an electronic
storage device is prohibited.
6) The examiner has failed to establish a prima facie
case of obviousness.
7) ARC teaches away from the claimed invention because
ARC wanted the image of the agent coupon to be stored and does
not want the agent coupon data to be stored.
The examiner responds that appellant’s arguments in the
brief were already considered by the Board in the previous
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decision. The examiner also notes that appellant’s own
specification states that data can include image format data and
that claim 1 stores agent coupon data in an image file
arrangement. The examiner asserts that the term “agent coupon
data” is being given its broadest reasonable interpretation as
required during patent prosecution. The examiner also responds
that the preclusion of electronic storage by ARC does not teach
away from the claimed invention because ARC is simply noting
known alternative storage devices which they find unacceptable
[answer, pages 4-8].
Appellant responds that IAH teaches that all supporting
documents must be copied to microfiche film or to a non-magnetic
optical medium, and that copying is not the same as storing
because copying requires the presence of a physical document.
Appellant notes that the claimed invention does not involve
copying. Appellant also responds that the distinction between
image and data was not addressed. Appellant reiterates that
facsimile transmission or a multimedia network transmission does
not transmit data which is then reconstructed as an image, but
instead, transmits an image. Appellant also disputes the
examiner’s suggestion that appellant’s specification states that
an image of an agent coupon and agent coupon data are the same
thing [reply brief, pages 3-6].
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We will sustain the examiner’s rejection of claims 1-15,
17, and 18. We first wish to address an apparent
misunderstanding of the rejection by appellant. The rejection is
based on the finding that ARC teaches the claimed invention
except for the storing of agent coupon data in an electronic
form. In other words, the Board found that ARC teaches the
storage of agent coupon data in optical form. When an airline
ticket is printed for a customer, the data associated with that
ticket must have been simultaneously generated in order to print
the airline ticket. ARC allows an agent coupon that is
representative of that transaction to be stored as an optical
image of the transaction. That optical image contains data that
can be used to verify the details of the transaction. It is
similar to a bank checking account statement that includes images
of the checks handled rather than the cancelled checks
themselves. The images of the cancelled checks include data,
such as payee and amount of the check, so that the account holder
can verify the statement. In other words, although the data for
the checks is in the form of optical images of the checks, these
images, nevertheless, convey data about the checks. In the same
manner, the images of the agent coupon, that are taught by ARC,
also convey data about the transaction. Therefore, the point of
the rejection was that it would have been obvious to the artisan
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to store the agent coupon data electronically in view of the fact
that ARC already taught that the coupon data could be stored in
image form. Thus, appellant’s argument that there is a
difference between image and data fundamentally misunderstands
that an image can also convey data.
Although ARC precludes the electronic storage of the
agent coupon data, this is not the type of disclosure that
constitutes a teaching away. The concept of teaching away refers
to a teaching that would lead the artisan to believe that the
path taken would not be technically or operationally feasible.
The teaching in ARC against electronic storage has nothing to do
with technical or operational feasibility. ARC wanted an image
of the agent coupon to replace the physical version of the agent
coupon already in use. In other words, ARC wanted something they
could still look at in the same manner as a physical agent
coupon. The standard set forth by ARC, however, has nothing to
do with obviousness under 35 U.S.C. § 103. In fact, we agree
with the examiner that ARC teaches that it was known that the
agent coupon data could be stored electronically, but that such
storage would not be acceptable for their purposes. Thus, ARC
specifically recognized that the agent coupon data could be
stored electronically, but ARC chose not to permit this form of
verification of the ticket information.
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Even though ARC teaches that the agent coupon data could
be stored electronically even though such storage would not be in
compliance with their rules, we made reference to facsimile
transmission and multimedia transmission to support our finding
that it was conventional in the art to transmit image data in
electronic form for subsequent conversion back into image data.
We simply do not agree with appellant’s argument that facsimile
transmission or multimedia transmission of images is image data
rather than electronic data. In such communications, the images
are converted to electronic signals which are reassembled into
images after they are received. Since the images convey data
regarding the airline ticket, the electronic form of the image
also conveys data. Therefore, we still find that the image of
the agent coupon represents data so that the electronic version
of the image also represents data.
As noted above, our position is nothing more than a
conclusion that it would have been obvious to the artisan to
store the agent coupon image data as taught by ARC as electronic
data because ARC recognized that such image data could also be
stored electronically and because the artisan was familiar with
converting image data into electronic data as required by
facsimile and multimedia transmission.
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In summary, we have sustained the examiner’s rejection of
the claims on appeal. Therefore, the decision of the examiner
rejecting claims 1-15, 17 and 18 is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).

AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JS/hh/eld
Appeal No. 2006-1910
Application No. 09/910,654
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RICHARD M. SACCOCIO
RICHARD M. SACCOCIO, P.A.
100 SOUTHEAST 12 STREETTH
FT. LAUDERDALE, FL 33316