Ex Parte DeMarcken

Board of Patent Appeals and Interferences

Dec 29, 2010

10272426 (B.P.A.I. Dec. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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26161 7590 0 1/04/20 1 1
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS. MN 55440- 1022
APPLICATION NO.
EXAMINER
ARAQUE JR, GERARD0
I ARTUNIT I PAPERNUMBER I
101272,426 1011612002 Carl G. DeMarcken 09765-032001 8250
FILING DATE
Please find below andlor attached an Office communication concerning this application or proceeding.
FIRST NAMED INVENTOR
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC @ fr.com
ATTORNEY DOCKET NO.
01/04/2011 ELECTRONIC
PTOL-90A (Rev. 04/07)
CONFIRMATION NO.
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte CARL G. DEMARCKEN
Appeal 2009-01 1006
Application 101272,426
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-01 1006
Application 101272,426
STATEMENT OF THE CASE^
Carl G. DeMarcken (Appellant) filed a Request for Rehearing of the
Decision to affirm in part the decision of the Examiner to reject claims 1-43
under 35 U.S.C. §103(a) as being unpatentable over Oracle, Jones, and
Oracle 9i and to enter a new ground of rejection of claim 23-29 and 41-43
under 35 U.S.C. 5 1 12, second paragraph.
In accordance with 37 C.F.R. 5 41.52(a)(l), the Request includes
certain points, in particular, that the Appellant believes the Board
misapprehended or overlooked in reaching its Decision. We have reviewed
the Request in its entirety but do not find that the Appellant has shown the
Board to be in error in deciding to affirm in part the decision of the
Examiner to reject claims 1-43 under 35 U.S.C. §103(a) as being
unpatentable over Oracle, Jones, and Oracle 9i and to enter a new ground of
rejection of claim 23-29 and 41-43 under 35 U.S.C. 5 112, second
paragraph. Our reasons are enumerated in the DISCUSSION section below.
DISCUSSION
Claims 1-43 are rejected under 35 U.S. C. $1 03(a) as being unpatentable
over Oracle, Jones, and Oracle 9i.
In the Decision, we affirmed the rejection of claim 1- 17, 19-22, and
30-40 under 35 U.S.C. 5 103(a) as being unpatentable over Oracle, Jones,
2 Our decision will make reference to the Appellants' Request for Rehearing
(filed Jul. 20, 2010, "Request") and the BPAI Decision (mailed May 24,
2010, "Decision).
Appeal 2009-01 1006
Application 101272,426
and Oracle 9i but reversed pro forma the rejection of claims 23-29 and 41-43
under 35 U.S.C. 5 103(a) as being unpatentable over Oracle, Jones, and
Oracle 9i in light of the decision to reject claim 23-29 and 41-43 under 35
U.S.C. 5 1 12, second paragraph, for indefiniteness as a new ground of
rejection. The rejection of claim 18 under 35 U.S.C. 5 103(a) as being
unpatentable over Oracle, Jones, and Oracle 9i was reversed.
The Appellant argues that the Board misapprehended what Jones
discloses. The Appellant disagrees that Jones discloses travel information
can be broken down in ranges. Request 2-3.
The Appellant's argument is unpersuasive.
The rejection is over the combination of Oracle, Jones, and Oracle 9i
and not Jones alone. As we found that "[gliven Oracle's disclosure of
dividing a query into subtasks and in light Appellant's insufficient argument
to the contrary, we adopt the Examiner's position that Oracle discloses
dividing queries into sub-queries by a computer system." Decision 6. Jones
was relied upon only "[oln the subject of 'travel' queries 'including trip
information' and 'trip information divided into ranges' ". Decision 7.
As to Jones in particular, we did state that
Fig. 6 shows an intermediate input screen to further
query for the best fare available by desired airline. See Jones
[0058]. An output screen is shown in Fig. 7 which shows a best
fare for a selected airline and a range of available dates. See
Jones [0059]." When a user inputs travel information in order to
query for a best fare, the Jones system returns a range of
available dates on which travel can take place for that fare.
Accordingly, as the Examiner has argued, Jones discloses a
"travel" query "including trip information" that returns "trip
information divided into ranges." We should add that, in
disclosing an intermediate input screen after the initial travel
Appeal 2009-01 1006
Application 101272,426
query screen, Jones would appear to be necessarily also
disclosing narrowing a travel query to a sub-query, both of
which would include trip information.
Given Jones's disclosure of a "travel" query "including
trip information" that returns into "trip information divided into
ranges" and in light of Appellant's insufficient argument to the
contrary, we adopt the Examiner's position that Jones discloses
a travel query including trip information that returns trip
information divided into ranges.
The claimed subject matter differs from the cited prior art
in providing for a method that divides a travel query into sub-
queries having travel information in ranges. By contrast, the
cited prior art discloses, separately, dividing a travel query into
sub-queries (Oracle) and providing a travel query that returns
"trip information divided into ranges" (Jones).
Decision 7-8.
The Appellant argues that Fig. 6 is not an intermediate input screen to
further query for the best fare available by desired airline as the Board has
characterized it. But [0058] of Jones, which the Board cited in support,
appears to disclose that. "FIG. 6 shows an intermediate input screen ... The
user has an option of choosing ... lowest absolute fare." [0058]. The
Appellant argues that Fig. 7 is not an output screen which shows a best fare
for a selected airline and a range of available dates as the Board has
characterized it. But [0059] of Jones, which the Board cited in support,
appears to disclose that. "FIG. 7 illustrates an exemplary output screen ...
displays both the selected price [ ] and the selected airline [ ] ... Calendar [ ]
displays availability and applicability for the selected fare on the selected
airline over a period of time, such as [ ] days." [0059]. The Appellant does
not read the figures in light of the associated disclosure in Jones and that the
Board relied upon. The Request does not address the associated disclosure.
Appeal 2009-01 1006
Application 101272,426
Accordingly, we are not persuaded that the Appellant has shown the
Board's characterization is "contrary to the literal teachings of Jones."
Request 3.
Nor are we persuaded that the Appellant has shown the Board was in
error to find that the Examiner "fully explained the scope and content of the
prior art and provided an apparent reasoning with rational underpinning for
the legal conclusion of obviousness." Decision 9. We are not persuaded
that Appellant has shown the Board misapprehended or overlooked a point
in finding that "Appellant was thus under a burden on appeal to the Board to
demonstrate error in the Examiner's position" (Decision 9) but that the
Appellant did not persuasively argue that the prima facie case of
obviousness was in error. Nor was the Board in error to find that the
Appellant had not come forward with any evidence of unpredictable results
or secondary considerations of nonobviousness.
Claim 30
The Appellant argues that the Appellant did not concede that the cited
prior art combination would lead one to a technique whereby data would be
retrieved to answer the original travel planning query as the Board stated in
the Decision. Request 5 (see Decision 9-10). We directed the Appellant's
attention to App. Br. 16. There it states that "[als taught by the combination
of Oracle, Jones and Oracle 9i, the combination would receive a travel query
form. The travel planning system of Jones sends queries to access data from
databases taught by Oracle and Oracle 9i." It would appear the Appellant
did concede that Oracle, Jones and Oracle 9i "would lead one to a technique
Appeal 2009-01 1006
Application 101272,426
whereby data would be retrieved to answer the original travel planning
query" (Decision 9- 10) in contradistinction to the Appellant's argument.
Claims 2 and 31
The Appellant disagrees with the Board that the difference between
the input specifications of the claimed subject matter and that of Jones is a
matter of a difference in the nonfunctional descriptive material of the
specification. Decision 10- 1 1. According to the Appellant, "[t] he Board
overlooks that the type of information claimed in claim 2 .... is clearly tied to
the substrate of the claimed method because it would [inevitably] affect the
claimed computer implemented processing." Request 6.
We are not persuaded by this argument. We do not understand and
the Appellant has not fully explained how input specifications in the trip
information [inevitably] affect the claimed computer implemented
processing. Clearly the trip information would change as the input
specifications change. But this is a change in the content of the information.
It is not inevitable that a change in content of the information affects the
computer-processing of the information. There is no evidence that input
specification in the trip information is functionally related to the computer
system as claimed.
Claim 3
The Appellant argues that Fig. 6 of Jones does not show an
intermediate input screen to further query for the best fare available by
desired airline. Request 7.
Appeal 2009-01 1006
Application 101272,426
We disagree. As we stated in the Decision, Jones [0058] shows an
intermediate screen as a sub-query generated from a travel query which,
when executed, returns answers satisfying the travel query, including
answers about flights and fares to be used with those flights. Decision 11.
Jones [0058] specifically discusses the ability of a user to make choices on
the intermediate screen. Choices logically follow from queries. In
evaluating a reference it is proper to take into account not only the specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom. In re Preda, 401 F.2d
825,826 (CCPA 1968).
Claims 6 and 32
The Appellant argues that the Board used circular reasoning. We
disagree. Request 7. The Board reviewed the adverse rejection of the
Examiner given the facts and the law in light of the Appellant's arguments
and found that the Examiner had not erred.
Claims 7-12 and 33-38
The Appellant argues that the Board misconstrued Jones. Request 8.
The argument is unpersuasive for the reasons discussed above
The new ground of rejection of claims 23-29 and 41-43 under 35 U.S.C.
§ 112, second paragraph as being indefinite.
In the Decision we stated that "[tlhe independent claims 23 and 41
call for dividing the travel query into sub-queries according to 'query
difficulty for execution by [a] travel planning system to return answers that
Appeal 2009-01 1006
Application 101272,426
satisfy the travel query."' Decision 18. We further stated that "[wle can find
no objective standard in the Specification for measuring 'query difficulty."'
Decisions 18. For that reason, we found the claims to be indefinite.
The Appellant states that the Board has overlooked disclosure in the
Specification which, according to the Appellant, "[provides] the objective
standard to inform the skilled person of the scope of the claimed
invention ..." Request 9. According to the Appellant "[olne skilled in the art
would understand that a scheduling query would be less difficult to answer
since it only involves travel schedule processing, whereas pricing queries
and low-fare search queries are more difficult to answer because ... 7 9
Request 9.
The persuasiveness of this argument depends on the understanding
that one of ordinary skill would get from reading the Specification. The
Appellant argues that one of ordinary skill in the art would understand from
reading the Specification what the objective standard for measuring "query
difficulty" would be. There is no evidence in the record to support this.
Attorney argument cannot take the place of record evidence. See also In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); Johnston v. ZVAC Corp., 885
F.2d 1574, 1581 (Fed. Cir. 1989).
The Appellant further argues to claim 23 which calls for "at least one
assigned parameter indicative of query difficulty." Request 9. According to
the Appellant, the Specification describes two parameters "related" to query
difficulty. Request 9. We fail to see how the "relevance" of a disclosed
parameter to query difficulty provides an objective standard to measure it.
The arguments are not persuasive.
Appeal 2009-01 1006
Application 101272,426
CONCLUSION
We have carefully considered the arguments that the Appellant has set
forth in the Request but, for the foregoing reasons, we do not find them
persuasive as to error in deciding to affirm in part the decision of the
Examiner to reject claims 1-43 under 35 U.S.C. 5 103(a) as being
unpatentable over Oracle, Jones, and Oracle 9i and to enter a new ground of
rejection of claim 23-29 and 41-43 under 35 U.S.C. 5 112, second
paragraph.
DENIED
mev
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS MN 55440- 1022