Ex Parte Kaplan

Board of Patent Appeals and Interferences

Aug 3, 2011

10206559 (B.P.A.I. Aug. 3, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IBRAHIM KAPLAN
____________

Appeal 2010-003795
Application 10/206,559
Technology Center 3600
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003795
Application 10/206,559

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-2 and 4-14 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to a system for
simplified handling of business transactions in a inhomogeneous legal
environment (Spec. 2). Claim 9, reproduced below with the numbering in
brackets added, is representative of the subject matter of appeal.

9. A program product stored on a computer readable medium for
handling at least one electronic business transaction between a first
transaction participant located in a first legal environment and a
second transaction participant located in a second legal environment,
wherein said business transaction includes a transfer of data or goods
or a combination thereof between said first and said second
transaction participants, the computer readable medium comprising
program code for causing a computer system to perform the following
steps:
providing first information relating to at least one regulation in said
first legal environment;
providing second information relating to at least one regulation in said
second legal environment;
comparing, prior to said transfer of data or goods or a combination
thereof, said first and said second information in order to determine
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compliance between said at least one regulation in said first and said
second legal environment; and
[1] calculating a risk factor based on the compliance, comparing the
risk factor to a threshold value, and providing a compliancy statement
to at least the first transaction participant in response to the
comparison of the risk factor to the threshold value.

DISPOSITION OF THE APPEAL
The Examiner entered a new ground of rejection in the Examiner’s
Answer against claims 1-2, 4-8, and 101 under 35 U.S.C. §101 as being
directed to nonstatutory subject matter (Answer 3-4). The Examiner
properly gave notice of the new ground of rejection (Answer 3-4, 16) and
the Technology Center Director approved it (Answer 17). As the Answer
indicated (Answer 16-17), the Appellant was required to respond to the new
ground within two months in either of two ways: 1) reopen prosecution (see
37 CFR 41.39(a)(2)(b)(1)); or 2) maintain the appeal by filing a reply brief
as set forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua
sponte dismissal of the appeal as to the claims subject to the new ground of
rejection.” (Answer 16-17). According to the record before us, neither
option appears to have been exercised. Accordingly, the appeal as to claims
1-2, 4-8, and 10 subject to the new ground of rejection under §101 as being
directed to nonstatutory subject matter stands dismissed. Upon return of the
application to the Examiner, the Examiner should (1) cancel claims 1-2, 4-8,
and 10 subject to the new ground of rejection and (2) notify the Appellant

1 The Examiner rejected claim 3 under 35 U.S.C. §101 as well (Answer 3-4)
but this is considered to be a typographical error. Claim 3 has been indicated
to be cancelled in the Appeal Brief (Br. 2) and the Answer has also indicated
that status of claims in the Brief is correct (Ans. 2).
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that the appeal as to claims 1-2, 4-8, and 10 subject to the new ground of
rejection under §101, as being directed to nonstatutory subject matter, is
dismissed and that claims 1-2, 4-8, and 10 are cancelled. See Manual of
Patent Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 7, Jul. 2008.
Given that the appeal as to claims 1-2, 4-8, and 10 stands dismissed, the
rejections before us for review are reduced to as follows in the section
below.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Lederer Jr. et al US 2002/0023109 A1 Feb. 21, 2002
Krishnan et al US 2002/0184068 A1 Dec. 5, 2002

The following rejections are before us for review:
1. Claims 9 and 11-14 are rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement.
2. Claims 9 and 11-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lederer and Krishnan.

THE ISSUES
With regards to the rejections made under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement, the issue
turns on whether the Examiner has shown proper consideration of the
Wands factors.
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With regards to the rejections under 35 U.S.C. § 103(a) the issue turns
on whether Krishnan discloses claim limitation [1].

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence.2 Additional facts may appear in
the Analysis section below.
FF1. Krishnan has disclosed a method for determining and providing
solutions to meet compliance and risk management standards and
requirements (Abstract).
FF2. Krishnan at [0013] and [0015] discloses general risk management
standards and requirements but not the specific disclosure of comparing the
risk factor to a threshold value, and providing a compliancy statement to the
participant in response to the comparison.
FF3. Krishan at [0023] discloses a score for relative compliance with
standards and requirements and the ranking of the score but does not provide
specific disclosure of comparing a risk factor to a threshold value, and
providing a compliancy statement to the participant in response to the
comparison.
FF4. Krishan at [0082] does not provide the specific disclosure of
comparing a risk factor to a threshold value, and providing a compliancy
statement to the participant in response to the comparison.

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF5. Krishan at Figures 6-8 does not specifically disclose comparing a risk
factor to a threshold value, and providing a compliancy statement to the
participant in response to the comparison.

ANALYSIS
Rejections under 35 U.S.C. § 112, first paragraph
The PTO bears the initial burden when rejecting claims for lack of
enablement.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an
initial burden of setting forth a reasonable
explanation as to why it believes that the scope of
protection provided by that claim is not adequately
enabled by the description of the invention
provided in the specification of the application;
this includes, of course, providing sufficient
reasons for doubting any assertions in the
specification as to the scope of enablement. If the
PTO meets this burden, the burden then shifts to
the applicant to provide suitable proofs indicating
that the specification is indeed enabling.

In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
“Enablement is not precluded by the necessity for some experimentation . . ..
However, experimentation needed to practice the invention must not be
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undue experimentation. The key word is ‘undue,’ not ‘experimentation.’”
In re Wands, 858 F.2d at 736-737.
To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
(1) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737. The examiner’s analysis must consider all the
evidence related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole. Id at 737. Here
the Examiner has failed to present a complete analysis with the cited Wands
factors and the burden of establishing lack of enablement has not been met.
For this reason, the rejections made under 35 U.S.C. § 112, first paragraph is
not sustained.

Rejections under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 9 is improper because
the prior art fails to disclose claim limitation [1] (Br. 7-8). In contrast, the
Examiner has determined that Krishnan discloses claim limitation [1] at
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[0013], [0015], [0023], [0082], Figure 3 (310, 324, 380, 328, 332), Figure 6
(606), Figure 7 (720, 730), and Figure 8 (Ans. 8, 14-15).

We agree with the Appellant. Claim limitation [1] requires:
[1] calculating a risk factor based on the compliance, comparing the
risk factor to a threshold value, and providing a compliancy statement
to at least the first transaction participant in response to the
comparison of the risk factor to the threshold value. (Claim 9,
emphasis added).

Thus, the cited claim limitation [1] requires the calculating of a risk factor
based on the compliance, comparing the risk factor to a threshold value, and
providing a compliancy statement to the participant in response to the
comparison of the risk factor to the threshold value. Krishnan at the
portions of the reference cited by the Examiner does specifically disclose
claim limitation [1] (FF2-5) and this rejection of record is not sustained.
While Krishnan at some portions does disclose the use of general “risk
management standards and requirements” this does not necessarily disclose
the comparison of a risk factor to a threshold value and providing a
compliancy statement in response to the comparison (FF2). Similarly,
Krishan does disclose a score for relative compliance with standards and
requirements and the ranking of the score but does not provide a specific
disclosure of comparing a risk factor to a threshold value, and providing a
compliancy statement to the participant in response to the comparison (FF3).
Krishnan at Figure 7 does disclose the “Perform and Document” step 760,
but this is not shown to specifically provide a compliancy statement to the
participant in response to the comparison (FF5). For these reasons the
rejection of claim 9 is not sustained.
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Claim 11 contains a similar claim limitation and the rejection of this
claim and its dependent claims is not sustained for the same above reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 9 and 11-14 under 35 U.S.C. § 112, first paragraph as
failing to comply with the enablement requirement.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 9 and 11-14 under 35 U.S.C. § 103(a) as unpatentable over
Lederer and Krishnan.

DECISION
The Examiner’s rejection of claims 9 and 11-14 is reversed.

REVERSED

MP