Ex Parte Mccalden et al

Board of Patent Appeals and Interferences

Sep 30, 2004

09375214 (B.P.A.I. Sep. 30, 2004)

1 Application for patent filed August 16, 1999.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN D. MCCALDEN, JOHN W. BACE,
and ROBERT LONGO
____________
Appeal No. 2004-0044
Application No. 09/375,2141
____________
ON BRIEF
____________
Before BARRETT, DIXON, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 13-19, 22, and 33-38, which are all of the
claims pending in this application.
We reverse.
Appeal No. 2004-0044
Application No. 09/375,214
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BACKGROUND
Appellants’ invention is directed to a method and an
apparatus for promoting taxpayer compliance by using data mining,
decision management and case management. An understanding of the
invention can be derived from a reading of exemplary independent
claim 13,which is reproduced as follows:
13. An apparatus comprising:
a computer-implemented data mining system which
mines taxpayer data by a computer to create taxpayer
profiles of taxpayers, and identifies taxpayer profiles of
the created taxpayer profiles for taxpayer compliance
issues, each taxpayer profile being a profile of a
respective taxpayer and including information relating to a
plurality of taxpayer events for the respective taxpayer;
a computer-implemented decision management system which
assigns the identified taxpayer profiles into groups by a
computer based on characteristics of the taxpayer profiles;
a computer-implemented case management system which, by
a computer, determines different treatments to be
implemented for different of the groups to improve taxpayer
compliance and, by a computer, implements the treatments for
the groups in accordance with the determination; and
a feedback mechanism feeding back a result of the
decision management system into the taxpayer data by a
feedback loop for mining by the data mining system, and
feeding back a result of the case management system into the
taxpayer data by a feedback loop for mining by the data
mining system, to increase effectiveness of the apparatus in
improving taxpayer compliance.
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Application No. 09/375,214
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The Examiner relies on the following references:
Taricani, Jr. (Taricani) 6,016,479 Jan. 18, 2000
(filed May 14, 1998)
Honarvar 6,321,206 Nov. 20, 2001
(filed Dec. 21, 1998)
Claims 13-19, 22 and 33-38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Honarvar and Taricani.
We make reference to the answer (Paper No. 23, mailed
May 21, 2003) for the Examiner’s reasoning, and to the appeal
brief (Paper No. 22, filed February 27, 2003) for Appellants’
arguments thereagainst.
OPINION
In rejecting the claims, the Examiner relies on Honarvar for
teaching an apparatus and the corresponding method including a
computer-implemented data mining, decision management system,
case management system and a feedback mechanism for identifying
taxpayer profiles and identifying links between the profiles
(answer, page 4). The Examiner further relies on Taricani for
disclosing a case management system which implements different
treatments for taxpayer compliance (answer, the paragraph
bridging pages 4 and 5). Based on the teachings of these two
prior art references, the Examiner concludes that the skilled
artisan would have found it obvious to combine the taxpayer data
of Taricani with the data mining system of Honarvar in order to
Appeal No. 2004-0044
Application No. 09/375,214
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provide optimized decision strategies and efficient taxpayer
tracking (answer, page 5).
Appellants point out that Honarvar does not disclose or
suggest using the disclosed decision management system for any
taxpayer compliance (brief, page 5). Appellants further point
out that although Honarvar describes a loop back from the
“execute process” 80, in figure 2, this loop is not for feeding
back data for data mining (brief, page 6). With respect to
Taricani, Appellants argue that the reference discloses a system
for recovering sales tax from the purchaser in a sales
transaction and does not relate to treatment of taxpayers in
accordance with their taxpayer profiles (brief, page 8).
In response to Appellants’ arguments, the Examiner argues
that Honarvar does teach the feedback mechanism where the client
ID is linked with the segment or group the client was in at the
time of making the decision (answer, pages 6 & 7). The Examiner
further asserts that the plurality of sales transactions of
Taricani generates a profile of a plurality of taxpayer events,
each including categories of sales or information related to tax
exemptions (answer, page 7).
As a general proposition, in rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting
a prima facie case of obviousness. See In re Rijckaert, 9 F.3d
Appeal No. 2004-0044
Application No. 09/375,214
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1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) and In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). A
prima facie case of obviousness is established when the teachings
of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See
In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993); In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780,
1783-84 n.14 (Fed. Cir. 1992); Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985). In considering the
question of the obviousness of the claimed invention in view of
the prior art relied upon, the Examiner is expected to make the
factual determination set forth in Graham v. John Deere Co., 383
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references to
arrive at the claimed invention. See also In re Rouffet, 149
F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Such
evidence is required in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268,
271-72 (CCPA 1966).
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After reviewing Honarvar, we agree with Appellants’
assertion that the claimed feedback mechanism is absent in the
reference. Honarvar relates to a decision management system for
creating strategies to control movement of clients across
different client categories (col. 1, lines 25-31). What the
Examiner characterizes as the claimed feedback mechanism in
Honarver (answer, page 4), is actually a description of the
representation of client categories in a matrix format (col. 16,
lines 40-55) or the movement of the clients across categories
(col. 17, lines 1-20). Furthermore, contrary to the Examiner’s
position (answer, page 6), storing the client observation points
(col. 11, lines 20-25), actually relates to the history of the
client category when the previous decision was made, not a
feedback mechanism.
Taricani, on the other hand, relates to a database system
for identifying the interstate sales transactions on which a
taxpayer did not pay the sales tax (abstract). Therefore, the
database of Taricani is arranged according to untaxed sales
transactions although the taxpayer and the related information
are also included in data fields. Although the reference
mentions categories of sales (col. 9, lines 20-30), they relate
to the agencies that collect the tax for that particular purchase
category (col 9, lines 30-33). Therefore, we agree with
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Application No. 09/375,214
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Appellants that the sales transactions of Taricani relates to
only a single taxpayer event, which does not constitute the
claimed taxpayer profile including information relating to a
plurality of taxpayer events for the respective taxpayer.
In concluding that Honarvar’s case management system and the
sales tax database of Taricani provide the teaching and
suggestion for arriving at the claimed subject matter in claim
13, the Examiner attempts to forge a combination of a database
related to uncollected sales tax that has nothing to do with a
decision management system used for monitoring the movement of
clients across different client categories. Thus, assuming,
arguendo, that it would have been obvious to combine Taricani
with Honarvar, as held by the Examiner, the combination would
still fall short of teaching or suggesting the claimed taxpayer
profile and the feedback mechanism. We note that other dependent
claims, similar to claim 13, require identification of the
taxpayer profile and the feedback mechanism for feeding back the
result of the decision management system. Accordingly, as the
Examiner has failed to set forth a prima facie case of
obviousness, we do not sustain the 35 U.S.C. § 103 rejection of
independent claims 13, 22, 35-38 as well as claims 14-19, 33 and
34, dependent thereupon, over Honarvar and Taricani.
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 13-19, 22 and 33-38 under 35 U.S.C. § 103 is
reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
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Application No. 09/375,214
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