Ex Parte Morikawa

Board of Patent Appeals and Interferences

Aug 16, 2012

11253600 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TSUYOSHI MORIKAWA
____________

Appeal 2010-003383
Application 11/253,600
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
ANDREW J. DILLON, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-18. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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INVENTION
The following claim illustrates the invention on appeal:
1. An analysis data processing system for processing data
relating to an analysis, comprising:
a server for receiving a request message from an external
system over a data communication network, for performing a
data-processing operation corresponding to a content of the
request message, and for sending the external system a response
message containing a result of the data-processing operation
over the data communication network, and the server includes:
an interface for receiving the request message and
sending the response message, using a standard communication
protocol and a standard message format; and
a specification publisher for publishing, on the data
communication network, a specification of the interface written
in a standard description language recognizable to computers,
the specification of the interface including at least one of a
following data type or method: data types and methods for
entering control parameters, analysis conditions, analysis
schedules into a physical or chemical analyzing apparatus, and
for retrieving raw data obtained from an analysis, meta data,
log data and data relating to a result of an analysis from the
physical or chemical analyzing apparatus.

REJECTION
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Application Pub. No. 2005/0246717 Al
("Poole") and U.S. Patent Application Pub. No. 2004/0117117 Al ("Sohl").

DISCUSSION
Based on the Appellant's arguments, we will decide the appeal of
claims 1-18 on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
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The issue before us follows. Did the Examiner err in finding reason to
combine teachings from Poole and Sohl to reject independent claim1?
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted). "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'l v. Teleflex Inc.,
550 U.S. 398, 416 (2007). More specifically, "when a patent 'simply
arranges old elements with each performing the same function it had been
known to perform' and yields no more than one would expect from such an
arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR, 550 U.S. at 417.
Here, Poole stores and retrieves data from a database including a
published specification. Poole includes the more specific explanation, which
was discussed by both the Examiner and the Appellant.
[T]here is much interest in leveraging Internet architecture for
the development of applications, including database
applications. "Web Services" are self-contained modular
applications that can be published and invoked over a network,
such as the Internet. Web Services provide well-defined
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interfaces that describe the services provided. Web Services are
designed to allow a loose coupling between client and server.
That is, server implementations do not require clients to use a
specific platform or programming language. In addition to
defining interfaces in a language-neutral fashion, they are
designed to allow multiple communications mechanisms as
well. "Web services" as referred herein means any services
capable of being served up over a Web connection (e.g., HTTP
connection). This would include, for example, using SOAP
(simple object access protocol) services as an RPC (remote
procedure call) mechanism to make generic calls into a
database and have the results returned to a Web client.
(¶ [0009].) This explanation also discloses the publication of Web Services
that define interfaces that couple a client and server.
The Examiner relies on Sohl merely to teach a physical or chemical
analyzing apparatus. The Appellant admits Sohl discloses "parameters and
analysis results of the analyzing apparatus including a physical or chemical
analyzing apparatus." (Reply Br. 3-4.) We agree with the Examiner's
conclusion that it would have been obvious to combine the teachings of the
references to use Poole's Web Services with a physical or chemical
analyzing apparatus "to use that known technique to yield predictable
results, since the use of a known technique provides the rationale to arrive at
a conclusion of obviousness." (Ans. 4)
The Appellant, however, makes the following argument about Sohl.
[P]arameters and analysis results … are visualized in the format
of HTML, by using a "Web service," which is only for the
purpose of a graphical user interface (GUI). Therefore, it is
apparent that there is no ground for the skilled person to
combine the invention of Poole and that of Sohl, which belong
to totally different technical fields.
(Reply Br. 4.)
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"[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v.
United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). "The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
Here, the Examiner does not propose that the features of Sohl, such as
visualizing results in the format of HTML using a GUI, be physically
incorporated into the structure of Poole. Instead, the Examiner concludes
that the combined teachings of the references would have suggested to one
of ordinary skill in the art the Appellant's invention. The Appellant's
argument overlooks "the relevant combined teachings of the . . . references."
Andersen, 391 F.2d at 958 (dismissing the argument that a combination
would result in an inoperative structure).
Therefore, we conclude that the Examiner did not err in finding reason
to combine teachings from Poole and Sohl to reject independent claim 1.

DECISION
We affirm the rejection of claim 1 and of claims 2-18, which fall
therewith.
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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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