Ex Parte Morley et al

Board of Patent Appeals and Interferences

Mar 25, 2010

10779274 (B.P.A.I. Mar. 25, 2010)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ELAINE V. MORLEY and JOHN T. ANDERSEN
____________________

Appeal 2009-007659
Application 10/779,274
Technology Center 3600
____________________

Decided: March 26, 2010
____________________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-007659
Application 10/779,274

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1 to 28. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appellants invented a method for assuring employer compliance with
employee employment eligibility verification requirements (Spec. 2, para.
[0002]).
Claim 1 under appeal reads as follows:
1. A method for assisting in documenting
employment eligibility using a data handling
device, comprising:
displaying a field of an employment
eligibility verification document;
receiving data corresponding to the field;
applying a rule to the received data with the
data handling device; and
displaying predetermined text based at least
in part on an outcome of applying the rule.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stiegemeier US 6,192,381 B1 Feb. 20, 2001
U.S. Citizenship and Immigration Services,
http://uscis.gov/graphics/formsfee/forms/i-9.htm (last visited Apr. 18,
2005) (hereinafter “USCIS”).
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The Examiner rejected claims 1 to 14 under 35 U.S.C. § 101 as not
being directed to patentable subject matter.
The Examiner rejected claims 1 to 7 and 15 to 21 under 35 U.S.C. §
102(e) as being anticipated by Stiegemeier.
The Examiner rejected claims 8 to 14 and 22 to 28 under 35 U.S.C. §
103(a) as being unpatentable over Stiegemeier in view of USCIS.
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Application 10/779,274

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ISSUES
Did the Examiner err in finding that Stiegemeier discloses a computer
program stored on a tangible storage medium including executable
instructions that cause a computer to display a field of an employment
eligibility verification document?
Did the Examiner err in concluding that it would have been obvious to
modify the computer program disclosed in Stiegemeier so as to include
instructions to receive time data, determine a current time and compare the
time data to one or more time values as taught by USCIS?

FINDINGS OF FACT
Stiegemeier discloses a computer program for displaying a template
for creating a document that includes employee detail fields including date
of birth, age and social security number (col. 11, ll. 30 to 44). Stiegemeier
discloses that the particular field names described are intended only as an
illustration, and the system can in fact use any field name depending on the
requirements of the user (col. 11, ll. 46 to 49).
USCIS discloses verifying the expiration date of employment
eligibility documents as part of a I-9 completion process that includes
recording the expiration date of the provided document and comparing the
expiration date to the form date (p. 4).

PRINCIPLES OF LAW
Anticipation
It is well settled that apparatus claims must distinguish over prior art
apparatus by the structure defined by the claims, and not by a process or
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function performed by the apparatus. A prior art apparatus having the same
or obvious structure as a claimed apparatus renders a claimed apparatus
unpatentable under § 102 as long as it is capable of performing the claimed
process or function. In re Yanush, 477 F.2d 958, 959 (CCPA 1973).

Obviousness
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 (Fed. Cir. 1988). There
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc.,
550 U.S.398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
Patentable subject matter
The Appellants have not challenged the rejection of claims 1 to 14
under 35 U.S.C. § 101. Rather the Appellants state in the Reply Brief filed
February 10, 2009, that Appellants note informing the Board of the
cancellation of claims 1 to 14. (Reply Br. 9). The Examiner entered a new
ground of rejection in the Examiner’s Answer of claims 1 to 4 under 35
U.S.C. §101 as being directed to nonstatutory subject matter. The Examiner
properly gave notice of the new ground of rejection (Ans. 3). As the Answer
indicated (Ans. 9 to 10), the Appellants were required to respond to the new
ground within two months in either of two ways: 1) reopen prosecution (see
37 C.F.R. § 41.39(a)(2)(b)(1) (2009)); or 2) maintain the appeal by filing a
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reply brief addressing the new ground of rejection as set forth in 37 C.F.R. §
41.41 (see 37 C.F.R. § 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.
According to the record before us, neither option appears to have been
exercised. Accordingly, the appeal as to claims 1 to 14 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 to 14 subject to the new ground of
rejection and (2) notify the Appellants that the appeal as to claims 1 to 14
subject to the new ground of rejection under § 101, as being directed to
nonstatutory subject matter, is dismissed and claims 1 to 14 are cancelled.
See Manual of Patent Examining Procedure (MPEP) § 1207.03 (8th Ed.,
Rev. 7, Jul. 2008).

Anticipation
We will sustain the Examiner’s rejection of claim 15. We agree with
the Examiner that the employee document disclosed in Stiegemeier is
capable of functioning as an employment eligibility verification document.
The employee form includes information related to age and social security
number. We agree with the Examiner that the age of an applicant and
whether an applicant has a social security number may be used in making an
employment eligibility verification decision. As such, although Stiegemeier
does not teach that the disclosed document is used to verify eligibility for
employment, the document disclosed can function as such. This is all that is
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necessary to establish anticipation. We will also sustain this rejection as it is
directed to claims 16 to 21 because the Appellants have not argued the
separate patentability of these claims.

Obviousness
We will not sustain the Examiner’s rejection under 35 U.S.C. §
103(a). The Examiner relies on USCIS for teaching verifying the expiration
date of employment eligibility documents as part of an I-9 completion
process that includes recording the expiration date of the provided document
and comparing the expiration date to the form date. The Examiner does not
address how or why a person of ordinary skill in the art would use this
teaching in the Stiegemeier program. In addition, as Stiegemeier does not
disclose an I-9 document or a document that has an expiration date, we are at
a loss to understand how the time expiration subject matter taught by USCIS
could be used in the Stiegemeier program. Therefore, in our view the
Examiner has failed to provide reasoning with a rational underpinning to
support the legal conclusion of obviousness.

CONCLUSION OF LAW
On the record before us, the Appellant has not shown that the
Examiner erred in rejecting claims 1 to 7 and 15 to 21 under 35 U.S.C. §
102(e). The Appellants have shown that the Examiner erred in rejecting
claims 8 to 14 and 22 to 28 under 35 U.S.C. § 103(a).
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DECISION
The appeal as to claims 1 to 14 under 35 U.S.C. § 101 is dismissed.
The Examiner's rejection of claims 15 to 21 under 35 U.S.C. § 102(e) is
sustained. The Examiner’s rejection of claims 22 to 28 under 35 U.S.C. §
103(a) is not sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

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AFFIRMED-IN-PART

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