Ex Parte Ohrt

Board of Patent Appeals and Interferences

Oct 10, 2007

09504978 (B.P.A.I. Oct. 10, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CURTIS OHRT
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Appeal 2007-3163
Application 09/504,978
Technology Center 3600
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Decided: October 10, 2007
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Before LANCE LEONARD BARRY, MAHSHID D. SAADAT,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-23. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

A. INVENTION
The invention at issue on appeal employs a computer in a client/server
environment to calculate rates for insurance products. (Specification 1.)
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More specifically, the invention includes a product application or component
object that requests a rate from a rate calculating software component and
can supply data needed for the calculation. At least one support software
component and at least one protocol stack facilitate communication among
components. (Id. 18.)

B. ILLUSTRATIVE CLAIMS
Claims 1 and 16, which further illustrate the invention, follow.
1. A product rate calculation system comprising:
a product application operable to provide product
information to and receive consumer information from a user,
and further operable to send a call to a product rate calculation
software component;
a first support software component operable to receive
the call from the product application; and
a first protocol stack operable to process the call into a
protocol for transmission over a communication link.

16. A method calculating a product rate comprising:
receiving a request for a product rate from a user;
converting the request for a product rate into a call to a
product rate calculation software component;
sending the call to a product rate calculation software
component to a first software component;
receiving, at the first support software component, the
call to a product rate calculation software component;
processing the call to a product rote calculation software
component into protocol for transmission over a
communication link; and
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transmitting the call to a product rate calculation software
component over the communication link.

C. REJECTIONS
Claims 1-23 stand rejected under 35 U.S.C.§ 112, ¶ 2, as indefinite.
Claims 1-3, 5, 6, and 12-23 stand rejected under 35 U.S.C. § 103(a) as
obvious over U.S. Patent No. 5,523,9432 ("Tyler") and U.S. Patent
No. 5,689,650 ("McClelland"). Claim 4 stands rejected under § 103(a) as
obvious over Tyler; McClelland; and U.S. Patent No. 6,026,404
("Adunuthula"). Claims 7, 9, and 11 stand rejected under § 103(a) as
obvious over Tyler; McClelland; and U.S. Patent No. 5,918,022 ("Batz").
Claim 8 stands rejected under § 103(a) as obvious over Tyler; McClelland;
Batz; and U.S. Patent No. 5,689,664 ("Narayanan"). Claim 10 stands
rejected under § 103(a) as obvious over Tyler; McClelland; Batz; and
Adunuthula. Rather than reiterate the positions of parties in toto, we focus
on the issues therebetween.

II. INDEFINITNESS OF CLAIMS 1-23
"[N]ot[ing] that claim 1 recites a 'product rate calculation system' in
its preamble, but only recites three elements in its body, namely a 'product
application', a 'first support software component' and a 'first protocol stack,'"
(Answer1 17), the Examiner asserts, "It is unclear as to which element
performs the 'rate calculation' function recited in the preamble." (Id.)

1 We rely on and refer to the Substitute Examiner's Answer in lieu of the
original Examiner's Answer because the latter was defective. We will not
consider the original in deciding this appeal.

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The Appellant argues that "the Examiner has provided no specific indication
of the elements omitted by the claim, and more importantly the Examiner
has provided no rationale for considering the omitted elements critical or
essential." (Br.2 5.)

"[N]ot[ing] that claim 16 recites a 'method calculating a product rate'
in its preamble, but recites six steps in its body, namely 'receiving a request',
'converting the request.., into a call', 'sending the call', 'receiving the call,'
'processing the call . . . into a protocol for transmission', and 'transmitting the
call,'" (Answer 18), the Examiner similarly asserts, "It is unclear as to which
step performs the 'calculating product rate' function recited in the preamble."
(Id.) The Appellant argues "that the Examiner[ ] . . . fails to identify the
purported missing steps and fails to identify the rationale for considering
those steps essential." (Br. 7.) Therefore, the issue is whether Examiner has
shown that the preambles of claims 1 and 16 make these claims indefinite.

"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994) (citing Amgen Inc. v.
Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016,
1030 (Fed. Cir.1991)). "A claim need not claim every function of a working
device. Rather, a claim may specify improvements in one function without

2 We rely on and refer to the Revised Supplemental Appeal Brief, in lieu of
the Supplemental Appeal Brief and the Appeal Brief, because the latter were
defective. We will not consider the latter in deciding this appeal.
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claiming the entire machine with its many functions." Rodime PLC v.
Seagate Technology, Inc., 174 F.3d 1294, 1303, 50 USPQ2d 1429, 1435
(Fed. Cir. 1999).

Here, claims 1 and 16 reasonably apprise those of skill in the art of
their scope, viz., generating or sending a call to a product rate calculation
software component. Despite their preambles, the claims need not specify
how rates are calculated. Therefore, we reverse the indefiniteness rejection
of claims 1-23.

III. OBVIOUSNESS OF CLAIMS 1-15
The Examiner finds, "Tyler teaches . . . a product application operable
to provide product information to and receive consumer information from a
user (Tyler; column 5, lines 32-41). . . ." (Answer 6.) She adds the
following explanation.
In particular, in the passage repeatedly referred to by the
Examiner, column 11, lines 33-36, Tyler states:
"API Layer 14 allows the Calculation Engine 16 to be called by
multiple applications (i.e., consumer applications which do not
employ object oriented technologies) to input and/or retrieve
data into and from the Calculation Engine 16" (emphasis
added).
(Answer 21-22.)
The Appellant argues "that none of the things to which the Examiner refers
as teaching the claimed product application are operable to call Calculation
Engine 16." (Br. 10.) Therefore, the issue is whether the Examiner has
shown that teachings from the references would have suggested a product
application to send a call to a product rate calculation software component.
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"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933, 69 USPQ2d 1283, 1286 (Fed.Cir. 2003) (internal
citations omitted).

A. CLAIM CONSTRUCTION
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir.
1994) (citing In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04
(Fed. Cir. 1983)).

Here, claim 1 recites in pertinent part the following limitations:
"a product application operable to provide product information to and
receive consumer information from a user, and further operable to send a
call to a product rate calculation software component . . . ." Considering all
the limitations, the independent claim requires a product application to send
a call to a product rate calculation software component.

B. OBVIOUSNESS ANALYSIS
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness." In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)
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(citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992)). "'A prima facie case of obviousness is established when the
teachings from the prior art itself would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art.'" In re Bell,
991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).

Here, Tyler discloses "a computer-based system and method for
requesting and inputting insurance and investment product information, and
for performing calculations relevant to all aspects of insurance and
investment products." (Col. 4, l. 65 – col. 5, l. 1.) More specifically, "[t]he
system comprises the Design Grid 10 and the Calculation Engine 16.
Application programming interfaces, hereinafter called an 'API', enables
communication between components of the present invention." (Col. 10,
l. 67 – col. 11, l. 4.)

"The Design Grid 10 is used to collect from a user the data and
information required by the Calculation Engine 16 to generate a proposal."
(Col. 11, ll. 11-13.) The Examiner reads the claim's "product application"
on the reference's Design Grid. (Answer 6.)

For its part, the reference explains, "Once valid information is entered
at the Design Grid 10, API Layer 12 communicates the information to API
Layer 14 of the Calculation Engine 16." (Col. 11, ll. 22-24.) "API Layer 14
allows the Calculation Engine 16 to be called by multiple applications (i.e.,
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consumer applications which do not employ object oriented technologies) to
input and/or retrieve data into and from the Calculation Engine 16." (Id.
ll. 33-36.) The Examiner reads the claim's "call to a product rate calculation
software component" on Tyler's call to the Calculation Engine.

Although the Calculation Engine can be "called by multiple
applications (i.e., consumer applications which do not employ object
oriented technologies)," (id. ll. 34-35), the Examiner does not allege, let
alone show, that the Design Grid is one on the applications that calls the
Calculation Engine. For its part, the reference describes the Design Grid as
"communicat[ing]" (id. l. 23), information to the Calculation Engine (via
API Layer 12 and API Layer 14). Again, the Examiner does not allege, let
alone show, that the reference's communicating is tantamount to the claim's
calling. We interpret a call to be more that a mere communication of
information. For example, a call may be "[t]he action of bringing a
computer program, a routing, or a subroutine into effect, usually be
specifying the entry conditions and jumping to an entry point." IBM
Dictionary of Computing 82 (10th ed. 1993).

The Examiner does not allege, let alone show, that the addition of
McClelland, Batz, Adunuthula, or Narayanan cures the aforementioned
deficiency of Tyler. Absent a teaching or suggestion of a product
application sending a call to a product rate calculation software component,
we are unpersuaded of a prima facie case of obviousness. Therefore, we
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reverse the rejection of claim 1 and those of claims 2-15, which depend
therefrom.

IV. OBVIOUSNESS OF CLAIMS 16-23
The Examiner asserts, "Tyler teaches . . . converting the request for a
product rate into a call to a product rate calculation software component
(Tyler; Figure 1B, column 5, lines 11-18, column 11, lines 33-36). . . ."
(Answer 9.) The Appellant "notes that the cited portion of Tyler does not
teach or suggest converting the request for a product rate into a call to a
product rate calculation software component." (Br. 17.) Therefore, the
issue is whether the Examiner has shown that teachings from the references
would have suggested converting a request for a product rate into a call to a
product rate calculation software component.

A. CLAIM CONSTRUCTION
Here, claim 16 recites in pertinent part the following limitations:
"converting the request for a product rate into a call to a product rate
calculation software component. . . ." Considering all the limitations, the
independent claim requires converting a request for a product rate into a call
to a product rate calculation software component.

B. OBVIOUSNESS ANALYSIS
The first passage of Tyler cited by the Examiner explains that the
reference's calculation engine "perform[s] all required calculations related to
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insurance products." (Col. 5, ll. 12-13.) "These calculations include
determining the cash value of a policy, calculating a death benefit on an
annual basis, calculating the premium due, calculating the net premium due,
determining a guaranteed cash value of all individual coverages, calculating
annual cash dividends, and the like." (Id. ll. 13-18.) Converting a request
for a product rate into a call to a product rate calculation software
component, however, is not one of the calculations performed by the
calculation engine.

The second passage of Tyler cited by the Examiner explains that the
"API Layer 14 allows the Calculation Engine 16 to be called by multiple
applications (i.e., consumer applications which do not employ object
oriented technologies) to input and/or retrieve data into and from the
Calculation Engine 16." (Col. 11, ll. 33-36.) Although the Calculation
Engine can be called, the Examiner does not show that a request for a
product rate is converted into such a call.

The Examiner does not allege, let alone show, that the addition of
McClelland cures the aforementioned deficiency of Tyler. Absent a
teaching or suggestion of converting a request for a product rate into a call to
a product rate calculation software component, we are unpersuaded of a
prima facie case of obviousness. Therefore, we reverse the rejection of
claim 16 and those of claims 17-23, which depend therefrom.

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V. ORDER
In summary, the rejection of claims 1-23 is reversed.

REVERSED

KIS

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