Ex Parte Oxman et al

Patent Trial and Appeal Board

Sep 27, 2012

10729517 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRIAN D. OXMAN and DAVID R. HUPPER
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Appeal 2010-000008
Application 10/729,517
Technology Center 2100
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Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000008
Application 10/729,517

2
STATEMENT OF CASE
1

The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-3, 5-24, and 26-31, the only claims pending in the
application on appeal. Claims 4 and 25 are withdrawn from consideration.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

INVENTION
The Appellants invented computer-based methods and systems for
producing domestic relations orders. Specification ¶ 0001.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A computerized system for producing a domestic relations
order comprising:
[1] a receiver for receiving information relating to a
domestic relations order, said information comprising an
alternate payee and court information;
[2] a rules engine in communication with the receiver for
selecting sample text passages; and
[3] a document assembler for automatically incorporating a
first subset of the sample text passages and a second subset of
the received information comprising the alternate payee and
the court information into a court-compliant domestic relations
order for submission to a court.

1
Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Oct. 1, 2007) and the Examiner’s Answer (“Ans.,” mailed Jun.
23, 2009).
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REFERENCES
The Examiner relies on the following prior art:
Broadbent
Esposito
Fay
Cohen
US 2001/0047326 Al
US 2001/0051906 Al
US 2002/0188540 Al
US 2004/0064404 Al
Nov. 29, 2001
Dec. 13, 2001
Dec. 12, 2002
Apr. 1, 2004

REJECTIONS
Claims 1-3, 5-24, 26, and 28-31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Broadbent, Fay, and Esposito.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Broadbent, Fay, Esposito, and Cohen.

ISSUE
The issue of whether the Examiner erred turns on whether the
combination of Broadbent, Fay and Esposito teaches or suggests a system
and method for producing a domestic relations order (DRO) as required by
claims 1, 13, and 26, and whether Esposito teaches away from printing a
DRO and submitting it to a court.

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred.
We disagree with the Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief. We
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concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.

35 U.S.C. § 103(a) Rejection – Broadbent, Fay, and Esposito
Claims 1-3, 5-24, 26, and 28-31
The Appellants contend that the combination of Broadbent, Fay, and
Esposito does not teach or suggest (1) producing a domestic relations order
(DRO) by (2) assembling a court-compliant DRO based on (3) court
information (4) for submission to a court, as required by independent claims
1, 13, and 26 and dependent claims 2, 7, 12, 14, 15, 16, 18, 19, 21, 27, 28,
and 29. App. Br. 12-20. The Appellants specifically argue that cited prior
art fails to describe this limitation because Broadbent, Fay, and Esposito do
not describe the specific information received or input to generate a DRO.
Id.
We disagree with the Appellants. As found by the Examiner,
Broadbent describes a receiver for receiving an information input, a rules
engine for selecting sample text, and a document assembler for incorporating
received information and sample text into a document. Ans. 3-6 (citing
Broadbent ¶¶ 0123, 0120, and 0125). The Examiner also found that
Broadbent describes alternate payee information (Ans. 4, citing Broadbent
Fig. 22). While these descriptions are directed towards a mortgage loan
application and compliance engine (Broadbent Abstract), we agree with the
Examiner that it would have been obvious to apply the features of receiving
input information, selecting information by a rules engine, and assembling a
document comprising information selected by the rules engine and other
input information, as described by Broadbent, towards a system that
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performs the same functions for a DRO document. Ans. 3-6. That is, a
person with ordinary skill in the art would have found it obvious to use the
functions described by Broadbent for preparing a mortgage loan application
towards any system for preparing documents, including a system for
preparing a DRO.
Furthermore, the specific information of a DRO was also known at the
time of the claimed invention, as evidenced by the disclosures of Broadbent,
Fay, and Esposito related to documents for various types of orders.
Broadbent describes a co-borrower or alternate payee. Ans. 3-4 (citing
Broadbent Fig. 22). Fay describes a domestic relation order, which includes
information relating to a DRO, causing a change in a retirement annuity.
Ans. 3-4 (citing Fay ¶¶ 0015 and 0077). Esposito describes court
information pertaining to federal court compliance for delivering, reporting
and monitoring documents. Ans. 3-4 (citing Esposito ¶ 0008). As such, we
agree with the Examiner that applying the features of Broadbent towards the
preparation of a DRO would have been obvious and do not find the
Appellants’ arguments persuasive.
The Appellants contend that the combination of Broadbent, Fay, and
Esposito does not teach or suggest using legal representative information, as
per claims 3, 5, 20, and 22, and rules or information related to domestic
relation orders, as per claims 6, 8-11, 17, 23-24, and 31. App. Br. 20-23.
We disagree with the Appellants. As discussed supra, we agree with the
Examiner that a person with ordinary skill in the art would have found it
obvious to apply Broadbent’s document preparation method towards the
preparation of a DRO and the specific information recited by the claims was
known. Here, the Examiner found that Broadbent describes information
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associated with a legal represented, such as attorney fees. Ans. 26 (citing
Broadbent ¶¶ 0094 and 0097 and Fig. 30). The Examiner further found that
Broadbent describes a rules engine and Fay describes information related to
domestic relation orders. Ans. 26-27 (citing Broadbent ¶¶ 0051 and 0202
and Fay ¶¶ 0015 and 0077). As such, we agree with the Examiner that
applying the features of Broadbent towards the preparation of a DRO would
have been obvious and do not find the Appellants’ arguments persuasive.
The Appellants provide several arguments that a specific reference
does not describe a specific feature that the Examiner has not relied on that
reference to describe. For example, the Appellants argue that Fay fails to
disclose “alternate payee” and “court information.” App. Br. 13-14. The
Appellants are reminded that the rejection is based on the combination of the
references and as such these arguments do not persuade us of error on part of
the Examiner because these arguments are tantamount to attacking the
references individually. Nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
The Appellants also contend that the Examiner erred in combining
Broadbent, Fay, and Esposito. The Examiner's proposed combination is an
example of impermissible hindsight. App. Br. 12-20. The Appellants argue
that, while Broadbent shows a system capable of producing documents, one
skilled in the art would not have the knowledge, without reading the
Appellant's Specification, to make the modifications to Broadbent necessary
to produce a court-compliant DRO for court submission. App. Br. 12-25.
Here, we also disagree with the Appellants. It must be recognized that:
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Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as
it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made,
and does not include knowledge gleaned only from the
applicant’s disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As discussed supra,
the specific structural elements, functions, and information was known at the
time of the claimed invention and the Examiner has relied on these
disclosures in rejecting the claims. The Appellants do not set forth any
persuasive evidence or rationale that the Examiner has only relied on
knowledge gleaned from the Appellants’ Specification. As such, we do not
find this argument to be persuasive.
The Appellants further contend that Esposito teaches away from the
claimed invention because Esposito describes submission via email, whereas
the claimed invention requires the DROs are printed and submitted to the
proper court. App. Br. 14. We disagree with the Appellants. The claims do
not recite printing DROs. As such the Appellants’ argument is not
commensurate with the scope of the claimed invention. Furthermore, “[a]
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550
F.3d 1325, 1332 (Fed. Cir. 2008) (citations and quotations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
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investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Even assuming, arguendo, that the claims require the
submission of a printed DRO, the Appellants have not provided any
evidence that Esposito discredits or discourages the submission of a DRO in
print. Because the Appellants’ argument is not commensurate with the
scope of the claimed invention and have not provided any evidence or
rationale that Esposito discourages or discredits this feature, we do not find
this argument persuasive.
The Appellants additionally contend that there is no motivation to
combine the references. App. Br. 24-25. We disagree with the Appellants.
The Examiner found that Broadbent, Fay, and Esposito disclose features that
are directed to analogous art and they are directed to the same field of
endeavor in database management systems such as: authorization, results
creation based on received information, compliance rules for documents, and
employee benefit plans. Ans. 4-5. As such, Broadbent, Fay, and Esposito
are concerned with the same problem and a person with ordinary skill in the
art would have been led to rely on their teachings. Furthermore, the
Appellants have failed to provide any rationale or evidence to illustrate why
combining Fay’s DRO information and Esposito’s court information with
Broadbent’s document producing system, as discussed supra, would not
yield predicable results. As such, we are not persuaded by the Appellants'
contention that a person with ordinary skill in the art would not have
combined the prior art.

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35 U.S.C. § 103(a) – Broadbent, Fay, Esposito, and Cohen
Claim 27
The Appellants contend that the Examiner erred in rejecting claim 27
for the same reasons as claims 1, 13, and 26 and Cohen does not cure the
deficiencies of Broadbent, Fay, and Esposito. App. Br. 17-18. We disagree
with the Appellants. The Appellants arguments, for the same reasons stated
supra, are not persuasive.

CONCLUSIONS
The Examiner did not err in rejecting claims 1-3, 5-24, 26, and 28-31
under 35 U.S.C. § 103(a) as unpatentable over Broadbent, Fay, and Esposito.
The Examiner did not err in rejecting claim 27 under 35 U.S.C.
§ 103(a) as unpatentable over Broadbent, Fay, Esposito, and Cohen.

DECISION
The Examiner’s rejection of claims 1-3, 5-24 and 26-31 is 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)(1)(iv) (2010).

AFFIRMED

ELD