Ex Parte Rosenberger

Board of Patent Appeals and Interferences

Feb 27, 2012

11857440 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD JOHN ROSENBERGER
____________

Appeal 2010-009071
Application 11/857,440
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ronald John Rosenberger (Appellant) seeks our review under 35
U.S.C. § 134 of the final rejection of claims 1-22. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

Appeal 2010-009071
Application 11/857,440

2
SUMMARY OF DECISION
We AFFIRM but denominate our affirmance as a NEW GROUND of
rejection under 37 C.F.R. § 41.50(b).1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for a credit card entity to provide to a cardholder with at
least one health reminder sent to or accessed by said cardholder of a
credit card and related credit card customer services provided by said
credit card entity, comprising:
a. providing a health reminder using a printer or computer
system from a credit card entity to a cardholder, wherein the health
related information provided by said health reminder is not related to
the financial or account information related to the use of said credit
card.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hacker
Patel

US 6,988,075 B1
US 7,370,004 B1
Jan. 17, 2006
May 6, 2008

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 23, 2009) and Reply Brief (“Reply Br.,” filed Apr. 27,
2010), and the Examiner’s Answer (“Answer,” mailed Mar. 26, 2010).
Appeal 2010-009071
Application 11/857,440

3
The following rejection is before us for review:
1. Claims 1-22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Patel and Hacker.

ISSUE
Would it have been obvious to one of ordinary skill in the art, given
what was known, for, for example, a credit card company to send a reminder
for a medical appointment to one of its cardholders via computer, as claim 1
is reasonably broadly construed to encompass?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The claim terms “credit card entity” encompass “credit card
companies” (claim 3).
2. The claim terms “health reminder” encompass reminders for medical
appointments (see claim 5: “reminders, tips, or suggestions for any
health related topic, health related preventive measure, medical check-
up, medical exam, or medical procedure”).
3. The claim terms “providing a health reminder using a printer or
computer system from a credit card entity to a cardholder” encompass
sending reminders for medical appointments via a computer (see
claim 9: “by mail, fax, e-mail, phone, smartcard reader or other
Appeal 2010-009071
Application 11/857,440

4
means”).
4. Finally, the clause “the health related information provided by said
health reminder is not related to the financial or account information
related to the use of said credit card” reads on reminders for medical
appointments per se.
5. Credit card companies were known – see Patel, col. 6, ll. 37-39.
6. Credit card companies sending information via a computer to one of
its cardholders was known – see Patel, col. 6, ll. 33-41.
7. Sending reminders for medical appointments via a computer was
known – see Hacker, col. 6, l. 39.

ANALYSIS
The Appellant argued claims 1-22 as a group (App. Br. 9-48). We
select claim 1 as the representative claim for this group, and the remaining
claims 2-22 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Analysis begins with a key legal question -- what is the
invention claimed? Courts are required to view the claimed invention
as a whole. 35 U.S.C. § 103. Claim interpretation, in light of the
specification, claim language, other claims, and prosecution history, is
a matter of law and will normally control the remainder of the
decisional process.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir.
1987).
Claim 1 is drawn to a method whereby “a credit card entity [ ]
provide[s] [ ] a cardholder with at least one health reminder sent to or
accessed by said cardholder of a credit card and related credit card customer
Appeal 2010-009071
Application 11/857,440

5
services provided by said credit card entity.” According to the claim, the
method compris[es] “providing a health reminder using a printer or
computer system from a credit card entity to a cardholder, wherein the health
related information provided by said health reminder is not related to the
financial or account information related to the use of said credit card.”
The claim terms “credit card entity” encompass “credit card
companies” (claim 3). The claim terms “health reminder” encompass
reminders for medical appointments (see claim 5: “reminders, tips, or
suggestions for any health related topic, health related preventive measure,
medical check-up, medical exam, or medical procedure”). The claim terms
“providing a health reminder using a printer or computer system from a
credit card entity to a cardholder” encompass sending reminders for medical
appointments via a computer (emphasis added) (see claim 9: “by mail, fax,
e-mail, phone, smartcard reader or other means”). Finally, the clause “the
health related information provided by said health reminder is not related to
the financial or account information related to the use of said credit card”
reads on reminders for medical appointments per se.
Putting it together, claim 1 is reasonably broadly construed to read on
a credit card company sending a reminder for a medical appointment to one
of its cardholders via a computer.
Turning to the evidence, credit card companies were known. See
Patel, col. 6, ll. 37-39. Credit card companies sending information via a
computer to one of its cardholders was known. See Patel, col. 6, ll. 33-41.
And sending reminders for medical appointments via a computer was
known. See Hacker, col. 6, l. 39. Accordingly, all the elements of the
Appeal 2010-009071
Application 11/857,440

6
claimed subject matter were known at the time of the invention – i.e., (a) a
credit card company, (b) a credit card company sending information to a
cardholder via a computer, and (c) sending a reminder for a medical
appointment via a computer, were all known at the time of the invention.
The issue is whether it would have been obvious to one of ordinary
skill in the art, given what was known, for, for example, a credit card
company to send a reminder for a medical appointment to one of its
cardholders via computer, as claim 1 is reasonably broadly construed to
encompass. In our view, it would have been.
In our view, the claimed process is a combination of known elements
in the art, the combination of which has not been shown to yield anything
other than what one would expect from such an arrangement. “[W]hen 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.” KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
The process, as reasonably broadly construed, simply combines the
known elements of (a) a credit card company (Patel), (b) a credit card
company sending information via a computer to its cardholders (Patel), and
(c) sending a reminder for a medical appointment via a computer (Hacker).
There is insufficient evidence of unexpected results from this combination.
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR at
415-416.
For the foregoing reasons, “providing a health reminder using a
Appeal 2010-009071
Application 11/857,440

7
printer or computer system from a credit card entity to a cardholder, wherein
the health related information provided by said health reminder is not related
to the financial or account information related to the use of said credit card”
(claim 1) would have been obvious to one of ordinary skill in the art.
For the foregoing reasons, we affirm the rejection. However, our
reasons depart from those of the Examiner. Accordingly, we denominate our
affirmance as a new ground of rejection.
We have carefully considered the Appellant’s arguments. For various
reasons,
Appellant contends that if any number of persons possessing ordinary
skill in the art of financial services sales promotion were to read Patel
without any knowledge or hindsight whatsoever of Appellant’s
disclosure, virtually none of these persons skilled in the art would
ordinarily conceive of providing financial services users with a
“health reminder” as an information offering related to Patel’s
financial services application.
App. Br. 49.
The contention has a number of fundamental weaknesses.
First, the rejection is not over Patel alone. “The question in a §103
case is what the references would collectively suggest to one of ordinary
skill in the art. In re Simon, 461 F.2d 1387 (CCPA 1972).” In re Ehrreich,
590 F.2d 902, 909 (CCPA 1979).
Second, the fact that the financial industry is primarily devoted to
financial services is not dispositive of the nonobviousness of the financial
industry providing health-related information. “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
Appeal 2010-009071
Application 11/857,440

8
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR at 417.
Third, as to the concern over hindsight, that is indeed something to
avoid, but “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR at 421. Cf. KSR at 421: “The Court of Appeals,
finally, drew the wrong conclusion from the risk of courts and patent
examiners falling prey to hindsight bias. A factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” “Common sense teaches,
however, that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” KSR at 420-
421.
Fourth, the contention assumes a person of skill in the art given the
common knowledge of, for example, the existence of credit card companies
and that credit card companies normally send information to a cardholder via
a computer, and that sending a reminder for a medical appointment via a
computer was known, would act as an automaton and fail to piece these
together to yield, predictably, a credit card company sending a reminder for
a medical appointment to a cardholder via a computer. But “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” KSR
at 421.
Finally, we note the Appellant’s detailed discussion addressing each
factual inquiry set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18
Appeal 2010-009071
Application 11/857,440

9
(1966). But “[n]either the enactment of § 103 nor the analysis in Graham
disturbed this Court’s earlier instructions concerning the need for caution in
granting a patent based on the combination of elements found in the prior
art.” KSR at 415.

DECISION
The decision of the Examiner to reject claims 1-22 is affirmed but
denominated as a new ground of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .

• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

Appeal 2010-009071
Application 11/857,440

10
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).

AFFIRMED; 37 C.F.R. § 41.50(b)

mls