Ex Parte Theurer

Board of Patent Appeals and Interferences

Dec 22, 2010

10880720 (B.P.A.I. Dec. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/880,720 06/30/2004 Andrew Matthew Theurer AUS920040224US1 1511
47959 7590 12/23/2010
IBM AUSTIN (ANTHONY ENGLAND)
C/O LAW OFFICE OF ANTHONY ENGLAND
PO BOX 5307
AUSTIN, TX 78763-5307
EXAMINER
BIBBEE, JARED M
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
12/23/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW MATTHEW THEURER
____________

Appeal 2009-00-6151
Application 10/880,720
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
DEBRA K. STEPHENS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006151
Application 10/880,720

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-7 and 14-21. Claims 8-13 are cancelled.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.
BACKGROUND
Appellant’s invention is directed to data processing systems. More
particularly, the invention on appeal is directed to data processing systems
that are extensively used to process transactions. (Spec. 1, ll. 6-7)
Claim 1 is illustrative:
1. A data processing system suitable for use as a transaction
processing server, comprising:
transaction processing means to process requests issued
by client systems connected to the transaction processing
server;
transaction profiling means to record information
regarding transactions processed by the server, wherein
recording such information for a transaction provides a profiled
transaction;
means for selecting profiled transactions for inclusion in
a cumulative database according to a selection criteria; and
means for conveying the selected profiled transactions
from the cumulative database to a user.

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The Examiner relies on the following prior art references as evidence
of unpatentability:
Bryant US 6,078,956 Jan. 20, 2000
Schwaller US 6,901,442 May 31, 2005
Moore US 2003/0005113 Jan. 2, 2003

Appellant appeals the following rejections:
1. Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over Moore and
Schwaller.
2. Claims 3-7 and 15-21 under 35 U.S.C. § 103(a) as unpatentable over
Moore, Schwaller, and Bryant.
3. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Moore,
Schwaller, Bryant, and Official Notice.

Grouping of Claims
Based upon Appellant’s arguments in the Brief, we decide the appeal
on the basis of claims 1 and 21. We address dependent claims 6, 14, and 19
separately infra. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 1 and 2
Appellant contends that the cited references fail to teach or suggest
“means for selecting profiled transactions for inclusion in a cumulative
database according to a selection criteria,” as recited in claim 1. (App. Br.
14).

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Application 10/880,720

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ISSUE
Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested selecting profiled transactions for
inclusion in a cumulative database according to a selection criteria, within
the meaning of representative claim 1?
FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, (see Ans. 4 et seq.) except as to those findings that we
expressly overturn or set aside in the Analysis that follows. We add the
following factual findings:
1. The Examiner relied on Moore to teach or suggest recording
profiled transactions into a database. (Ans. 17)
2. The Examiner relied on Schwaller to teach or suggest selectively
gathering information according to a selection criteria. (Id.).
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
Based upon our review of the record, we find Appellant’s argument
unconvincing that the cited references do not teach or suggest selecting
profiled transactions for inclusion in a cumulative database according to a
selection criteria, as claimed. (App. Br. 13; see also claim 1).
Appellant contends that Schwaller does not teach that data is
selectively put into a transaction database for some transactions but not put
into the database for other transactions. (App. Br. 13). Appellant advances a
similar contention regarding Moore. (Id.).
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As noted above, the Examiner relied on Schwaller to teach or suggest
the means for selecting. (FF 2). We agree with the Examiner’s
determination that Schwaller teaches or suggests “filtering results” which
teaches or suggests “selecting” results according to a selection criteria. (Ans.
18). The Examiner relied on Moore to teach or suggest entering transaction
response times (i.e., profiled transactions) for respective customers. (FF 1).
Therefore, we agree with the Examiner that the combined teachings of the
references would have taught or suggested selecting profiled transactions for
inclusion in a cumulative database (Moore) according to a selection criteria
(Schwaller), within the meaning of representative claim 1.
It is our view that Appellant’s arguments do not take into account
what the collective teachings of the prior art would have suggested to one of
ordinary skill in the art and are therefore ineffective to rebut the Examiner’s
prima facie case of obviousness. In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”).
This reasoning is applicable here.
On this record, we find no reversible error in the Examiner’s
determination that the cited references would have taught or suggested
selecting profiled transactions for inclusion in a cumulative database
according to a selection criteria, within the meaning of claim 1. Therefore,
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we sustain the Examiner’s § 103 rejection of representative claim 1, and
dependent claim 2 which falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Independent claim 15
With regards to independent claim 15, Appellant’s arguments for
patentability are based on those presented for claim 1, discussed above,
which we do not find persuasive. (App. Br. 17-18). Therefore, we sustain
the Examiner’s § 103 rejection of independent claim 15 over Moore,
Schwaller, and Bryant for the same reasons discussed supra regarding
claim 1 which stands rejected over Moore and Schwaller.

Claims 3-5, 7, 16-18, and 20
Appellant further contends that the Examiner’s rejection of claims 3-
5, 7, 16-18, and 20 is improper by virtue of the dependence of these claims
upon either independent claim 1 or 15. (App. Br. 21).
Because we do not find Appellant’s arguments persuasive regarding
claims 1 and 15 for the reasons discussed above, we sustain the Examiner’s
§ 103 rejection over Moore, Schwaller, and Bryant for claims 3-5, 7, 16-18,
and 20.
Claims 6 and 19
Regarding dependent claims 6 and 19, we find that Appellant’s
arguments consist of: (1) a recitation of the law; (2) a citation of Moore; and
(3) a conclusory statement that Moore does not disclose the limitation of
claims 6 and 19. (App. Br. 17-18). On this record, we find that Appellant has
not advanced substantive arguments that traverse the Examiner’s rejection of
claims 6 and 19.
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While Appellant recites the language of claims 6 and 19 (Id.), we note
that a statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
This form of argument is ineffective in demonstrating error in the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness to establish the patentability of the claims on appeal. See Ex
parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009)
(informative), available at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd09004693.pdf (last
visited Dec. 21, 2010).
For these reasons, we sustain the Examiner’s § 103 rejection of claims
6 and 19 over Moore, Schwaller, and Bryant.

Independent claim 21
Appellant contends that the cited references fail to teach or suggest
“processing the transaction includes the transaction processing system
processing a request and providing data responsive to the request and
wherein the transaction profile includes a transaction identifier and a data
requested parameter, and wherein the data requested parameter indicates an
amount of the data provided in the response to the request,” as recited in
independent claim 21.

ISSUE
Under § 103, did the Examiner err in determining that the cited
references would have taught or suggested “processing the transaction
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includes the transaction processing system processing a request and
providing data responsive to the request and wherein the transaction profile
includes a transaction identifier and a data requested parameter, and wherein
the data requested parameter indicates an amount of the data provided in the
response to the request,” within the meaning of claim 21?
The Examiner relied on Moore to teach or suggest this limitation.
(Ans. 13, 27). However, based upon our review of the record, we agree with
Appellant that the Examiner has not established where any of the cited
references teach or suggest the claimed “data requested parameter,” as
claimed.
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970)(“All words in a claim must be
considered in judging the patentability of that claim against the prior art.”)
(emphasis added).
On this record, we find the Examiner erred in rejecting independent
claim 21. Therefore, we reverse the Examiner’s § 103 rejection of claim 21
over Moore, Schwaller, Bryant, and Official Notice.

Dependent claim 14
Claim 14 depends from claim 21. We do not find, nor has the
Examiner established, that the Examiner’s Official Notice cures the
deficiencies of Moore, Schwaller, and Bryant discussed supra regarding
claim 21. Therefore, we reverse the Examiner’s rejection of claim 14 for the
reasons discussed supra regarding independent claim 21.
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DECISION
We affirm the Examiner’s § 103 rejections of claims 1-7 and 15-20.
We reverse the Examiner’s § 103 rejections of claims 14 and 21.
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) (2009).
ORDER
AFFIRMED-IN-PART
erc

IBM AUSTIN (ANTHONY ENGLAND)
C/O LAW OFFICE OF ANTHONY ENGLAND
PO BOX 5307
AUSTIN TX 78763-5307