09969016 (B.P.A.I. Mar. 24, 2010)

Ex Parte Wahlbin et al

Board of Patent Appeals and InterferencesMar 24, 2010

09969016 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte STEVEN WAHLBIN and TIM JOHNSTON 8 ____________________ 9 10 Appeal 2009-006555 11 Application 09/969,016 12 Technology Center 3600 13 ____________________ 14 15 Decided: March 25, 2010 16 ____________________ 17 18 19 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 20 BIBHU R. MOHANTY, Administrative Patent Judges. 21 22 CRAWFORD, Administrative Patent Judge. 23 24 25 DECISION ON APPEAL26 Appeal 2009-006555 Application 09/969,016 2 STATEMENT OF THE CASE 1 Appellants appeal under 35 U.S.C. § 134 (2002) from a Final 2 Rejection of claims 653-666, 668, 671, 674, 677, 680, 681, 683, 684, 686-3 692, 694-703, and 845-852. We have jurisdiction under 35 U.S.C. § 6(b) 4 (2002). 5 Appellants invented computer-implemented systems and methods for 6 estimating liability in a motor vehicle accident through analysis of 7 characteristics of motor vehicle accidents (Spec. 1:10-13). 8 Independent claim 653 under appeal reads as follows: 9 653. A computer-implemented method of 10 estimating liability for a vehicle accident, 11 comprising: 12 estimating a base liability of a party 13 involved in a vehicle accident using a computer 14 system, wherein the base liability is a portion of 15 the liability of the party for the accident that is 16 independent of factors specific to: condition of 17 vehicles in the accident, condition of drivers in the 18 accident, actions of drivers in the accident, and 19 environmental conditions common to vehicles in 20 the accident; 21 estimating an effect of one or more factors 22 specific to: condition of vehicles in the accident, 23 condition of drivers in the accident, actions of 24 drivers in the accident, and environmental 25 conditions common to vehicles in the accident, on 26 the liability of the party, using the computer 27 system; 28 determining an estimate of liability of the 29 party using the computer system, wherein the 30 estimate of liability is at least partially based on: 31 the base liability as modified by one or more 32 of the estimated factors; or 33 Appeal 2009-006555 Application 09/969,016 3 the base liability as modified by an absolute 1 liability value if one or more criteria are met, 2 wherein the absolute liability value applies 3 regardless of the effect of at least one of the 4 estimated factors. 5 6 The prior art relied upon by the Examiner in rejecting the claims on 7 appeal is: 8 Rodriguez US 5,717,391 Feb. 10, 1998 9 Thomas L. Traynor, The Effects Of Varying Safety Conditions on the 10 External Costs of Driving, 20 E. Econ. J., 45-60 (1994) (hereinafter 11 “Traynor”). 12 Jeffrey Baker, Don’t Throw Your Adjusters to the Lions, 95 Best’s 13 Rev., 66-69 (Apr. 1995) (hereinafter “Baker”). 14 The Examiner rejected claims 653-666, 668, 671, 674, 677, 680, 681, 15 683, 684, 686-692, 694-699, 702, 703, 845-847, and 849-852 under 35 16 U.S.C. § 103(a) as being unpatentable over Baker in view of Rodriguez; and 17 rejected claims 700, 701, and 848 under 35 U.S.C. § 103(a) as being 18 unpatentable over Baker in view of Rodriguez and further in view of 19 Traynor. 20 We REVERSE. 21 22 ISSUE 23 Did the Examiner err in asserting that the police estimate of liability in 24 Baker renders obvious 25 estimating a base liability of a party involved in a 26 vehicle accident… wherein the base liability is a 27 portion of the liability of the party for the accident 28 that is independent of factors specific to: condition 29 of vehicles in the accident, condition of drivers in 30 Appeal 2009-006555 Application 09/969,016 4 the accident, actions of drivers in the accident, and 1 environmental conditions common to vehicles in 2 the accident, 3 as recited in independent claims 653, 702, and 703? 4 5 FINDINGS OF FACT 6 Appellants invented computer-implemented systems and methods for 7 estimating liability in a motor vehicle accident through analysis of 8 characteristics of motor vehicle accidents (Spec. 1:10-13). 9 Baker discloses that in a police report: 10 if the officer who wrote the report was at the 11 accident scene, can be the determining factor in an 12 adjuster’s liability decision. The police officer 13 often will write numbers in the upper four boxes at 14 the top of the police report. The numbers the 15 officer puts in those boxes indicate whom he or 16 she believes contributed to the causes of the 17 accident. 18 (Baker ¶11). 19 PRINCIPLES OF LAW 20 During examination, the examiner bears the initial burden of 21 establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 22 1443, 1445 (Fed. Cir. 1992). 23 24 ANALYSIS 25 Independent claims 653, 702, and 703 each recite “estimating a base 26 liability of a party involved in a vehicle accident.” The Examiner asserts 27 that the numbers in the upper four boxes at the top of the police report in 28 Baker correspond to the recited base liability. (Exam’r’s Ans. 5, 12). 29 Appeal 2009-006555 Application 09/969,016 5 However, the aforementioned claims set forth a very specific definition of 1 base liability, namely, 2 wherein the base liability is a portion of the 3 liability of the party for the accident that is 4 independent of factors specific to: condition of 5 vehicles in the accident, condition of drivers in the 6 accident, actions of drivers in the accident, and 7 environmental conditions common to vehicles in 8 the accident. 9 This specific definition of base liability directly contradicts the Examiner’s 10 assertion that the “Applicants are arguing that the base liability is completely 11 unrelated to any of the recited conditions. However, this does not appear to 12 be consistent with the recited claim language” (Exam’r’s Ans. 12). The use 13 of the phrase “independent of factors” and the use of the word “and” to 14 separate the factors makes it clear that the base liability is completely 15 unrelated to any of the recited conditions. 16 The Examiner has the initial burden of establishing a prima facie case 17 of obviousness by showing that the cited references disclose each and every 18 aspect of the claimed invention. See In re Oetiker, 977 F.2d at 1445. The 19 Examiner has failed to show how paragraph 11, or any other portion of 20 Baker, discloses that the liability numbers in the police report are 21 “independent of factors specific to: condition of vehicles in the accident, 22 condition of drivers in the accident, actions of drivers in the accident, and 23 environmental conditions common to vehicles in the accident” as set forth in 24 independent claims 653, 702, and 703. Indeed, Baker does not disclose any 25 factors that the police officer in Baker takes into consideration when 26 establishing the liability numbers in the police report. 27 Appeal 2009-006555 Application 09/969,016 6 Moreover, even assuming that the Examiner has shown that the police 1 officer takes some factors into consideration when establishing the liability 2 numbers in the police report (Exam’r’s Ans. 12), it is unlikely that those 3 factors are independent of the various recited conditions surrounding the 4 accident. The police officer does not operate in a vacuum. The police 5 officer, who is disclosed in Baker as having been at the scene of the 6 accident, would be much more likely than not to observe and take into 7 account at least one of “condition of vehicles in the accident, condition of 8 drivers in the accident, actions of drivers in the accident, and environmental 9 conditions common to vehicles in the accident” in arriving at the liability 10 numbers in the police report. Furthermore, as stated above, it is not 11 sufficient that “the police estimate… be independent of some factors that are 12 specific to the recited conditions” (Exam’r’s Ans. 12). The claim language 13 is clear that the estimate must be independent of all recited factors. 14 The Examiner asserts that liability numbers in the police report are 15 based on the officer’s subjective interpretation as to who caused the accident 16 (Exam’r’s Ans. 5, 12). However, as long as the subjective interpretation 17 takes into account any of the aforementioned factors, the liability numbers 18 are not independent of those factors recited in the claims. The Examiner has 19 not met the burden of showing that the subjective interpretation does not 20 take into account any of the aforementioned factors. 21 We will not sustain the rejections of independent claims 653, 702, and 22 703, or their respective dependent claims 654-666, 668, 671, 674, 677, 680, 23 681, 683, 684, 686-692, 694-701, and 845-852. 24 Appeal 2009-006555 Application 09/969,016 7 CONCLUSION OF LAW 1 The Examiner erred in rejecting claims 653-666, 668, 671, 674, 677, 2 680, 681, 683, 684, 686-692, 694-703, and 845-852. 3 4 DECISION 5 The decision of the Examiner to reject claims 653-666, 668, 671, 674, 6 677, 680, 681, 683, 684, 686-692, 694-703, and 845-852 is reversed. 7 8 REVERSED 9 10 11 12 13 14 15 16 17 hh 18 19 20 MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C. 21 P.O. BOX 398 22 AUSTIN, TX 78767-0398 23 24