Ex Parte West

Board of Patent Appeals and Interferences

Sep 18, 2008

10793321 (B.P.A.I. Sep. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JEFFREY M. WEST 8
___________ 9
10
Appeal 2008-2810 11
Application 10/793,321 12
Technology Center 3600 13
___________ 14
15
Decided: September 18, 2008 16
___________ 17
18
Before WILLIAM F. PATE, III, ANTON W. FETTING, and 19
MICHAEL W. O’NEILL, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE 27
Jeffrey M. West (Appellant) seeks review under 35 U.S.C. § 134 of a 28
final rejection of claims 1-45, the only claims pending in the application on 29
appeal. 30
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 31
(2002).32
Appeal 2008-2810
Application 10/793,321

2
We AFFIRM. 1
The Appellant invented a method for an employer to complete the 2
application process for seasonal and/or temporary worker visas, preferably 3
visas in the H-2 category, and even more preferably in the H-2B category, to 4
supply the employer with the temporary workers that match the employer's 5
needs (Specification 5:13-17). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 1, which is reproduced below [bracketed matter and some 8
paragraphing added]. 9
1. A method of placing at least one temporary worker for 10
employment with an employer without the aid of a professional 11
service or an attorney which comprises: 12
[1] collecting information from an employer, 13
[2] storing said information in a first database, 14
[3] calculating an earliest date when said employer can apply 15
for a visa of an at least one temporary worker, 16
[4] creating a time-line for a visa application status and an 17
employment status of said at least one temporary worker, 18
[5] providing a second database comprising a plurality of 19
temporary worker descriptions, 20
[6] comparing said first database with said second database, 21
[7] aiding said employer in obtaining said visa for said at least 22
one temporary worker, and 23
[8] supplying said employer with said at least one temporary 24
worker upon approval of said visa. 25
26
This appeal arises from the Examiner’s Final Rejection, mailed June 27
30, 2006. The Appellant filed an Appeal Brief in support of the appeal on 28
March 6, 2007. An Examiner’s Answer to the Appeal Brief was mailed on 29
October 3, 2007. A Reply Brief was filed on October 9, 2007. 30
Appeal 2008-2810
Application 10/793,321

3
PRIOR ART 1
The Examiner relies upon the following prior art: 2
Joe US 2003/0046287 A1 Mar. 6, 2003 3
4
Martinez, Amy, Do-It-Yourself Law Fast Growing Franchise Offers Forms 5
Without Attorney Fees, Palm Beach Post 1F (Aug. 5, 2001)(hereinafter 6
referred to as “Martinez”). 7
8
Web Archive, www.mexicanlabor.com (Retrieval Date March 5, 2001 Any 9
Linkage) (hereinafter referred to as “Mexican Labor”). 10
11
Web Archive, www.workforcesecurity.goleta.gov/foreign.asp (Retrieval 12
Date December 18, 2001) (hereinafter referred to as “Workforce”). 13
14
REJECTIONS 15
Claims 1-3, 6-9, 41, and 45 stand rejected under 35 U.S.C. § 103(a) as 16
unpatentable over Joe and Martinez. 17
Claims 4, 5, 10, 12-19, 23-30, and 37 stand rejected under 35 U.S.C. § 18
103(a) as unpatentable over Joe, Martinez, and Workforce. 19
Claims 11, 20-23, 31-36, 38-40, and 42-44 stand rejected under 35 20
U.S.C. § 103(a) as unpatentable over Joe, Martinez, and Mexican Labor. 21
22
ISSUES 23
The issues pertinent to this appeal are 24
• Whether the Appellant has sustained its burden of showing that the 25
Examiner erred in rejecting claims 1-3, 6-9, 41, and 45 under 35 26
U.S.C. § 103(a) as unpatentable over Joe and Martinez. 27
• Whether the Appellant has sustained its burden of showing that the 28
Examiner erred in rejecting claims 4, 5, 10, 12-19, 23-30, and 37 29
Appeal 2008-2810
Application 10/793,321

4
under 35 U.S.C. § 103(a) as unpatentable over Joe, Martinez, and 1
Workforce. 2
• Whether the Appellant has sustained its burden of showing that the 3
Examiner erred in rejecting claims 11, 20-23, 31-36, 38-40, and 42-44 4
under 35 U.S.C. § 103(a) as unpatentable over Joe, Martinez, and 5
Mexican Labor. 6
The pertinent issue turns on whether the preamble limitation of using 7
the invention without an attorney is to be given patentable weight, and if so, 8
whether such a practice would have been predictable. 9
10
FACTS PERTINENT TO THE ISSUES 11
The following enumerated Findings of Fact (FF) are believed to be 12
supported by a preponderance of the evidence. 13
Facts Related to Claim Construction 14
01. Claim 1 contains the phrase “without the aid of a professional 15
service or an attorney” in its preamble. The body of the claim 16
does not refer back to either an attorney or professional service. 17
02. The ordinary and customary meaning of “or” is designating 18
alternatives. 19
Joe 20
03. Joe is directed to acquiring and disbursing immigration status 21
information, and in particular, to conveniently providing 22
immigration status information to an employer at an aggregate 23
level and/or to employees at an individual level using an 24
electronic medium (Joe: ¶ 0002). 25
Appeal 2008-2810
Application 10/793,321

5
04. Joe’s Fig. 2 shows the claim 1’s limitations of [1] collecting 1
information from an employer; [2] storing said information in a 2
first database; and [5] providing a second database comprising a 3
plurality of temporary worker descriptions. 4
05. Joe’s database may be organized according to due date(s) 5
and/or expiration date(s) of the various visas and immigration 6
applications (Joe: ¶ 0048). 7
06. Joe provides status information regarding whether an 8
application is pending, what stage an application is in, a date of 9
filing for an application, a beginning date for a visa type, a 10
termination date for a visa type, and the next due date for 11
submitting information (Joe: ¶ 0076). 12
07. Joe describes its invention as alleviating burden from both an 13
HR (Human Relations) department and law firms (Joe: ¶ 0007). 14
08. Joe describes how attorneys are usually employed in 15
immigration matters (Joe: ¶ 0005). 16
Martinez 17
09. Martinez is directed to a growing practice of legal self help 18
centers Martinez 1:Bottom ¶). 19
Workforce 20
10. Workforce is directed to providing online foreign labor 21
certification information (Workforce 1:First ¶). 22
Mexican Labor 23
11. Mexican Labor is directed to providing online seasonal labor 24
requirements information (Mexican Labor 1:Title). 25
Facts Related To The Level Of Skill In The Art 26
Appeal 2008-2810
Application 10/793,321

6
12. Neither the Examiner nor the Appellant has addressed the level 1
of ordinary skill in the pertinent arts of systems analysis and 2
programming, immigration law, document design, legal self help 3
practice, or database design. We will therefore consider the cited 4
prior art as representative of the level of ordinary skill in the art. 5
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 6
(“[T]he absence of specific findings on the level of skill in the art 7
does not give rise to reversible error ‘where the prior art itself 8
reflects an appropriate level and a need for testimony is not 9
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 10
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 11
Facts Related To Secondary Considerations 12
13. There is no evidence on record of secondary considerations of 13
non-obviousness for our consideration. 14
15
PRINCIPLES OF LAW 16
Claim Construction 17
During examination of a patent application, pending claims are 18
given their broadest reasonable construction consistent with the 19
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 20
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 21
Limitations appearing in the specification but not recited in the claim 22
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 23
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 24
specification” without importing limitations from the specification into the 25
claims unnecessarily). 26
Appeal 2008-2810
Application 10/793,321

7
Although a patent applicant is entitled to be his or her own 1
lexicographer of patent claim terms, in ex parte prosecution it must be 2
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 3
must do so by placing such definitions in the specification with sufficient 4
clarity to provide a person of ordinary skill in the art with clear and precise 5
notice of the meaning that is to be construed. See also In re Paulsen, 30 6
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 7
specific terms used to describe the invention, this must be done with 8
reasonable clarity, deliberateness, and precision; where an inventor chooses 9
to give terms uncommon meanings, the inventor must set out any 10
uncommon definition in some manner within the patent disclosure so as to 11
give one of ordinary skill in the art notice of the change). 12
Preamble Limitations 13
“[A] claim preamble has the import that the claim as a whole suggests 14
for it.” Bell Communications Research, Inc. v. Vitalink Communications 15
Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). If the claim preamble, when read 16
in the context of the entire claim, recites limitations of the claim, or, if the 17
claim preamble is “necessary to give life, meaning and vitality” to the claim, 18
then the claim preamble should be construed as if in the balance of the 19
claim. Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). 20
If, however, the body of the claim fully and 21
intrinsically sets forth the complete invention, 22
including all of its limitations, and the preamble 23
offers no distinct definition of any of the claimed 24
invention's limitations, but rather merely states, for 25
example, the purpose or intended use of the 26
invention, then the preamble is of no significance 27
to claim construction because it cannot be said to 28
constitute or explain a claim limitation. 29
Appeal 2008-2810
Application 10/793,321

8
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1
1999). 2
Obviousness 3
A claimed invention is unpatentable if the differences between it and 4
the prior art are “such that the subject matter as a whole would have been 5
obvious at the time the invention was made to a person having ordinary skill 6
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 7
S. Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 8
(1966). 9
In Graham, the Court held that the obviousness analysis is bottomed 10
on several basic factual inquiries: “[(1)] the scope and content of the prior art 11
are to be determined; [(2)] differences between the prior art and the claims at 12
issue are to be ascertained; and [(3)] the level of ordinary skill in the 13
pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex Inc., 14
127 S. Ct. at 1734. “The combination of familiar elements according to 15
known methods is likely to be obvious when it does no more than yield 16
predictable results.” KSR, at 1739. 17
“When a work is available in one field of endeavor, design incentives 18
and other market forces can prompt variations of it, either in the same field 19
or a different one. If a person of ordinary skill can implement a predictable 20
variation, § 103 likely bars its patentability.” Id. at 1740. 21
“For the same reason, if a technique has been used to improve one 22
device, and a person of ordinary skill in the art would recognize that it would 23
improve similar devices in the same way, using the technique is obvious 24
unless its actual application is beyond his or her skill.” Id. 25
Appeal 2008-2810
Application 10/793,321

9
“Under the correct analysis, any need or problem known in the field 1
of endeavor at the time of invention and addressed by the patent can provide 2
a reason for combining the elements in the manner claimed.” Id. at 1742. 3
4
ANALYSIS 5
Claims 1-3, 6-9, 41, and 45 rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Joe and Martinez. 7
The Appellant argues these claims as a group. 8
Accordingly, we select claim 1 as representative of the group. 9
37 C.F.R. § 41.37(c)(1)(vii) (2007). 10
The Examiner found that Joe described all of the steps in the body of 11
claim 1. The Examiner found that Joe did not explicitly recite performing 12
these steps without the aid of an attorney, but found that Martinez described 13
a growing practice of legal self help centers to avoid attorneys and 14
concluded that one of ordinary skill would have known that Joe’s steps 15
could have been performed at such a legal self help center without the aid of 16
an attorney (Answer 4-5). 17
The Examiner also found that the limitation of “without the aid of a 18
professional service or an attorney,” being in the claim preamble, was to be 19
afforded no patentable weight for being a mere field of use limitation. The 20
Examiner further found that if the preamble limitation were afforded 21
patentable weight, the limitation of “without the aid of a professional service 22
or an attorney” was an alternative limitation, and was met so long as at least 23
one of an attorney or professional service was not used (Answer 12). 24
The Appellant contends that the references cannot be combined, that 25
Joe does not describe performing its steps without the aid of an attorney, and 26
Appeal 2008-2810
Application 10/793,321

10
that this limitation of no attorney must be given weight, and that neither 1
reference describes limitation [8] of supplying the employer with a 2
temporary worker. 3
Whether Joe describes limitations [1]-[7] is not in dispute and we find 4
that Joe does describe those steps (FF 03-06). 5
We first take up the contention regarding combinability of the 6
references. The Appellant argues that Joe and Martinez are directed to 7
different areas of law and that Martinez is directed to legal areas where an 8
attorney may not be needed whereas Joe describes the necessity of an 9
attorney in immigration matters (Appeal Br. 7-8). The Appellant further 10
argues that Martinez is only applicable to simple legal matters whereas 11
immigration law is complex (Appeal Br. 9-10), and that because of this 12
dichotomy between Martinez’s simplicity and Joe’s complexity, the 13
references teach away from each other (Appeal Br. 11), and Joe would 14
discourage placing workers without legal services (Appeal Br. 12). 15
The Examiner responds that both Joe and Martinez are related to 16
providing support for legal areas where an attorney may not be required 17
(Answer 13). We agree with the Examiner. 18
While Joe does describe the need for an attorney generally (FF 08), 19
Joe also describes its invention as alleviating burden from law firms (FF 07). 20
Joe does not describe the need for an attorney to perform any of the steps in 21
claim 1. Martinez describes a growing practice of legal self help centers (FF 22
10). A legal self help center, by its description, implies providing support 23
for people to help themselves in various legal matters. Thus, Martinez 24
simply describes a growing practice in various areas of law, whereas Joe 25
describes an area of law, viz. immigration. We find that one of ordinary skill 26
Appeal 2008-2810
Application 10/793,321

11
knowing of such legal self help centers as described by Martinez would have 1
been motivated to at least determine whether such self help would be 2
practical in any area of law, including Joe’s immigration law. 3
The Appellant also makes much of what he describes as a distinction 4
between the complexity of immigration law and the simplicity of the areas 5
of law Martinez deals with (Appeal Br. 10). This argument is simply not 6
commensurate with the scope of claim 1. Claim 1 is directed to a series of 7
steps that Joe plainly describes as not requiring an attorney, but rather may 8
be used to alleviate the burden on attorneys. Whether other issues that 9
surface in immigration law have such complexity as to require an attorney 10
has nothing to do with whether an attorney would be needed to practice 11
claim 1. Thus, the argument that such issues would require an attorney is 12
not commensurate with the scope of claim 1. 13
Next we take up the Appellant’s contention that Joe does not describe 14
performing its steps without the aid of an attorney or professional service. 15
The Examiner responds that Joe only says that an attorney is usually 16
employed, which implies that an attorney is not required (Answer 14). We 17
agree with the Examiner. 18
The steps in claim 1 are purely automated and clerical in nature. 19
Claim 1 is directed to placing an employee, not to overcoming the legal 20
hurdles of immigration law. Computing dates and creating timelines are 21
well within the skill of a non-legal and non-professional service person. Joe 22
even suggests these steps are sometimes done by HR personnel, because the 23
purpose of Joe is to relieve HR personnel of that burden (FF 07). HR 24
personnel would typically be neither attorneys nor professional services. 25
Appeal 2008-2810
Application 10/793,321

12
As to whether the limitation should be given patentable weight, the 1
Appellant argues that prosecution history provides evidence that the 2
Appellant relied on this limitation as a basis for distinguishing from the art 3
(Reply Br. 5: First full ¶). We find that even if we do give the preamble 4
patentable weight, the Examiner is correct in that the limitation is expressed 5
in the alternative (FF 01 & 02). Thus the limitation is met if there is no 6
attorney or if there is no professional service. We found supra that Joe 7
expressly describes using its steps to relieve attorneys of the burden of those 8
steps, implying that no attorney is used. 9
The Appellant has not sustained its burden of showing that the 10
Examiner erred in rejecting claims 1-3, 6-9, 41, and 45 under 35 U.S.C. 11
§ 103(a) as unpatentable over Joe and Martinez. 12
Claims 4, 5, 10, 12-19, 23-30, and 37 rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Joe, Martinez, and Workforce. 14
The Appellant relies on its arguments in support of claim 1 above, 15
which we found to be insufficient to overcome the Appellant’s burden and 16
so has not sustained its burden of showing that the Examiner erred in 17
rejecting claims 4, 5, 10, 12-19, 23-30, and 37 under 35 U.S.C. § 103(a) as 18
unpatentable over Joe, Martinez, and Workforce. 19
Claims 11, 20-23, 31-36, 38-40, and 42-44 rejected under 35 U.S.C. § 20
103(a) as unpatentable over Joe, Martinez, and Mexican Labor. 21
The Appellant relies on its arguments in support of claim 1 above, 22
which we found to be insufficient to overcome the Appellant’s burden and 23
so has not sustained its burden of showing that the Examiner erred in 24
rejecting claims 11, 20-23, 31-36, 38-40, and 42-44 under 35 U.S.C. 25
§ 103(a) as unpatentable over Joe, Martinez, and Mexican Labor. 26
Appeal 2008-2810
Application 10/793,321

13
CONCLUSIONS OF LAW 1
The Appellant has not sustained its burden of showing that the 2
Examiner erred in rejecting claims 1-45 under 35 U.S.C. § 103(a) as 3
unpatentable over the prior art. 4
On this record, the Appellant is not entitled to a patent containing 5
claims 1-45. 6
7
DECISION 8
To summarize, our decision is as follows: 9
• The rejection of claims 1-3, 6-9, 41, and 45 under 35 U.S.C. § 103(a) 10
as unpatentable over Joe and Martinez is sustained. 11
• The rejection of claims 4, 5, 10, 12-19, 23-30, and 37 under 35 U.S.C. 12
§ 103(a) as unpatentable over Joe, Martinez, and Workforce is 13
sustained. 14
• The rejection of claims 11, 20-23, 31-36, 38-40, and 42-44 under 35 15
U.S.C. § 103(a) as unpatentable over Joe, Martinez, and Mexican 16
Labor is sustained. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED 21
22
23
24
25
Appeal 2008-2810
Application 10/793,321

14
hh 1
2
3
DUKE W. YEE 4
YEE & ASSOCIATES, P.C. 5
P.O. BOX 802333 6
DALLAS, TX 75380 7
8