UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/886,461 05/03/2013
58735 7590 02/04/2019
Fountainhead Law Group P.C.
Chad R. Walsh
900 LAFAYETTE STREET
SUITE 301
SANTA CLARA, CA 95050
FIRST NAMED INVENTOR
Christian Barnhardt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
000005-032500US 3369
EXAMINER
MOBIN, HASANUL
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
02/04/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@fountainheadlaw.com
rbaumann@fountainheadlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN BOMHARDT
Appeal2018-005714 1
Application 13/886,461
Technology Center 2100
Before ST. JOHNCOURTENAYIII, LARRY HUME and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1, 3-9, 11-17, 19, and 20, which are all the claims
pending in this application. Claims 2, 10, and 18 are cancelled. Final Act.
2. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We Reverse.
1 Appellant identifies SAP SE as the real party in interest. App. Br. 2.
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Application 13/886,461
STATEMENT OF THE CASE
Introduction
Appellant's invention relates generally to "Performance And Quality
Optimized Architecture For Cloud Applications." Spec. Title.
Exemplary Claim
1. A method for validating data comprising:
exchanging data between a server system and a client
system;
providing a first data validation procedure expressed in a
first specification language to the server system;
the server system causing the first data validation
procedure to be executed on the server system to perform a
validation of data exchanged between the server system and the
client system in accordance with the first data validation
procedure;
the server system providing the first data validation
procedure that is expressed in the first specification language to
the client system; and
the client system causing the first data validation
procedure to be executed on the client system to perform a
validation of data exchanged between the server system and the
client system in accordance with the first data validation
procedure,
wherein causing the first data validation procedure to be
executed on a client system includes sending an interpreter
engine and a representation of the first data validation
procedure to the client system, wherein the interpreter engine
executes on the client system to interpret the first data
validation procedure.
( emphasis added regarding contested limitations).
Rejections
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A. Claims 1, 3, 8, 9, 11, 16, 17, and 19 are rejected under 35 U.S.C.
§ 103 as being obvious over the combined teachings and suggestions
of Kirkpatrick et al. (US 2005/0005163 Al; published Jan. 6, 2005)
("Kirkpatrick"), Colton et al. (US 8,756,579 Bl; issued June 17,
2014) ("Colton"), and Moore et al. (US 6,915,454 Bl; issued July 5,
2005) ("Moore"). Final Act. 4--9.
B. Claims 4--7, 12-15, and 20 are rejected under 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of
Kirkpatrick, Colton, Moore, and Iborra et al. (US 2007/0089103 Al;
published Apr. 19, 2007) ("Iborra"). Final Act. 9.
Issue on Appeal
Did the Examiner err in rejecting independent claims 1, 9, and 17 as
being obvious over the cited combination of references under 35
U.S.C. § 103? In particular, we decide the question of whether the cited
combination of Kirkpatrick, Colton, and Moore teaches or suggests the
disputed "wherein" clause limitation,
wherein causing the first data validation procedure to be
executed on a client system includes sending an interpreter
engine and a representation of the first data validation
procedure to the client system, wherein the interpreter engine
executes on the client system to interpret the first data
validation procedure[,]
within the meaning of representative independent claim 1 ?2 ( emphasis
added). We note the disputed "wherein" clause limitation is recited using
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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similar language of commensurate scope in remaining independent claims 9
and 17.
Rejection of Independent Claim 1 under 35 US.C § 103
ANALYSIS
The Examiner finds "Kirkpatrick and Colton do not teach" the
disputed "wherein clause" limitation. Final Act. 7 ( emphasis added).
The Examiner finds Moore provides the teachings missing from Kirkpatrick
and Colton. In particular, the Examiner finds Moore teaches or suggests:
wherein causing the first data validation procedure to be
executed on a client system includes sending an interpreter
engine and a representation of the first data validation
procedure to the client system, wherein the interpreter engine
executes on the client system to interpret the first data validation
procedure (Moore, Fig. 16, Col 18, lines 37-61 illustrates
operations relating to client-side web control validation. Moore
discloses that saving operation saves input control object
properties for transmission in an HTTP response. Rendering
operation renders authoring language (e.g., HTML) data of the
Web page for inclusion in the HTTP response. Transmission
operation sends the authoring language data to the client in an
HTTP response which contains rendered validation script
along with the control object (i.e., sending validation procedure
with interpreter). Receipt operation receives input data through
an input control element in the web page. Invocation operation
invokes one or more validation scripts associated with the input
control element to evaluate the input data against at least one
validation criterion (i.e., the interpreter engine executes on the
client system to interpret the first data validation procedure)).
Final Act. 7 ( emphasis added).
Appellant contests the Examiner's findings regarding the "wherein"
clause limitation recited in claim 1. Appellant explains the operation of
Moore, in pertinent part:
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FIG. 16 (described beginning at column 18, line 37), for
instance, illustrates operations relating to client-side web
control validation. A close review of the process reveals, a
rendering operation 1604 that renders authoring language (e.g.,
HTML) data for inclusion in an HTTP response, which includes
one or more scripts for validating input data on the client. Col.
18, lines 46 et seq. A transmission operation 1606 sends the
authoring language data to the client in the HTTP response.
Col. 18, lines 51 et seq. The transmitted authoring language
data, which contains rendered validation scripts, is received by
the client. An invocation operation 1612 invokes one or more of
the validation scripts to evaluate input data against at least one
validation criterion. Col. 18, lines 55 et seq.
App. Br. 8-9.
Appellant specifically contends:
Moore does not describe "sending an interpreter engine
and a representation of the first data validation procedure to
the client system." As explained above, Moore's server-side
validation object can be used (i) to render authoring language
data that is sent to the client in an HTTP response (in a server-
side scenario), and (ii) to render appropriate client-side code to
respond to a validation error (in a client-side scenario). First,
we note Moore does not disclose that the client-side code
includes an interpreter engine. Secondly, we further note
Moore does not disclose that the client-side code includes a
representation of the first data validation procedure ( that is
"executed on the server system to perform a validation of
data").
Moore does not describe "wherein the interpreter engine
executes on the client system to interpret the first data
validation procedure. " The invocation operation described by
Moore "invokes one or more validation scripts associated with
the input control element to evaluate the input data against at
least one validation criterion." Moore does not describe that
invoking one or more validation scripts includes an interpreter
engine that executes on the client system to interpret a first data
validation procedure ( that is "executed on the server system to
perform a validation of data").
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App. Br. 9 ( emphasis added).
In response, the Examiner further explains the basis for the rejection.
Moore, Fig. 16, Col 18, lines 37---61, illustrates operations
relating to client-side web control validation. Moore discloses
that saving operation saves input control object properties for
transmission in an HTTP response. Rendering operation renders
authoring language (e.g., HTML) data of the Web page for
inclusion in the HTTP response. Transmission operation sends
the authoring language data to the client in an HTTP response
which contains rendered validation script along with the control
object (i.e., sending validation procedure with interpreter).
Ans. 4 (emphasis added).
Id.
The Examiner further notes:
Furthermore, Moore, Col 6, lines 51-67 discloses that each
server-side control object in the control object hierarchy is
called to generate ( or render) data, such as HTML code, for
display of client-side user interface elements in the web page.
The term "render" (i.e., render() method) describe the
operation of generating authoring language data that can be
interpreted by [the] client-application, such as a browser, for
display and client-side functionality.
Given the teachings in Moore (id.), the Examiner finds:
Therefore, the transmitted authoring language data to the client
from the server contains rendered validation script along with
the control object (i.e., client received authoring language data
which is validation procedure with interpreter). Similar to
Validate() as described by the instant application specification
paragraphs [0027-0028], renderO operation of Moore is
considered as the interpreter and the data validation is
performed when the client system invokes one or more
validation scripts associated with the input control element to
evaluate the input data against at least one validation criterion
(i.e., the interpreter engine executes on the client system to
interpret the first data validation procedure).
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Ans. 4 ( emphasis added).
We particularly note the Examiner relies on Colton for teaching or
suggesting the claimed "first data validation procedure, as contrasted with
the claimed "a representation of the first data validation procedure"
(claim 1), for which the Examiner relies on Moore, Fig. 16, col. 18, lines 37-
61 - Final Act. 7. Specifically, the Examiner finds Colton teaches:
providing a first data validation procedure expressed in a first
specification language to the server system (A general method
100 of the present invention is shown in FIG. 8. At block 102, a
single block of JavaScript code having a runat attribute of both
is provided on a server-side (i.e., first data validation procedure
expressed in a first specification language to the server system),
Colton, Col 14, lines 54-56);
Final Act. 5.
Claim Construction
We begin our analysis with claim construction under the BRI
standard, as applied to pending patent applications. See supra, n.2. Turning
to the Specification for context, we observe that the literal claim term
"interpreter engine" is not found in the main body of the Specification (not
including the claims). However, literal support for the claim term
"interpreter engine" is found in original dependent claims 2, 3, 10, 11, 18,
and 19. 3 For example original claims 2 and 3 are reproduced below:
3 "Although many original claims will satisfy the written description
requirement" Ariad Pharm., Inc. v. Eli Lilly & Co. (598 F.3d 1336, 1349
(Fed. Cir. 2010) (en bane)), the Patent Rules require:
[ t ]he claim or claims must conform to the invention as set forth
in the remainder of the specification and the terms and phrases
used in the claims must find clear support or antecedent basis in
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Original claim 2: "The method of claim 1 wherein causing the first
data validation procedure to be executed on a client system includes sending
an interpreter engine and a representation of the first data validation
procedure to the client system, wherein the interpreter engine executes on
the client system to interpret the first data validation procedure." ( emphasis
added).
Original claim 3: "The method of claim 2 wherein the interpreter
engine and the first data validation procedure are sent to the client system in
a web page." (emphasis added). Paired original dependent claims (10, 11)
and (18, 19) recite similar language having commensurate scope.
In similar form, dependent claim 3 (before us on appeal) recites: "The
method of claim 1 wherein the interpreter engine and the first data
validation procedure are sent to the client system in a web page." (emphasis
added). (Note: original claim 2 was cancelled during prosecution).
Thus, as an initial matter of claim construction, the doctrine of claim
differentiation informs us of the presumption that the broader independent
claims 1, 9, and 17 before us on appeal do not require that (one or both of)
the interpreter engine and the first data validation procedure must be sent
from the server to the client system via a web page. 4
the description so that the meaning of the terms in the claims may
be ascertainable by reference to the description.
37 C.F.R. § 1.75(d)(l) (emphasis added).
4 See Phillips v. AWH Corp., 415 F.3d 1303, 1314--15 (Fed. Cir. 2005) (en
bane) ("Differences among claims can also be a useful guide in
understanding the meaning of particular claim terms. For example, the
presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
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Turning to Appellant's Specification (including the drawings), we
find descriptions (i1i127-28) and drawings (e.g., Fig. 4) which indicate the
claimed "representation of the first data validation procedure" corresponds
to Appellant's Figure 4, element 402: i.e., the declaration of the array: "var
valArray =['ZIP'', 'NUM', '5']; //dynamically inserted by web server."
Similarly, the claimed "interpreter engine" corresponds to Appellant's
Figure 4, element 404, i.e., "function Validate () // Generic validate
function." 5
In particular, see paragraphs 27 and 28 of Appellant's Specification,
describing Appellant's Figure 4, as reproduced below in pertinent part:
[0027] ... The HTML code 400 includes a section 402 that
expresses the data validation procedure 104 shown in Table 3
as data in an array called valArray[]. A section 404 defines an
interpreter function called Validate(), which comprises code
(not shown) that can interpret or otherwise execute the rules
specified in valArray[]. A section 406 represents the body of
the HTML code. The body invokes the Validate() function
when a mouse click event is detected in order to validate the
input data.
[0028] The approach illustrated in Fig. 4 uses an interpreter,
namely Validate(), to process an array (e.g., valArray[]) that
contains the rules set forth in the first data validation procedure
104. The array valArray[] may be initialized by the server
claim.") (citations omitted); see also Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1054-55 (Fed. Cir. 1988); Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).
5 See "Summary of Claimed Subject Matter" section of the Appeal Brief:
"sending an interpreter engine and a representation of the first data
validation procedure ( 404, 402, FIG. 4, ,r [0027]) to the client system,
wherein the interpreter engine executes on the client system to interpret the
first data validation procedure (i-f [0028])." App. Br. 5.
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system 112 with coding from the first data validation
procedure 104. Data validation is performed when the client
system 114 invokes the interpreter function V alidate()to run
through the contents of the array valArray[].
( emphasis added).
402{
406
Figure 4 of Appellant's drawings is reproduced below:
var valArray = ['ZIP'·, 'NUM', '5']; //dynamically inserted by web server
function Validate(} //Generic validate function
{
//code for processing rules in valArray
My First Web Page
Fig. 4
,,,,.~--400
Figure 4 of Appellant's drawings is reproduced above, depicting: (1)
the claimed "representation of the first data validation procedure" as
element 402, i.e., corresponding to the declaration of an array "valArray"
and, (2) the claimed "interpreter engine" as element 404, i.e., a generic
function Validate (), as recited in independent claims 1, 9 and 17 before us
on appeal. ( emphasis added).
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We particularly observe that claim construction has not been
developed in the record, either by the Examiner or by the Appellant. We
emphasize that claim construction is an important step in a patentability
determination. A legal conclusion that a claim is obvious involves two
analytical steps, assuming the references have been properly combined
under§ 103. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed.
Cir. 2003) ("Both anticipation under § 102 and obviousness under § 103 are
two-step inquiries. The first step in both analyses is a proper construction of
the claims .... The second step in the analyses requires a comparison of the
properly construed claim to the prior art." (internal citations omitted)).
Under the second step, the Board must compare the construed claim to one
or more prior art references and make factual findings regarding the
limitations contested by Appellant. See In re Crish, 393 F.3d 1253, 1256
(Fed. Cir. 2004).
Claim Construction for "interpreter engine" (Claim 1)
Under a broad but reasonable interpretation of Appellant's claim 1,
(including Figure 4 and the supporting description found in paragraphs 27
and 28 of Appellant's Specification), we conclude the recited "interpreter
engine" encompasses any data validation method, function, or procedure, as
implemented in any programming language or script that is an interpreted
(as opposed to compiled) language or script. Moreover, we note that the
"wherein" clause of claim 1 expressly requires the "interpreter engine" to
execute on the client system to interpret the "first data validation procedure"
that is also intended "to be executed on a client system." Claim 1. 6
6 Our reviewing court guides that "[i]nterpretation of descriptive statements
in a patent's written description is a difficult task, as an inherent tension
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Claim Construction for "representation of the first data validation
procedure" (Claim 1)
Under a broad but reasonable interpretation of Appellant's claim 1,
(including Figure 4 and the supporting description found in paragraphs 27
and 28 of the Specification), we conclude the recited "representation of the
first data validation procedure" is not the same as the actual "first data
validation procedure" interpreted code or script, but instead merely
"represents" it in any manner consistent with the Appellant's Specification.
( emphasis added).
For example, the recited "representation of the first data validation
procedure" could correspond, inter alia, to an associated declaration ( as
depicted in element 402 of Appellant's Figure 4- "var valArray = ['ZIP' ',
'NUM', '5 '];"), or more broadly, as another example, as a function pointer
(i.e., pointing to the address of the "first data validation procedure").
exists as to whether a statement is a clear lexicographic definition or a
description of a preferred embodiment. The problem is to interpret claims
'in view of the specification' without unnecessarily importing limitations
from the specification into the claims." E-Pass Techs., Inc. v. 3Com Corp.,
343 F.3d 1364, 1369 (Fed. Cir. 2003) (citation omitted).
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Mapping of the properly construed claim terms to the corresponding
features found in Moore under 37 C.F.R. § l.104(c)(2)7
Given the teachings in Moore (id.), the Examiner finds:
Therefore, the transmitted authoring language data to the client
from the server contains rendered validation script along with
the control object (i.e., client received authoring language data
which is validation procedure with interpreter). Similar to
Validate() as described by the instant application specification
paragraphs [0027-0028] [of Appellant's Specification], renderO
operation of Moore is considered as the interpreter and the data
validation is performed when the client system invokes one or
more validation scripts associated with the input control
element to evaluate the input data against at least one validation
criterion (i.e., the interpreter engine executes on the client
system to interpret the first data validation procedure).
Ans. 4 ( emphasis added).
From the above explanation in the Answer ( 4), the Examiner is
reading the "interpreter engine" recited in claim 1 on Moore's render ()
operation (col. 18, 11. 46-51).
From the above explanation in the Answer ( 4 ), it appears that the
Examiner may be reading the "representation of the first data validation
procedure" recited in claim 1, on Moore's transmitted authoring language
(i.e., HTML web page) that contains a rendered validation script, wherein
the Examiner appears to be cumulatively reading the "first data validation
procedure" recited in claim 1 on Moore's validation script. See Moore, ( col.
18, 11. 55---61 ). As discussed above, the Examiner principally relies on
7 See 37 C.F.R. § 1.104(c)(2) ("When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.") ( emphasis added).
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Colton for teaching or suggesting the claimed "first data validation
procedure." Claim 1, Final Act. 5.
We now tum to Moore's Figure 16, in which the rendering operation
1604 is described as:
render[ing the] authoring language ( e.g., HTML) data of the
Web page for inclusion in the HTTP response. In contrast to the
serverside validation description, however, the rendered HTML
includes one or more scripts for validating input data on the
client. Transmission operation 1606 sends the authoring
language data to the client in an HTTP response. Termination
operation 1608 terminates the page and control objects on the
server.
Moore col. 18, 11. 46-54; see also Fig. 16.
We note that if the rendered HTML web page (i.e., the authoring
language data sent from the server to the client) includes a validating script
(i.e., an "interpreter engine" validation script), then the authoring language
data itself (i.e., the rendered HTML web page sent from the server to the
client) might be considered "representative" of the claimed "first data
validation procedure." Claim 1.
However, we find the Examiner has not fully developed the record to
show this, if that was the Examiner's intended mapping of the disputed
claim terms to the corresponding features found in Moore. Moreover, such
a reading might be considered by our reviewing court to be unreasonable, as
being overly broad and inconsistent with the description of array declaration
"valArray" element 402 (Fig. 4). See Spec. ,r 27.
Based upon our review of the record, we find the Examiner does not
explain in sufficient detail the aforementioned mapping of the disputed
claim terms to the corresponding specific features found in Moore.
Moreover, we find the record created by the Examiner could be subject to
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alternative mappings that depart from our understanding of the record, as
discussed above. Cf "The Examiner's discussion on page 4 of the Answer
equates Moore's 'control object' with the claimed "interpreter engine."
Reply Br. 2. It is apparent to us that Appellant is also unsure as to the
Examiner's intended mapping.
In setting forth the rejection of claim 1, we find the Examiner paints
with a broad brush. Final Act. 7. The Examiner's proffered mapping of the
disputed claim limitations to the corresponding features found in Moore (id.)
is imprecise. Therefore, we find that to affirm the Examiner on this record
would require us to engage in some degree of speculation. We decline to
engage in speculation. 8
Moreover, we note that Moore describes the operation of the
rendering function in detail:
In operation 208, each server-side control object in the control
object hierarchy is called to generate ( or render) data, such as
HTML code, for display of client-side user interface elements
in the web page. Note that, although the term "render" may be
used to describe the operation of displaying graphics on a user
interface, the term "render" is also used herein to describe the
operation of generating authoring language data that can be
interpreted by client application, such as a browser, for display
and client-side functionality. In one embodiment, calls to
render() methods in individual control objects are performed
using a tree traversal sequence. That is, a call to the renders
method of a page object results in recursive traversal
throughout appropriate server-side control objects in the
8 "A rejection ... must rest on a factual basis." In re Warner, 379 F.2d
1011, 1017 (CCP A 1967). "The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not ... resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis." Id.
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control object hierarchy. Alternative methods for calling the
render() methods for appropriate control objects may also be
employed, including an event signaling or object registration
approach. The parentheses designate the "render( )" label as
indicating a method, as compared to a data property.
Moore Col. 6, 1.51----col. 7, 1.2 (emphasis added).
From the above description (id.), the control objects are described as
being located on the server-side, and (according to one embodiment) it is the
client-side browser ( or other client side application) that does the
interpreting of the "authoring language data." Id.
Based upon our review of the record, we find a preponderance of the
evidence supports Appellant's contentions for essentially the same reasons
argued in the Briefs, as discussed above. Therefore, we are constrained by
the record before us to find the Examiner erred in concluding that the cited
combination of Kirkpatrick, Colton, and Moore renders obvious Appellant's
independent claim 1.
Accordingly, we reverse the Examiner's§ 103 Rejection A of
independent claim 1, and for the same reasons we also reverse Rejection A
of remaining independent claims 9 and 1 7, which recite the contested
limitations using similar language of commensurate scope. Because we
have reversed the rejection of all independent claims on appeal, for the same
reasons, we reverse the Examiner's Rejection A of the associated dependent
claims also rejected under Rejection A.
Rejection B
Regarding the remaining dependent claims 4--7, 12-15, and 20,
rejected under§ 103 Rejection B, the Examiner has cited an additional
secondary reference, Iborra, as evidence in support of the rejection. On this
record, we find the Examiner has not shown how Iborra overcomes the
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deficiencies of the base combination of Kirkpatrick, Colton, and Moore, as
discussed above regarding Rejection A of independent claims 1, 9, and 17.
Therefore, we are constrained on this record to also reverse Rejection B of
the remaining dependent claims 4--7, 12-15, and 20.
Conclusion
The Examiner erred in rejecting claims 1, 3-9, 11-17, 19, and 20 as
being obvious over the cited combination of references under
35 U.S.C. § 103.
DECISION
We reverse the Examiner's decision rejecting claims 1, 3-9, 11-17,
19, and 20 under 35 U.S.C. § 103(a).
REVERSED
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