Ex Parte Oxman et al

Patent Trial and Appeal BoardSep 27, 2012

10729517 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRIAN D. OXMAN and DAVID R. HUPPER ____________________ Appeal 2010-000008 Application 10/729,517 Technology Center 2100 ____________________ Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and MICHAEL J. STRAUSS, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000008 Application 10/729,517 2 STATEMENT OF CASE 1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-3, 5-24, and 26-31, the only claims pending in the application on appeal. Claims 4 and 25 are withdrawn from consideration. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. INVENTION The Appellants invented computer-based methods and systems for producing domestic relations orders. Specification ¶ 0001. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]: 1. A computerized system for producing a domestic relations order comprising: [1] a receiver for receiving information relating to a domestic relations order, said information comprising an alternate payee and court information; [2] a rules engine in communication with the receiver for selecting sample text passages; and [3] a document assembler for automatically incorporating a first subset of the sample text passages and a second subset of the received information comprising the alternate payee and the court information into a court-compliant domestic relations order for submission to a court. 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Oct. 1, 2007) and the Examiner’s Answer (“Ans.,” mailed Jun. 23, 2009). Appeal 2010-000008 Application 10/729,517 3 REFERENCES The Examiner relies on the following prior art: Broadbent Esposito Fay Cohen US 2001/0047326 Al US 2001/0051906 Al US 2002/0188540 Al US 2004/0064404 Al Nov. 29, 2001 Dec. 13, 2001 Dec. 12, 2002 Apr. 1, 2004 REJECTIONS Claims 1-3, 5-24, 26, and 28-31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Broadbent, Fay, and Esposito. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Broadbent, Fay, Esposito, and Cohen. ISSUE The issue of whether the Examiner erred turns on whether the combination of Broadbent, Fay and Esposito teaches or suggests a system and method for producing a domestic relations order (DRO) as required by claims 1, 13, and 26, and whether Esposito teaches away from printing a DRO and submitting it to a court. ANALYSIS We have reviewed the Examiner’s rejections in light of the Appellants’ contentions that the Examiner has erred. We disagree with the Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellants’ Appeal Brief. We Appeal 2010-000008 Application 10/729,517 4 concur with the conclusion reached by the Examiner. We highlight the following arguments for emphasis. 35 U.S.C. § 103(a) Rejection – Broadbent, Fay, and Esposito Claims 1-3, 5-24, 26, and 28-31 The Appellants contend that the combination of Broadbent, Fay, and Esposito does not teach or suggest (1) producing a domestic relations order (DRO) by (2) assembling a court-compliant DRO based on (3) court information (4) for submission to a court, as required by independent claims 1, 13, and 26 and dependent claims 2, 7, 12, 14, 15, 16, 18, 19, 21, 27, 28, and 29. App. Br. 12-20. The Appellants specifically argue that cited prior art fails to describe this limitation because Broadbent, Fay, and Esposito do not describe the specific information received or input to generate a DRO. Id. We disagree with the Appellants. As found by the Examiner, Broadbent describes a receiver for receiving an information input, a rules engine for selecting sample text, and a document assembler for incorporating received information and sample text into a document. Ans. 3-6 (citing Broadbent ¶¶ 0123, 0120, and 0125). The Examiner also found that Broadbent describes alternate payee information (Ans. 4, citing Broadbent Fig. 22). While these descriptions are directed towards a mortgage loan application and compliance engine (Broadbent Abstract), we agree with the Examiner that it would have been obvious to apply the features of receiving input information, selecting information by a rules engine, and assembling a document comprising information selected by the rules engine and other input information, as described by Broadbent, towards a system that Appeal 2010-000008 Application 10/729,517 5 performs the same functions for a DRO document. Ans. 3-6. That is, a person with ordinary skill in the art would have found it obvious to use the functions described by Broadbent for preparing a mortgage loan application towards any system for preparing documents, including a system for preparing a DRO. Furthermore, the specific information of a DRO was also known at the time of the claimed invention, as evidenced by the disclosures of Broadbent, Fay, and Esposito related to documents for various types of orders. Broadbent describes a co-borrower or alternate payee. Ans. 3-4 (citing Broadbent Fig. 22). Fay describes a domestic relation order, which includes information relating to a DRO, causing a change in a retirement annuity. Ans. 3-4 (citing Fay ¶¶ 0015 and 0077). Esposito describes court information pertaining to federal court compliance for delivering, reporting and monitoring documents. Ans. 3-4 (citing Esposito ¶ 0008). As such, we agree with the Examiner that applying the features of Broadbent towards the preparation of a DRO would have been obvious and do not find the Appellants’ arguments persuasive. The Appellants contend that the combination of Broadbent, Fay, and Esposito does not teach or suggest using legal representative information, as per claims 3, 5, 20, and 22, and rules or information related to domestic relation orders, as per claims 6, 8-11, 17, 23-24, and 31. App. Br. 20-23. We disagree with the Appellants. As discussed supra, we agree with the Examiner that a person with ordinary skill in the art would have found it obvious to apply Broadbent’s document preparation method towards the preparation of a DRO and the specific information recited by the claims was known. Here, the Examiner found that Broadbent describes information Appeal 2010-000008 Application 10/729,517 6 associated with a legal represented, such as attorney fees. Ans. 26 (citing Broadbent ¶¶ 0094 and 0097 and Fig. 30). The Examiner further found that Broadbent describes a rules engine and Fay describes information related to domestic relation orders. Ans. 26-27 (citing Broadbent ¶¶ 0051 and 0202 and Fay ¶¶ 0015 and 0077). As such, we agree with the Examiner that applying the features of Broadbent towards the preparation of a DRO would have been obvious and do not find the Appellants’ arguments persuasive. The Appellants provide several arguments that a specific reference does not describe a specific feature that the Examiner has not relied on that reference to describe. For example, the Appellants argue that Fay fails to disclose “alternate payee” and “court information.” App. Br. 13-14. The Appellants are reminded that the rejection is based on the combination of the references and as such these arguments do not persuade us of error on part of the Examiner because these arguments are tantamount to attacking the references individually. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Appellants also contend that the Examiner erred in combining Broadbent, Fay, and Esposito. The Examiner's proposed combination is an example of impermissible hindsight. App. Br. 12-20. The Appellants argue that, while Broadbent shows a system capable of producing documents, one skilled in the art would not have the knowledge, without reading the Appellant's Specification, to make the modifications to Broadbent necessary to produce a court-compliant DRO for court submission. App. Br. 12-25. Here, we also disagree with the Appellants. It must be recognized that: Appeal 2010-000008 Application 10/729,517 7 Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As discussed supra, the specific structural elements, functions, and information was known at the time of the claimed invention and the Examiner has relied on these disclosures in rejecting the claims. The Appellants do not set forth any persuasive evidence or rationale that the Examiner has only relied on knowledge gleaned from the Appellants’ Specification. As such, we do not find this argument to be persuasive. The Appellants further contend that Esposito teaches away from the claimed invention because Esposito describes submission via email, whereas the claimed invention requires the DROs are printed and submitted to the proper court. App. Br. 14. We disagree with the Appellants. The claims do not recite printing DROs. As such the Appellants’ argument is not commensurate with the scope of the claimed invention. Furthermore, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations and quotations omitted). A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage Appeal 2010-000008 Application 10/729,517 8 investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Even assuming, arguendo, that the claims require the submission of a printed DRO, the Appellants have not provided any evidence that Esposito discredits or discourages the submission of a DRO in print. Because the Appellants’ argument is not commensurate with the scope of the claimed invention and have not provided any evidence or rationale that Esposito discourages or discredits this feature, we do not find this argument persuasive. The Appellants additionally contend that there is no motivation to combine the references. App. Br. 24-25. We disagree with the Appellants. The Examiner found that Broadbent, Fay, and Esposito disclose features that are directed to analogous art and they are directed to the same field of endeavor in database management systems such as: authorization, results creation based on received information, compliance rules for documents, and employee benefit plans. Ans. 4-5. As such, Broadbent, Fay, and Esposito are concerned with the same problem and a person with ordinary skill in the art would have been led to rely on their teachings. Furthermore, the Appellants have failed to provide any rationale or evidence to illustrate why combining Fay’s DRO information and Esposito’s court information with Broadbent’s document producing system, as discussed supra, would not yield predicable results. As such, we are not persuaded by the Appellants' contention that a person with ordinary skill in the art would not have combined the prior art. Appeal 2010-000008 Application 10/729,517 9 35 U.S.C. § 103(a) – Broadbent, Fay, Esposito, and Cohen Claim 27 The Appellants contend that the Examiner erred in rejecting claim 27 for the same reasons as claims 1, 13, and 26 and Cohen does not cure the deficiencies of Broadbent, Fay, and Esposito. App. Br. 17-18. We disagree with the Appellants. The Appellants arguments, for the same reasons stated supra, are not persuasive. CONCLUSIONS The Examiner did not err in rejecting claims 1-3, 5-24, 26, and 28-31 under 35 U.S.C. § 103(a) as unpatentable over Broadbent, Fay, and Esposito. The Examiner did not err in rejecting claim 27 under 35 U.S.C. § 103(a) as unpatentable over Broadbent, Fay, Esposito, and Cohen. DECISION The Examiner’s rejection of claims 1-3, 5-24 and 26-31 is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED ELD