Ex Parte Brooks

Board of Patent Appeals and Interferences

May 30, 2012

11465233 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENT F. BROOKS
____________

Appeal 2011-005839
Application 11/465,233
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). A telephonic hearing was held on May 9, 2012.
We REVERSE.
Claim 1 is illustrative:
1. A computer-implemented method, comprising:
Appeal 2011-005839
Application 11/465,233

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obtaining values of specified attributes of multiple
investments from selected data sources supporting investment
decision-making;
generating, responsive to specification of sets of
coordinate systems, a graphical framework including symbolic
representations of the multiple investments, each of the
symbolic representations being located and characterized within
the graphical framework based on the specification of the
coordinate systems and the attributes of respective ones of the
multiple investments, wherein the sets of coordinate systems
are defined so that similar areas within each individual
coordinate system of the sets of coordinate systems have similar
meaning across all coordinate systems that comprise the set;
and
presenting, in response to receipt of a user input,
the graphical framework by which the symbolic representations
of the multiple investments are displayed concurrently for
comparison with respect to one another within the coordinate
systems, wherein
obtaining the values and generating and presenting
the graphical framework are performed by a processor under
control of computer-executable instructions stored on a
computer-readable medium, said computer-executable
instructions specifying actions for: (i) defining each coordinate
system’s dimensional characteristics which control positions
and natures of the symbolic representations of the multiple
investments, and (ii) creating and positioning the symbolic
representations of the multiple investments within the graphical
framework as functions of dimensions of their attributes.

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Application 11/465,233

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Appellant appeals the following rejection:
1. Claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Damschroder
(US 7,472,084 B2, iss. Dec. 30, 2008) and Tobias (US 2006/0241949 A1,
pub. Oct. 26, 2006).

ANALYSIS
The Appellant argues that the Examiner has not explained why one
would make the combination of teachings of the references being relied on.
We agree.
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
In the instant case, the Examiner states that it would have been
obvious to combine the teachings of Damschroder and Tobias “since the
claimed invention is merely a combination of old elements, and in the
combination each element merely would have performed the same function
as it did separately, and one or ordinary skill in the art would have
recognized that the results of the combination were predictable.” Ans. 4 to
5. This reasoning of the Examiner is too conclusory to pass the Kahn test.
In addition, it is not clear from the statement of the rejection just how the
Examiner proposes to combine the teaching in Damschroder of vectors
representing various investments with the teaching in Tobias of individual
coordinate systems.
In view of the foregoing, we will not sustain the Examiner's rejection.
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Application 11/465,233

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DECISION
The decision of the Examiner is reversed.

ORDER
REVERSED

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