Ex Parte Kovalev

Patent Trial and Appeal Board

Aug 30, 2017

13365530 (P.T.A.B. Aug. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/365,530 02/03/2012 Alexey Yevgenyevich KOVALEV Kovalev-l-2012 1049
7590
Aleksandr Smushkovich
POB 140505
Brooklyn, NY 11214
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
08/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXEY YEVGENYEVICH KOVALEV
Appeal 2016-004202
Application 13/365,530
Technology Center 3600
Before HUNG H. BUI, KARA L. SZPONDOWSKI, and
AARON W. MOORE, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 2, the only claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-004202
Application 13/365,530
STATEMENT OF THE CASE
Appellant’s invention is directed to a system and method for multi­
dimensional accounting of business transactions. Spec. 112. Claims 1 and
2 are reproduced below:
1. At least one non-transitory computer readable medium being a
component of a programmable computer, said computer implements a
data structure arranged on said readable medium, said data structure
comprising:
- an integrated economic event data sheet (EEDS) for registering
changes of data occurred as a result of a business transaction,
wherein:
said business transaction includes: a transaction number; either
(a) one object and two subjects, or (b) two objects and one
subject; units of measure (UOM); and a value;
said business transaction is defined in two states within said
EEDS; said two states consist of a first state and a second state
recorded in the EEDS in two rows: a first row and a second row
respectively;
said EEDS is represented by a table including the following
economic event attributes:
— Transaction Number for recording said transaction
number of the business transaction in the first row and in
the second row with an identical numeric value;
— Moment in Time (MIT) for recording a date and / or
time of the business transaction, the MIT attribute is
characterized with a value called MIT value;
— Transaction Object for recording said one object or said
two objects of the business transaction, the Transaction
Object attribute is characterized with a value called
Transaction Object value; wherein, for each said
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Transaction Number: either (al) said one object is
indicated in the first row and in the second row; or (a2) a
first object of said two objects is indicated in the first row,
and a second object of said two objects is indicated in the
second row;
— Transaction Subject for recording said one subject or
said two subjects of the business transaction, the
Transaction Subject attribute is characterized with a value
called Transaction Subject value; wherein, for each said
Transaction Number: either (bl) said one subject is
indicated in the first row and in the second row; or (b2) a
first subject of said two subjects is indicated in the first
row, and a second subject of said two subjects is indicated
in the second row;
— Unit of Measure (UOM) of the business transaction, the
UOM attribute is characterized with a value called UOM
value;
and
— Value for recording said value of the business
transaction, wherein, for each said Transaction Number,
the Value attribute assumes a negative value in said first
row, and a positive value in said second row; wherein said
negative value and said positive value have an equal
modulus;
- a number of dimensional tables each associated with one
of said economic event attributes; and wherein:
said first state precedes the business transaction and completes
as a result of the business transaction; and said second state
results from the business transaction.
2. A method for producing an accounting balance sheet of a
business entity; said accounting balance sheet is characterized by a
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balance equation, said business entity defines agents, owners, and
financial results; said method comprising the steps of:
- providing a non-transitory computer readable medium being a
component of a programmable computer; said computer
implements calculations with said agents, said owners, and said
financial results; said computer implements a data structure
arranged on said readable medium, said data structure includes
an integrated economic event data sheet (EEDS) for registering
changes of data occurred as a result of a business transaction;
wherein:
said business transaction includes a transaction number; either
(a) one object and two subjects, or (b) two objects and one
subject; units of measure; and a value; said EEDS is represented
by a table including the following economic event attributes of:
— Transaction Number for recording said transaction
number of the business transaction in a first row and in a
second row of said EEDS with an identical numeric value;
— Moment in Time (MIT) for recording a date and / or
time of the business transaction, the MIT attribute is
characterized with a value called MIT value;
— Transaction Object for recording said one object or said
two objects of the business transaction, the Transaction
Object attribute is characterized with a value called
Transaction Object value; wherein, for each said
Transaction Number: either (al) said one object is
indicated in the first row and in the second row; or (a2) a
first object of said two objects is indicated in the first row,
and a second object of said two objects is indicated in the
second row;
— Unit of Measure (UOM) for recording said units of
measure of the business transaction, the UOM attribute is
characterized with a value called UOM value;
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Application 13/365,530
— Value for recording said value of the business
transaction, wherein, for each said Transaction Number,
the Value attribute assumes a negative value in said first
row, and a positive value in said second row; wherein said
negative value and said positive value have an equal
modulus;
and
— Transaction Subject for recording said one subject or
said two subjects of the business transaction, the
Transaction Subject attribute is characterized with a value
called Transaction Subject value; wherein, for each said
Transaction Number: either (bl) said one subject is
indicated in the first row and in the second row; or (b2) a
first subject of said two subjects is indicated in the first
row, and a second subject of said two subjects is indicated
in the second row;
- assigning one corresponding said value or two corresponding said
values respectively to either the first row or the second row to said
Transaction Subject; and
- establishing a subdivision of the Accounting Area attribute, wherein
said subdivision forms two parts of said balance equation.
REJECTIONS
Claims 1 and 2 stand rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Gelerman (US 2010/0030673 Al;
published Feb. 4, 2010), Meldahl (US 2003/0033225 Al; published Feb. 13,
2003), Hudgeon et al. (US 2007/0276710 Al; published Nov. 29, 2007)
(“Hudgeon”), and Williams (US 5,960,415; issued Sept. 28, 1999).
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ANALYSIS
35 U.S.C. § 101 Rejection
Issue 1: Did the Examiner err in concluding claims 1 and 2 are
directed to non-statutory subject matter?
With respect to claim 1 and, similarly, method claim 2, the Examiner
finds these claims are directed to an abstract idea of an economic event data
sheet that registers a result of a business transaction, a fundamental
economic practice. Ans. 4; Final Act. 8. The Examiner also finds the
additional elements recited in the claims do not amount to significantly more
than the abstract idea itself. Ans. 4. According to the Examiner, using a
programmable computer to implement the abstract idea does not transform
the abstract idea into patent eligible subject matter. Ans. 4; Final Act. 8.
Further, the Examiner finds the claims are “conceptually no different from a
list of steps written down with pencil and paper for execution by a human
being.” Ans. 4.
Appellant argues “Claim 1 qualifies ‘as a manufacture’ (i.e. [,] a
statutory subject matter — see MPEP [§] 2106 above) and should be
recognized as a ‘patent-eligible subject matter’.” App. Br. 14; see also id.
at 15 (“Claim 1 is not factually directed to fundamental economic
process(esf, but instead is directed to a manufacture . . .”). Appellant also
argues the Examiner’s findings and conclusions are without evidentiary
support and has failed to show that certain limitations constitute a
fundamental economic practice. Id. at 18. In addition, with regard to claim
2, Appellant argues the computer is a “special purpose computer
programmed so that its physical storage (each known computer includes a
physical storage for electronic data) is specifically structured to form a
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database including a table called ‘EEDS’, which functions, for example, for
registering changes of data . . . App. Br. 21; see also App. Br. 22.
We are not persuaded by Appellant’s arguments. The Supreme Court
has held that “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013) (internal quotation marks omitted)). The
“abstract ideas” category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court set forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75—77 (2012)). The first step in the analysis is to
“determine whether the claims at issue are directed to one of those patent-
ineligible concepts,” such as an abstract idea. Id. If the claims are directed
to a patent-ineligible concept, the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second step is to “search for an ‘inventive
concept’ z'.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting
Mayo, 566 U.S. at 1294).
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Although Appellant states “[supposedly, the 35 U.S.C. [§] 101
rejection could be reversed due to the recent U.S. Supreme Court case of
Alice” (App. Br. 16 (emphasis added); see also App. Br. 22), Appellant does
not persuasively rebut the Examiner’s findings to either step of the Alice test.
We agree with the Examiner that claims 1 and 2 are directed to the abstract
idea of an economic event data sheet that registers a result of a business
transaction, which is a fundamental economic practice. See, e.g., Alice, 134
S. Ct. at 2357; Bilski v. Kappos, 130 S. Ct. 3218, 3229-31 (2010).
Moreover, the limitations recited by the asserted claims-—a data structure for
storing information regarding the result of a business transaction:—could be
performed by humans without a computer. Cf CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[Cjomputational
methods which can be performed enti rely in the human mind are the types of
methods that embody the ‘basic tools of scientific and technological work’
that are free to all men and reserved exclusively to none”) (emphasis
omitted) (quoting Gottschalk, 409 U.S. at 67).
Because the claims are directed to an abstract idea under Alice’s step
1, they must include an “inventive concept” under Alice’s step 2 in order to
be patent-eligible. No such inventive concept is present here. See Alice, 134
S. Ct. at 2359 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept). Instead, the claims “add” only generic computer components such
as a “programmable computer,” “data structure,” and “table.” See, e.g.,
Spec. If 12 (“[t]he basis of [the multidimensional accounting method] is an
economic event data sheet arranged in accordance with the classical
multidimensional approach of data organization . . . applying known
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multidimensional data processing tools such as OLAP (On-Line
Processing)”); *[[13 (“[t]he resultant structure corresponds to classical data
sheet structures of a multidimensional information model”); ®jj 26 (“[t]he
accounting functions are carried out through standard tools of the
multidimensional data processing (OLAP)”); ®f[ 54 (“[Multidimensional
accounting method] has a typical multidimensional data structure that can be
implemented in a relational database in the form of relational tables”).
These generic computer components do not satisfy the inventive concept
requirement. “[AJfrer Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible. The bare fact that a computer exists in the physical rather
than purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
Further, nothing in the asserted claims “purports] to improve the
functioning of the computer itself’ or “effect an improvement in any other
technology or technical field.” Alice, 134 S. Ct. at 2359. Nor do the claims
solve a problem unique to the Internet. See DDR Holdings, 773 F.3d at
1257. The claims, when viewed as whole, are directed to nothing more than
performing conventional processing functions that courts have routinely
found insignificant to transform an abstract idea into a patent-eligible
invention. As such, the claims amount to nothing significantly more than an
instruction to implement the abstract idea on a generic computer, which is
not enough to transform an abstract idea into a patent-eligible invention. See
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Alice, 134 S. Ct. at 2360. Therefore, we sustain the Examiner’s rejection
claims 11 and 2 under 35 U.S.C. § 101.
35 U.S.C. § 103(a) Rejection
Issue 2: Did the Examiner err in finding the combination of
Gelerman, Meldahl, bludgeon, and Williams teaches or suggests “an
integrated economic event data sheet (IT'.l)S) for registering changes of data
occurred as a result of a business transaction,” as recited in independent
1?
Appellant argues that in Gelerman “business transactions are
registered in separate journals . . . WHEREAS, according to the instant
appl ication, all business transactions are registered in one integrated
economic event data sheet (BEDS).” App, Br. 23.
Appellant’s argument is not persuasive because it is not
commensurate with the scope of the claim language. Claim 1 does not
1 Alternatively, we further note that the data structure recited in Appellant’s
claim 1 can also be rejected under the “printed matter” doctrine. See In re
Miller, 418 F.2d 1392 (CCPA 1969) (holding that claims directed to a mere
arrangement of printed matter are patent-ineligible under § 101); and In re
Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) and In re Ngai, 367 F.3d
1336 (Fed. Cir. 2004) (holding that claims directed to conveying data or
meaning to a human reader rather than establishing a functional relationship
between recorded data and a computer system are patent-ineligible under §
101). Moreover, the data structure of Appellant’s claim 1 contain purely
non-functional descriptive material that is not entitled to weight in the
patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90
(BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
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require that “all” business transactions are registered in the EEDS.
Moreover, we note that an “integrated economic event data sheet” is not
explicitly defined in the Specification, nor has Appellant offered a proposed
construction in the Appeal Brief. According to the claim language, the
“integrated economic event data sheet” is “for registering changes of data
occurred as a result of a business transaction” and “is represented by a table
including the following economic event attributes . . . See claim l.2
Gelerman describes the use of journals, where each journal typically has one
main company, and entry of detail lines in the journal, including account,
debit, and credit information. See, e.g., 95—97, 101—11; Fig. 4. Appellant
has not persuasively explained why Gelerman’s journals, as relied upon by
the Examiner (see Final Act. 9-10), and in combination with Meldahl,
Hudgeon, and Williams, as also relied upon by the Examiner to teach or
suggest limitations pertaining to the EEDS (see Final Act. 11—13), do not
teach or suggest an integrated economic event data sheet, as recited in claim
1.
Issue 3: Did the Examiner err in finding the combination of
Gelerman, Meldahl, Hudgeon, and Williams teaches or suggests a
“Transaction Object for recording said one object or said two objects of the
business transaction, the Transaction Object attribute is characterized with a
value called Transaction Object value” (“Transaction Object limitation”),
and “Transaction Subject for recording said one subject or said two subjects
2 Dictionary.com defines “integrated” as “combining or coordinating
separate elements so as to provide a harmonious, interrelated whole.”
Dictionary.com, http://www.dictionary.com/browse/integrated (last accessed
August 10, 2017).
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of the business transaction, the Transaction Subject attribute is characterized
with a value called Transaction Subject value,, (“Transaction Subject
limitation”), as recited in independent claim 1?
Appellant argues “GL registers events in accounts, VERSUS
registering a concrete instance of Transaction Object in the EEDS of the
instant application,” App. Br, 23, Appellant further argues “Transaction
Subject and Transaction Object records are placed in separate cells of the
EEDS, which corresponds to First Normal Form (INF) of the Edgar F.
Codd’s relational model.” Id. at 24. According to Appellant, “Gelerman’s
accounts and their modifications don’t comply with INF, since Gelerman’s
account contemplates several atomic values. . . .” Id. (emphasis omitted).
Appellant further argues Gelerman and Meldahl “envisage the same object
in one table row, and in two different columns (debit and credit) that adds
even more non-compliance with INF” Id.
We are not persuaded by Appellant’s arguments because they are not
commensurate with the scope of the claim language. For example, the claim
does not recite, nor require, compliance with INF. Appellant acknowledges
that the Specification does not refer to compliance with INF. App. Br. 11.3
We decline to read limitations into the claims that are not even discussed in
3 Appellant argues “compliance of the present invention with INF should be
clear to a skilled artisan by virtue of limitations recited in Claim 1” and also
argues “Applicant can rely upon prior art publications concerning the Edgar
F. Codd’s relational model (such as the internet links indicated herein
above).” App. Br. 11 (emphasis omitted). The referenced Internet links
have not been properly identified in an Appeal Brief, Evidence Appendix as
evidence submitted by Appellant that has been entered and made of record
by the Examiner and that is being relied upon as evidence by Appellant in
the Appeal. The Board has no duty to search for such evidence.
Accordingly, we do not consider the referenced Internet links.
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nation. Nor does the claim require that the
and Transaction object be placed in separate cells.4 The Examiner relies on
the account of Gelennan to teach or suggest the Transaction Subject
limitation, and the credit and debit of Gelerman to teach or suggest the
Transaction Object limitation. See Final Act. 5—6 (citing Gelennan Iff 102,
106). Appellant does not persuasively explain why the Examiner’s findings
are m error.
Issue 4: Did the Examiner err in finding the combination of
Gelennan, Meldahl, Hudgeon, and Williams teaches or suggests “Unit of
Measure (UOM) of the business transaction , the UOM attribute is
characterized with a value called UOM value,” as recited in independent
claim 1 ?
Appellant argues “the present invention uses two different rows for
recording a business transaction, WHEREAS Gelerman uses two different
columns of one row for recording debit and credit. . . App. Br. 24.
Appellant’s argument is not persuasive because it is not responsive the
Examiner’s rejection. The Examiner relies on Hudgeon, not Gelerman, to
teach or suggest using two different rows for recording a business
transaction. See Final Act. 11—12; Ans. 6—7.
Issue 5: Did the Examiner err in finding the combination of
Gelerman, Meldahl, Hudgeon, and Williams teaches or suggests “Value for
recording said value of the business transaction, wherein, for each said
4 However, as the Examiner points out, both Hudgeon and Meldahl teach the
concept of storing data in cells. Ans. 5.
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Transaction Number, the Value attribute assumes a negative value in said
first row, and a positive value in said second row; wherein said negative
value and said positive value have an equal modulus,” as recited in
independent claim 1 ?
Appellant argues the Examiner’s reliance on Gelerman is incorrect,
because, “according to the present invention, not only the total amounts’
values have equal modulus, but also corresponding values in two rows of
one business transaction have equal modulus.” App. Br. 24. Appellant
further argues “Williams does not consider separate transactions, but deals
with a result (sum) of business transactions accumulated for a period of
time.'’' Id. at 29.
Appellant’s arguments are not persuasive because Appellant argues
the references individually, rather than in combination as relied upon by the
Examiner. Nonobviousness “cannot be established by attacking references
individually” when the rejection is predicated upon a combination of prior
art disclosures. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (internal citation omitted). The Examiner relies on the combination of
Gelerman, Williams, and Hudgeon to teach or suggest the disputed
limitation. Final Act, 9—13; Ans. 7—8, 12—13. Appellant has not
persuasively rebutted the Examiner’s findings.
Issue 6: Did the Examiner err in finding the combination of
Gelerman, Meldahl, Hudgeon, and Williams teaches or suggests “either (a)
one object and two subjects, or (b) two objects and one subject” and
“wherein, for each said Transaction Number: either (al) said one object is
indicated in the first row and in the second row; or (a2) a first object of said
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two objects is indicated in the first row, and a second object of said two
objects is indicated in the second row,” and “wherein, for each said
Transaction Number: either (bl) said one subject is indicated in the first row
and in the second row; or (b2) a first subject of said two subjects is indicated
in the first row, and a second subject of said two subjects is indicated in the
second row,” as recited in independent claim 1?
Appellant argues “Meldahl’s table does not comply with INF . ..
App. Br. 25. Appellant further argues “Meldahl doesn’t disclose how to
implement this method . . . detail operation of its Dimensional Transformer .
. . [or] the structure of record of its "fact’ table . . . Id. (emphasis omitted)
According to Appellant, “the present invention envisages that an Object is
uniquely related to the Object table, as well as a Subject is uniquely
related to a Subject table, which enables using standard means of data
processing, such as OLAP.” Id. at 26.
With respect to Hudgeon, Appellant argues “several rows (one, or
two, or three, etc.) of the table relate to one job performed by a certain
service provider.” Id. Appellant further argues “Table 200 has several rows
having a common transaction number . . . but not having a common sum,
wherein some of them are positive, others are negative.” Id. Appellant
further argues “the number of rows varies from one transaction to another.”
Id. at. 27 (emphasis omitted).
Appellant’s arguments are again not persuasive because Appellant
argues l imitations not commensurate with the scope of the claim language.
The claim does not require that an Object is uniquely related to the Object
table and a Subject is uniquely related to a Subject table. Moreover, as
discussed above, the claim does not require compliance with INF. Further,
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Meldahl’s disclosure is not required to be enabling to qualify as prior art
under § 103(a). See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569,
1578 (Fed. Cir. 1991). Additionally, Appellant again argues the references
individually, rather in combination as relied upon by the Examiner.
Although Appellant admits that bludgeon teaches several rows having a
common transaction number (App. Br. 26), Appellant’s argument veers into
the “Value” limitation, as discussed above with respect to Issue 4, where the
Examiner relies not on bludgeon alone, but in combination with Gelerman
and Williams. We agree with the Examiner that Hudgeon teaches a first row
and a second row in which Transaction Number 1 is one object indicated in
the first and second row, in accordance with the disputed limitation. See
Ans. 7, 10. Appellant has not persuasively rebutted the Examiner’s findings.
Issue 7: Did the Examiner err in combining Gelerman, Meldahl,
Hudgeon, and Williams?
With respect to the combination of Gelerman, Meldahl, and Hudgeon,
the Examiner finds:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify the teachings of
Ge[]lerman and Meldahl to include the features of Hudgeon and
as taught above, for the purpose of combining prior art elements
according to known methods to yield predictable results. One of
ordinary skill in the art would have been motivated to combine the
teachings in order to provide for calculated differential data (see
[0130]).
Final Act. 12. In addition, the Examiner states “Hudgeon is found to be a
teaching reference that one of ordinary skill in the art would have been able
to predictably modify to Ge[]lerman and Meldahl with reasonable] success
as all references relate to economic event data within sheets.” Ans. 11.
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Appellant argues “Hudgeon’s ‘differential data’ essentially DIFFER
from actual transaction data used in the present invention. Thusly,
combining the ‘differential data’ of Hudgeon with teachings of Gelerman
and Meldahl cannot possibly yield ‘predictable results’. . . .” App. Br. 28
(emphasis omitted).
Appellant has not provided persuasive evidence or explanation
showing the Examiner’s asserted combination is anything other than a
combination of familiar elements yielding no more than predictable results.
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). We do not
agree with Appellant that it would not have been obvious to modify
Gelerman and Meldahl to include a business transaction recorded in two
rows, as taught by Hudgeon.
With respect to the combination of Gelerman, Meldahl, Hudgeon, and
Williams, the Examiner states “the placement of rows would have been
known to those of ordinary skill in the art under KSR rational ‘Obvious to
Try.’” Final Act. 12 (emphasis omitted). The Examiner further finds,
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify the teachings of
Ge[]lerman and Meldahl and [Hudgeon] to include the features
of Williams as taught above, for the purpose of combining prior
art elements according to known methods to yield predictable
results. One of ordinary skill in the art would have been
motivated to combine the teachings in order to provide process
the data and provide reports in computerized spreadsheets (see,
col. 1, lines 5-12).
Id. at 12—13.
Appellant argues “Williams does not envisage changing the list of
items, which would require an alteration of the whole system of journals and
formulas that connect the journals . . . Williams’ ‘placement of rows’ is
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completely DIFFERENT from the one contemplated by the present
invention.” App. Br. 30 (emphasis omitted). Appellant further argues the
Examiner has not properly established the “obvious to try” rationale. Id. at
30-31.
Appellant’s arguments are not persuasive. As described above, the
Examiner relies on Hudgeon to teach or suggest two rows for a first state
and a second state of a business transaction. Final Act. 7, 10, 11; Ans. 7, 10.
In addition, the Examiner relies on Williams to teach or suggest “the value
attribute assumes a negative value in said first row, and a positive value in
said second row; wherein said negative value and said positive value have an
equal modulus.” Final Act. 11—12; Ans. 12. As combined with Hudgeon,
the Examiner further interprets the debit in Williams as a first state and the
credit in Williams as the second state. Final Act. 12; Ans. 12. Appellant’s
arguments regarding Williams do not address the combination as relied upon
by the Examiner. The Examiner’s “obvious to try” rationale is based upon
the placement of the rows, specifically, which row the negative value is
placed, and which row the positive value is placed. Final Act. 12; Ans. 12.
In other words, there are two finite solutions to this problem — the negative
value is placed in the first row and the positive value is placed in the second
row, or the positive value is placed in the first row and the negative value is
placed in the second row. Appellant’s arguments do not apprise us of error
in the Examiner’s findings.
Appellant also argues “the Examiner is combining four different
references to piece together the claimed invention.” Which “stretches the
definition of obviousness beyond a reasonable limit to combine four
different references.” App. Br. 32 (emphasis omitted). It is well settled that
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the number of references required to show obviousness does not, by itself,
demonstrate that the claimed subject matter would have been unobvious to
an ordinary artisan. See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)
(affirming obviousness rejection over thirteen references) (“The criterion . . .
is not the number of references, but what they would have meant to a person
of ordinary skill in the field of the invention”).
Issue 8: Did the Examiner err in finding the combination of
Gelerman, Meldahl, Hudgeon, and Williams teaches or suggests the
limitations in claim 2?
Appellant argues Gelerman does not comply with INF. App. Br. 33.
Appellant also provides several arguments as to why Gelerman does not
teach or suggest the limitation “an Accounting Area attribute assuming one
of two possible values” and a step of “establishing a subdivision of the
Accounting Area attribute, wherein said subdivision forms two parts of said
balance equation.” Id. (emphasis omitted).
We are not persuaded by Appellant’s arguments. For the same
reasons as set forth above with respect to Issue 2, we decline to import
limitations regarding INF compliance into claim 2. Further, the argued
limitation “an Accounting Area attribute assuming one of two possible
values” does not appear as a limitation in claim 2, as submitted in
Appellant’s Claim Appendix.
In addition, with regard to several limitations, Appellant argues
“Gelerman does not teach, suggest, or motivate modifying its teaching to
produce features corresponding to the above limitations recited in Claim 2,”
where such limitations essentially repeat those argued above with respect to
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claim 1. App. Br. 34. Therefore, for same reasons as set forth above with
respect to Issues 2—8, we are not persuaded the Examiner erred.
DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 2
under 35 U.S.C. § 101 is affirmed.
For the above reasons, the Examiner’s rejection of claims 1 and 2
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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