Ex Parte Kraffert

Board of Patent Appeals and Interferences

Feb 6, 2007

09776364 (B.P.A.I. Feb. 6, 2007)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK J. KRAFFERT
__________

Appeal No. 2006-1778
Application 09/776,364
Technology Center 2800
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Decided: February 6, 2007
__________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and JEAN R.
HOMERE1, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 For purposes of rendering this decision, Administrative Patent Judge
Homere has been substituted for Administrative Patent Judge Krass, who
retired subsequent to the original opinion. See In re Bose, 772 F.2d 866, 227
USPQ 1 (Fed. Cir. 1985).

Appeal No. 2006-1778
Application No. 09/776,364

This is a decision on request for rehearing.
In a paper received October 2, 2006, Appellant requests rehearing of
our Decision mailed on July 27, 2006 in this appeal affirming the
Examiner’s rejection of all claims on appeal under 35 U.S.C. § 103.2 Since
Appellant’s request bears a certificate of mailing of September 27, 2006, it is
considered to have been timely filed.
At the outset, we note that Appellant presents no arguments in the
Request for Rehearing relative to our affirmance of the Examiner’s rejection
of claims 1and 2 under 35 U.S.C. § 103, the so-called first stated rejection as
we labeled it in our prior Decision, over Slutz in view of Fujimori.
Appellant presents arguments only to what we have characterized as the
fourth and fifth stated rejections relying initially upon Gartner in view of
Fitting in the fourth stated rejection and, further in view of Walls as to the
fifth stated rejection. We have affirmed entirely the rejection set forth by the
Examiner as to these stated rejections, which encompass all claims on
appeal, claims 1 through 14, 17 through 21, and 23 through 32.
At the top of page 7 of our prior Decision, we agreed with the
Examiner’s reasons of for the obviousness of these claims as set forth in the
Answer and Supplemental Answer regarding the particular teachings,
showings and reasonings of combinability set forth by the Examiner,
initially at pages 8 through 11 of the Answer. We have reconsidered our
reasoning as to the affirmance of the fourth and fifth stated rejections, the
reasoning set forth in our prior Decision at pages 7 through 9 as to these
rejections and make no change in them. Likewise, in considering the

2 It is noted that the above noted panel has only recently received this
Request for Rehearing.
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Appeal No. 2006-1778
Application No. 09/776,364

Appellant’s Request for Rehearing, we have reconsidered the arguments as
to these corresponding rejections set forth at pages 16 through 20 of the
principal Brief on appeal together with the arguments in the Request for
Rehearing.
We note that the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of a
primary reference. It is also not that the claimed invention must be
expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 414, 425, 208 USPQ
871, 881 (CCPA 1981); In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991).
Once again, Appellant’s arguments in the Request for Rehearing
appear to focus upon the approach of combining structures rather than
combining the teachings and suggestions among the prior art relied upon as
the Examiner has done in the Answer and Supplemental Answer. Taken
from this perspective, we stated earlier and continue to believe that the
artisan would have seen a complementary nature to the broad teaching and
suggestibility of the references to Gartner and Fitting. Within 35 U.S.C.
§ 103, the artisan would not have “seen” only the specific
structures/database structures set forth, for example, in the paragraph
bridging pages 2 and 3 of the Request for Rehearing.
In our prior Decision, we essentially agreed with one of the
Appellant’s urgings that Gartner did not teach or suggest a plurality of
different test systems even though he plainly taught a system for a plurality
of users. Additionally, we did not question the Examiner’s statement at page
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Appeal No. 2006-1778
Application No. 09/776,364

9 of the Answer that Gartner did not specifically disclose combining first
and second parameters to form a filename. It was recognized by the
Examiner and even recognized by Appellant in the Brief and Request for
Rehearing that at the bottom of column 5, Gartner did teach a first value
relating to a filename and a second value relating to the name of the
server/database system. Figure 2 essentially shows this and column 5, lines
41-54 indicates that an external file reference is based upon the name of a
server and the name of a file. Although this comes close to the broadly
defined “based on” relationship at the end of independent claim 1 on appeal
as well as the combining and in concatenating features of the other
independent claims on appeal, we agree with the Examiner’s conclusion that
Fitting had more compelling teachings of this exact feature.
To the extent the artisan would not consider Gartner’s teachings as
being applicable implacable to plural test systems, the teaching value of
Fitting clearly would have caused the artisan to consider that the plural users
of Gartner obviously would have analogously encompassed the plural
systems of Fitting. It is remarkable how Appellant’s arguments in the Brief
and the Request for Rehearing appear to limit the teaching value of Fitting
such as to not even encompassed anything corresponding to what the
Examiner has said in the paragraph bridging pages 9 and 10 of the Answer,
with which we fully agreed in our previous Decision. As the Examiner
indicated at the bottom of page 10 of the Answer “Fitting does execute a
plurality of steps to combine the two parameters into a filename.”
Appellant asserted at the bottom of page 3 of the Request for
Rehearing with respect to independent claims 6, 14, 23, and 27 that we
overlooked Appellant’s arguments with respect to these claims and did not
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Appeal No. 2006-1778
Application No. 09/776,364

address them. Besides making reference to the Final Rejection in this
portion of the Request for Rehearing instead of the Answer, Appellant’s
arguments here take essentially the same approach as set forth at pages 19
and 20 of the principal Brief on appeal as to the same claims. We said at the
top of page 9 of our prior Decision that the arguments as to the fourth and
fifth stated rejections principally were directed to Gartner and the alleged
deficiencies of this reference (some of which we agreed with in our prior
Decision). Appellant’s arguments as to Fitting in the Request for Rehearing
appear to us to fail to consider the Examiner’s reasoning of combinability in
the Answer and our embellishments on them at pages 7 and 8 of the prior
Decision. Rather than misapprehending and overlooking points raised by
Appellant’s arguments in the Brief, we have simply not agreed with them.
In view of the foregoing, we have considered Appellant’s positions set
forth in the Request for Rehearing but do did not consider them to be
persuasive to change the views and decision expressed in our prior Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).
DENIED

tdl

Dan C. Hu
Trop, Pruner & Hu, P.C.
Suite 100
8554 Katy Freeway
Houston, TX 77024
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