Ex Parte Marr et al

Board of Patent Appeals and Interferences

Feb 3, 2009

10702283 (B.P.A.I. Feb. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY WILLIAM MARR, JANE BARBARA NOWAK,
and LEONID VOLOZHANIN
____________

Appeal 2008-3369
Application 10/702,2831
Technology Center 2100
____________

Decided:2 February 3, 2009
____________

Before LEE E. BARRETT, JAY P. LUCAS, and CAROLYN D. THOMAS,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 6, 2003. The real party in interest is BellSouth
Intellectual Property Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-3369
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-20 mailed October 13, 2006, which are all the claims remaining
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants invented a system, method, and computer readable
medium for loading data into databases using a macro. (Spec., ¶[0003].)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-20. Claims 1, 11, and 16 are
independent claims. Claim 1 is illustrative:
1. A method of loading data into a user database, the
method comprising:
determining that a task schedule has been satisfied;
opening an application database and a user database
using a batch process based on the determination that the task
schedule has been satisfied;
loading data from an external data source into the user
database using a macro that is initiated by the batch process; and
quitting the user database using the same macro as was
used to load data from the external data source into the user database.

C. REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
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Posting of Cymbolic, How to transfer text [Fix width] by using
Macro, to http://www.experts-
exchange.com/Database/MS_Access/Q_10028858.html (Nov. 14, 1997,
6:25 AM PST) (hereinafter “Transfer Text”)

Robert Cowart et al., Special Edition Using Microsoft Windows 2000
Professional (Que Publishing, Feb. 2000) (hereinafter “Cowart”)

Microsoft Corp., ACC2000: How to Start Access by Using the
Windows NT Schedule Service, posted at the Microsoft
product support web site (Nov. 2000), available at:
http://web.archive.org/web/20021225175118/http://support.microsoft.com/?
kbid=230575 (hereinafter “Schedule Service”)

Microsoft Corp., ACC2000: How to Use the Quit Method to Quit
Access from Another Program, posted at the Microsoft
product support web site (Sept. 2002), available at:
http://web.archive.org/web/20021225183449/http://support.microsoft.com/?
kbid=210518 (hereinafter “Quit Method”)

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-3 and 5-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over “Schedule Service” in view of “Transfer Text” and
further in view of “Quit Method.”
(2) Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over “Schedule Service” in view of “Transfer Text” and “Quit Method” and
further in view of Cowart.

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II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed an Appeal
Brief (App. Br.) on April 16, 2007. The Examiner mailed an Examiner’s
Answer (Ans.) on July 18, 2007. Appellants filed a Reply Brief (Reply Br.)
on September 14, 2007.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Schedule Service
1. “Schedule Service” discloses how to start Microsoft Access by
using the Microsoft Windows NT scheduling service whereby one must
create a batch file (page 1).
2. “Schedule Service” discloses opening a Northwind.mdb database
(the user database), creating a macro (e.g., Macro1), saving the macro,
closing the database, and using a Task Scheduler to execute a batch process
(e.g., MyTest.bat) that initiates the macro (page 1-2).

Transfer Text
3. “Transfer Text” discloses a macro that runs a module that has
import commands in it for loading data into a database (page 4).

Quit Method
4. “Quit Method” discloses a sub procedure for closing Microsoft
Access from Microsoft Excel (page 1-2).
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IV. PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief has not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

V. ANALYSIS
Grouping of Claims
In the Brief, Appellants essentially argue claims 1-20 as a group (App.
Br. 6-7). For claims 2-20, Appellants repeat the same argument made for
claim 1. We will, therefore, treat claims 2-20 as standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d
588, 590 (Fed. Cir. 1991).
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The Obviousness Rejection
We now consider the Examiner’s rejection of claims 1-20 under
35 U.S.C. § 103(a) as being obvious over the combination of “Schedule
Service”, “Transfer Text”, and “Quit Method.” No separate arguments are
presented regarding the Cowart reference.

Missing Limitation
Appellants contend that “if kbid=210518 [Quit Method] is combined
with kbid=230575 [Schedule Service] and Transfer Text, they would not
provide at least the recitation in Claim 1 that the batch process initiates a
macro to load data from an external data source into a user database, and
then the same macro is then used to quit the user database” (App. Br. 6).
Appellants further contend that “nowhere does Quit Method describe how
the same macro that loads data from an external database into a user
database can then be used to close the user database” (Reply Br. 4).
The Examiner found that the Quit Method reference “teach additional
macro code . . . that quits Microsoft Access (the application database . . .),
which, in turn, would also quit/close the Northwind.mdb (user database
. . .)” (Ans. 14).
Issue: Have Appellants shown that the Examiner erred in finding that
the combination of cited references teach or suggest “quitting the user
database using the same macro as was used to load data from the external
data source into the user database” as set forth in claim 1?
As found by the Examiner and endorsed by us, the “Schedule Service”
reference discloses a batch process that executes Microsoft Access, opens a
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database, and executes a macro (FF 1-2). The reference “Transfer Text”
discloses macro code that loads data into a database (FF 3). The reference
“Quit Method” discloses macro code that is capable of quitting Microsoft
Access (FF 4). The Examiner concluded that it would have been obvious to
append the macro code to quit the application/user database of “Quit
Method” into the macro code of “Transfer Text” or the Macro1 code (Ans.
14) to yield a macro that would both load data from the external data source
and quit the user database. We agree.
Furthermore, Appellants do not allege they have invented a new type
of macro, nor have they demonstrated any architecture that would be
unexpected to the artisan in its use. A person having ordinary skill in the art
uses known elements for their intended purpose. Anderson’s-Black Rock,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used
for its intended purpose in combination with a spreader and a tamper and
screed). “[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR, 127 S. Ct. at 1740 (quoting Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976)).
Similarly, here we find the combination of known elements for their
intended use, i.e., combining macro code for quitting an application and
macro code for loading a database. Therefore, we find that the Appellants
have failed to show error in the Examiner’s rejection.

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No Motivation to Combine
Appellants contend that “there is no clear and particular evidence of
motivation or suggestion in Transfer Text as to why one would modify the
teachings of Transfer Text, for transferring data between databases, to
include the macro taught by kbid=210518 [Quit Method] within a Microsoft
Excel database” (App. Br. 6). Appellants further contend that the “reasoning
employed by the Final Action for the combination appears to be employing
hindsight (by supposing that one would recognize ‘advantages’ which are
not suggested by any of the cited references) which is forbidden by the case
law under Section 103’” (Id. at 7).
Issue: Have Appellants shown that the Examiner erred in combining
the cited art?
We respectfully point out that the reasoning given as support for the
conclusion of obviousness can be based on “interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art.” KSR, 127 S. Ct. at 1740-41.
We note that:
[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
“improvement” is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process
is universal-and even common-sensical-we have held that there exists
in these situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In such
situations, the proper question is whether the ordinary artisan
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possesses knowledge and skills rendering him capable of combining
the prior art references.

Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed.
Cir. 2006). See also Leapfrog Enters., Inc. v. Fisher-Price Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (holding it “obvious to combine the Bevan
device with the SSR to update it using modern electronic components in
order to gain the commonly understood benefits of such adaptation, such as
decreased size, increased reliability, simplified operation, and reduced
cost.”)
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 127 S. Ct. at 1741 (quoting In re Kahn, 441 F.3d at 988); see also
DyStar, 464 F.3d at 1361 (“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969) (“Having established that this knowledge was in the art, the examiner
could then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.”’); In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t
is proper to take into account not only specific teachings of the references
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but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom”) (internal citation omitted).
In this case, we find that the Examiner has articulated a proper
reasoning for combining the various teachings showing macro code being
used for various purposes, i.e., resources conserved by freeing memory
(Ans. 14-15), with some rational underpinning to support the legal
conclusion of obviousness. Our case law has mandated that it is not required
that such a reason/motivation be specifically spelled out in the references
themselves. Furthermore, we find that it is common knowledge within the
programming arts that when a file is being modified first one must open the
file, take some type of action on the file, then quit the file, rather than leave
it dangling. As such, the level of skill in the art dictates that any
programming, including providing a macro, involves opening, performing an
action, and quitting a file when done.
Moreover, Appellants do not allege they have invented a new type of
macro, nor demonstrated any architecture that would be unexpected to the
artisan in its use. A person having ordinary skill in the art uses known
elements for their intended purpose. Anderson’s-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57 (1969) (radiant-heat burner used for its
intended purpose in combination with a spreader and a tamper and screed).
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. at 1740.
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Therefore, we find that the Appellants have failed to show error in the
Examiner’s rejection. Therefore, we affirm the rejection of claim 1 and of
claims 2-20, which fall therewith.

VI. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-20.
Thus, claims 1-20 are not patentable.

VII. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

msc

DAVID K. PURKS
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH NC 27627