Ex Parte Rozek et al

Board of Patent Appeals and Interferences

Jul 31, 2007

09748125 (B.P.A.I. Jul. 31, 2007)

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for publication and is not binding precedent of the Board.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 MATTHEW ROZEK and BART FULLER
__________

Appeal No. 2007-1235
Application No. 09/748,125
Technology Center 2100
__________

Decided1: July 31, 2007
__________

Before HUBERT C. LORIN, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from a decision of the Examiner rejecting claims
1-22. 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

1 An oral hearing was conducted on June 6, 2007.
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The invention is directed to a computer-implemented process (claims
1 and 18), electronic commerce system (claim 19), and computer program
product (claim 20) for translating documents received from trading partners
in one format into another compliance-validated format to be sent to other
trading partners. Specification, p. 5, ll. 9-24. The translation process
includes capturing translation errors in a tracking database. Specification, p.
5, ll. 24-25. The translation process also includes extracting data from the
document being translated for use as an identifier in the tracking database.
The identifier is saved in the database as an index for the error data.
Specification, p. 5, ll. 25-28.
The claims are rejected as follows:
• Claims 1-2, 6-7, and 11-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ricker ("XML and EDI- Peaceful Co-Existence," 3
March 2000, available from www.archive.org) and further in view of
Puckett (US 5,572,670).
• Claim 3 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Dysart (US 6,708,166), and
further in view of Casper (US 5,526,484).
• Claim 4 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker, Puckett, Dysart, and Casper, and further in view of Dowling (US
6,157,988).
• Claims 5 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Casper.
• Claim 8 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Rusterholz et al. (US 4,945,479).
• Claim 9 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Loebig (US 5,406,563).
• Claim 10 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker, Puckett, Loebig, and further in view of Casper.
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• Claims 21-22 are rejected under 35 U.S.C. §103(a) as being unpatentable
over Ricker and Puckett, and further in view of Yang (US 6,530,039).

We AFFIRM.
Appellants, in the Appeal Brief2, argue the claims in accordance with
the following groups:
• claims 1-10 and 13-20 (Appeal Br. 6-7);
• claims 11 and 12 (Appeal Br. 7); and,
• claims 21 and 22 (Appeal Br. 7-8).

Claims 1-2, 6-7, and 13-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ricker and further in view of Puckett.
Because Appellants argue claims 1-10 and 13-20 as a group, pursuant
to the rules, the Board selects representative claim 1 to decide the appeal
with respect to this rejection, and claims 2, 6-7, and 13-20 will stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2006). Claim 1 reads as follows:
1. A computer implemented process for tracking inbound
documents received from trading partners in a business-to-business
electronic commerce system, the process comprising the steps of:
(a) receiving an inbound document from a trading partner at a
translator;
(b) the translator checking compliance of the document for
translation from a source format to a desired target format;
(c) attempting translation of the document, and capturing error
data representing errors detected in the translation to a tracking
database; and

2 Our decision will make reference to Appellants’ Appeal Brief (“Appeal
Br.,” filed Jun. 26, 2006), the Examiner’s Answer (“Answer,” mailed Aug.
23, 2006), and to the Reply Brief (“Reply Br.,” filed Oct. 19, 2006).
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(d) extracting data from the received inbound document from
the trading partner and using it to provide an internal document
identifier, and saving the internal document identifier to the tracking
database as an index for the error data, said internal document
identifier correlated to the received inbound document from the
trading partner.
A. Issue
The issue is whether Appellants have shown that the Examiner erred
in holding the combination of Ricker’s computer-implemented e-business
process facilitating exchange of information between traders using different
formats through the translation of inbound documents from one format to
another with Puckett’s recording of errors in an error log database as part of
an error data translation system would have rendered the subject matter of
claim 1 obvious to one of ordinary skill in the art at the time of the
invention.
Appellants contend that Ricker and Puckett do not teach or disclose:
(1) “on attempting translation of the document, error data detected in
the translation are captured to a tracking database” (Appeal Br. 6) [i.e., step
(c) of claim 1], and
(2) “an internal document identifier is saved to the tracking database
that servers [sic, serves] as an index for the translation error data” (Appeal
Br. 6) [i.e., step (d) of claim 1]. Emphasis original.
The Examiner contends that Ricker and Puckett would have rendered
the subject matter of these steps obvious to one of ordinary skill in the art.
Answer 3-4.
The issue is whether Appellants have shown that the Examiner erred
in holding the combination of Ricker and Puckett would have rendered the
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subject matter of steps (c) and (d) of claim 1 obvious to one of ordinary skill
in the art at the time of the invention.

B. Findings of Fact
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The Examiner found that:
As per independent claim 1, Ricker discloses a computer
implemented process for tracking inbound documents received from
trading patterns [sic, partners] in a business-to-business electronic
commerce system, the process comprising:
·(a) Receiving an inbound document from a trading partner at a
translator (Figure 9)
·(b) The translator checking compliance of the document for
translation from a source format to a desired target format (Figure 9)
·(c) Attempting translation of the document and detecting errors
in the translation (page 8: Here, the translation is performed using an
X12 dictionary. The translation is then checked to ensure that the data
is complete and accurate).
Answer 3-4. Accordingly, the Examiner found that Ricker shows steps (a),
(b), and that part of step (c) which calls for “attempting translation of the
document.” Appellants did not traverse these findings by the Examiner.
Appeal Br. 6-7. Thus Ricker shows a computer implemented process
comprising the steps of (a) receiving an inbound document from a trading
partner at a translator; (b) the translator checking compliance of the
document for translation from a source format to a desired target format; and
(c) attempting translation of the document.
2. Appellants argued that “[t]he final office action [wrongly] states that
Ricker discloses [the] feature [of capturing error data detected in the
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translation to a tracking database] and cites figure 9 and page 8 of Ricker.”
Appeal Br. 6. However, we can find no indication in the record that the
Examiner found Ricker to show capturing error data. Instead, the Examiner
relied on Figure 9 of Ricker to show a translator receiving an inbound
document from a trading partner and translating it from a source format to a
compliant target format. Furthermore, the Examiner conceded that Ricker
“fails to specifically disclose … [c]apturing data errors to a database.”
Answer 4.
3. Rather than stating that Ricker discloses capturing error data, the
Examiner stated that Ricker’s “process of validating the document inherently
detects errors if the document is not ‛well-formed.’” Answer 14. Appellants
do not traverse this finding. Appeal Br. 6-7 and Reply Br. 1-2.
4. The Examiner found that
Puckett discloses:
• Capturing data errors to a database (column 2, lines 60-67).
Answer 4.
5. Appellants do not traverse the Examiner’s finding that Puckett teaches
capturing error data in a database. Appeal Br. 6-7.
6. Appellants dispute the relevance of Puckett, arguing that Puckett
relates to a translator that translates low level error data (for example,
binary records) stored in an error database to a more intelligible form
and correlates higher level queries to the lower level error data stored
in the error log database 168.. The error data stored in the error log
database is derived from system log files in a mass storage system.
See col. 2, lines 17-20 and col. 3, lines 4-12 of Puckett.
Appeal Br. 6. Puckett’s relevance is disputed on the grounds that “the error
processing in Puckett has nothing to do with the (1) claimed capturing of
translator error data in a tracking database that represents errors in inbound
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document which are detected in the translation process,” Appeal Br. 6.
Emphasis original. In other words, Appellants dispute the relevance of
Puckett on the grounds that, although Puckett captures errors to a database,
the captured errors are not, as in claim 1, translation errors.
7. The Examiner also found that
Puckett discloses:
…
• Extracting data from the received document and using it to provide a
document identifier, and saving the document identifier to a database
as an index for the error data, the document identifier correlated to the
received document (column 3, lines 4-12: Here, the header is a
document identifier grouping the error events).
Answer 4.
8. Appellants do not traverse the Examiner’s finding that Puckett teaches
providing a document identifier and saving the document identifier as an
index for the error data correlated to the received document. Appeal Br. 6-7.
9. Instead, Appellants dispute the relevance of Puckett, arguing that
“Puckett has nothing to do with an inbound trading partner document,”
Appeal Br. 7, and thus “necessarily does not teach or suggest anything
related to (2) an internal document identifier being saved to the tracking
database that serves as an index for the translation error data” (Appeal Br.
7). In other words, Appellants dispute the relevance of Puckett on the
grounds that, although Puckett provides a document identifier and saves the
document identifier as an index for the error data correlated to the received
document, it is not directed to inbound trading partner documents.
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10. Ricker discloses a translator which uses a data dictionary (i.e., X12) to
transform a message from one format to another “well-formed” one. P. 8, l.
6.
11. Ricker indicates that, in the case of converting documents in XML to
EDI, the “X12 data dictionaries will ensure the XML document is compliant
with a well-formed EDI message.” P. 8, l. 6.

C. Principles of Law
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, and (3) the level of skill in the art. Graham
v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also
KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) The Court in Graham further
noted that evidence of secondary considerations “might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
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art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
a patent might be determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id.
The Supreme Court made clear that “[f]ollowing these principles may
be more difficult in other cases than it is here because the claimed subject
matter may involve more than the simple substitution of one known element
for another or the mere application of a known technique to a piece of prior
art ready for the improvement.” Id. The Court explained, “[o]ften, it will be
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necessary for a court to look to 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, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396. The Court noted
that “[t]o facilitate review, this analysis should be made explicit.” Id., citing
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections 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”). However, “the analysis 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.” Id.

D. Analysis
The patentability of claim 1 under 35 U.S.C. § 103(a) (2002) depends
on whether the claimed subject matter is obvious over Ricker and Puckett.
The Examiner found that Ricker shows a computer implemented
process comprising the steps of (a) receiving an inbound document from a
trading partner at a translator; (b) the translator checking compliance of the
document for translation from a source format to a desired target format; and
(c) attempting translation of the document. FF 1.
Appellants did not traverse these findings by the Examiner (FF1),
arguing instead that the Examiner wrongly found that Ricker shows
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capturing error data detected in the translation to a tracking database (FF 2).
That argument has no merit since we find nothing in the record to indicate
that the Examiner made such a finding. FF 2.
Rather, the Examiner found that Ricker’s “process of validating the
document inherently detects errors if the document is not ‛well-formed.’”
FF 3. Appellants did not traverse this finding. FF 4. Furthermore, this
finding is in accord with a person of ordinary skill in the art’s understanding
of what Ricker discloses. See FF 10 and 11. To one of ordinary skill in the
art, ensuring the XML document is compliant with a well-formed EDI
message suggests the document has been translated without errors in
translation which, if they were present, would render it non-compliant. An
ability to detect these errors would be a necessary precondition to achieving
a translated document that is “compliant with a well-formed EDI message.”
Accordingly, we find that Ricker shows a computer implemented
process comprising the steps of (a) receiving an inbound document from a
trading partner at a translator; (b) the translator checking compliance of the
document for translation from a source format to a desired target format; and
(c) attempting translation of the document, which translation involves
detecting errors.
The Examiner found that Puckett discloses “capturing data errors to a
database (column 2, lines 60-67)” and “[e]xtracting data from the received
document and using it to provide a document identifier, and saving the
document identifier to a database as an index for the error data, the
document identifier correlated to the received document (column 3, lines 4-
12: Here, the header is a document identifier grouping the error events).”
FF 4 and 7.
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Appellants did not traverse these findings of the Examiner. FF 5
and 8.
Accordingly, we find that Puckett shows capturing data errors to a
database and extracting data from the received document and using it to
provide a document identifier, and saving the document identifier to a
database as an index for the error data, the document identifier correlated to
the received document. Puckett therefore appears to show the subject matter
set forth in steps (c) and (d) of claim 1.
As to the subject matter of step (c) of claim 1, Appellants argued that
Puckett is not relevant because it does not show capturing error data “that
represents errors in inbound documents which are detected in the translation
process,” FF 6. This argument is unpersuasive.
Step (c) requires “capturing error data representing errors detected in
the translation to a tracking database.” An argument that the error data to be
captured represent errors in an inbound document is not commensurate in
scope with what is claimed.
Furthermore, the Examiner did not rely on Puckett to show capturing
error data representing errors detected in the translation to a tracking
database. The Examiner relied on Puckett to show as known a step of
capturing errors. It is Ricker which has been relied upon for detecting errors
in the translation of inbound documents. As already explained, one of
ordinary skill in the art reading Ricker would understand that in practicing
the Ricker process, translating an inbound document such that it is compliant
with a well-formed outbound document necessarily involves detecting
errors. The Examiner took the position that the combination of Ricker and
Puckett would lead one of ordinary skill in the art to detect errors in
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translation (per Ricker) and capture those errors in a tracking database (per
Puckett).
Finally, to the extent that Appellants argued that Puckett is not
relevant prior art on the grounds that it does not involve inbound documents,
we disagree. The use of error log files as a means for capturing errors is
notoriously well known and Puckett is an example where it can be usefully
employed. Error log files provide information about error types and their
frequency, which is helpful in improving a system. One of ordinary skill in
the art reading Puckett would understand that the error log files are used to
improve the Puckett system but have a much wider applicability.
Appellants also argued that “Puckett has nothing to do with an
inbound trading partner document,” (FF 9) with respect to whether Puckett
is relevant to showing the subject matter of step (d) of claim 1. Here, too, we
do not agree.
Appellants did not traverse the Examiner’s finding that Puckett
teaches providing a document identifier and saving the document identifier
as an index for the error data correlated to the received document (FF 8).
Accordingly, Appellants are only arguing that a patentable distinction exists
in the claim defining a source for the data used to identify the error captured
in the database that is different from the one Puckett discloses (i.e., an
inbound document versus Puckett’s events occurring in the data storage
system). However, the information used by Puckett to represent errors in the
storage system captured in the error log database is itself data, and, as such,
is not functionally different from data obtained from any another source for
identifying information to represent errors in a log database. Furthermore,
there is no indication in Puckett that the data used to represent error data in a
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log database is uniquely dependent on the presence of a storage system. One
of ordinary skill in the art reading Puckett would understand Puckett to be
describing a particular application for identifying the errors captured in the
log database and that such a step would be useful to identify errors wherever
errors are detected and captured in log databases. Accordingly, we are not
persuaded by the argument that Puckett is not relevant to the subject matter
claimed in step (d).
We have addressed all of Appellants’ arguments and find them
unpersuasive as to find fault with the Examiner’s characterization of the
scope and content of Ricker and Puckett.
Based on an analysis of the scope and content of Ricker and Puckett,
the facts support the conclusion that Ricker shows a computer implemented
process comprising the steps of (a) receiving an inbound document from a
trading partner at a translator; (b) the translator checking compliance of the
document for translation from a source format to a desired target format; and
(c) attempting translation of the document, which translation involves
detecting errors, and that Puckett shows (c) capturing error data to a tracking
database; and (d) extracting data from a received document and using it to
provide a document identifier, and saving the document identifier to a
database as an index for the error data, the document identifier correlated to
the received document. Accordingly, all of the steps and their limitations are
disclosed in the prior art. We find each step claimed performs as one of
ordinary skill in the art would expect it to perform from reading the cited
prior art. Each performs a known function and that function is spelled out in
the prior art. The steps claimed do no more than what one would expect if
the steps described in Ricker and Puckett were to be combined. “The
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l v.
Teleflex Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007). In that
regard, Appellants have not shown that the claimed method yields an
unexpected result.

E. Conclusion of Law
On the record before us, Appellants have failed to show that the
Examiner erred in rejecting the claims over the prior art.

Claim 3 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Dysart, and further in view of
Casper).
Claim 4 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker, Puckett, Dysart, and Casper, and further in view of Dowling.
Claims 5 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Casper.
Claim 8 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Rusterholz et al..
Claim 9 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker and Puckett, and further in view of Loebig.
Claim 10 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Ricker, Puckett, Loebig, and further in view of Casper.
Claims 3-5 and 8-10 are separately rejected under 35 U.S.C. § 103
over Ricker and Puckett and other references as set forth in these statements
of the rejections. Appellants, however, provide no separate argument with
respect to any of these rejections but, rather, state that claims 3-5 and 8-10
stand or fall as part of the group that includes claims 1-2, 6-7, and 13-20
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addressed above and for which claim 1 was designated as representative.
Appeal Br. 6-7. We therefore do not separately address the rejections of
claims 3-5 and 8-10 but, rather, consider them to stand or fall with the
disposition of the rejection of claim 1. Since we have found that Appellants
have failed to show that the Examiner erred in rejecting claim 1, we likewise
find that Appellants have failed to show that the Examiner erred in rejecting
claims 3-5 and 8-10.

Claims 11 and 12 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ricker and further in view of Puckett.
Claims 11 and 12 read as follows:
11. A process as claimed in claim 1, wherein the step (d) comprises
extracting data from both a document's enveloping information and
from within the document.

12. A process as claimed in claim 1, wherein error data is captured
by writing values to variables in memory, and subsequently saving
said values to the tracking database referenced to the internal
document identifiers.

A. Issue
The issue is whether Appellants have shown that the Examiner erred
in holding the combination of Ricker’s computer-implemented e-business
process facilitating exchange of information between traders using different
formats through the translation of inbound documents from one format to
another with Puckett’s recording of errors in an error log database as part of
an error data translation system would have rendered the subject matter of
claims 11 and 12 obvious to one of ordinary skill in the art at the time of the
invention.
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B. Findings of Fact
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. We incorporate herein the facts under the Findings of Fact section for
the rejection of claims 1-2, 6, 7, and 13-20 above and add the following
facts.
2. Claim 11 further limits the data extracting step of step (d) of claim 1
to include “extracting data from both a document's enveloping information
and from within the document.”
3. The Examiner found
As per dependent claim 11, Ricker and Puckett disclose the
limitations similar to those in claim 1, and the same rejection is
incorporated herein. Puckett further discloses that step d) comprises
extracting data from both a document's enveloping information and
from within the document (col. 3, lines 5-7, "These events can be
errors in the storage system or simply routine observations about the
storage system").
Answer 6.
4. Appellants did not traverse the Examiner’s finding but rather question
its relevance to the claimed subject matter, arguing that:
[t]he office action states with respect to the features of claim 11, that
"these errors can be errors about the storage system or simply routine
observations about the storage system." However, equating the errors
related to the "storage system" to the claimed document information is
incorrect since one skilled in the art of either computing systems or e-
commerce systems would not equate a trading partner document to a
storage system disclosed by Puckett.
Appeal Br. 7.

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5. Claim 12 further limits the error data capture to writing values to
variables in memory and saving those values to the tracking database
referenced to the internal document identifiers.
6. The Examiner found
As per dependent claim 12, Ricker and Puckett disclose the
limitations similar to those in claim 1, and the same rejection is
incorporated herein. Puckett further discloses a process wherein error
data is captured by writing values to variables in memory, and
subsequently saving said values to the tracking database referenced to
the internal document identifiers (Fig. 3, items 308-316, Fig 3 details
how tuples are stored in a metalanguage (which must occur in
variables), then outputted to a database).
Answer 6.
7. Appellants traversed the Examiner’s findings by arguing the
following:
[T]he rejection of claim 12 does not indicate how translation errors in
trading partner documents are correlated to variables and stored
referenced to the internal document identifiers (which are not
disclosed by any of the applied references).
Appeal Br. 7.

C. Principles of Law
We incorporate herein the principles of law under the Principles of
Law section for the rejection of claims 1-2, 6, 7, and 13-20 above.

D. Analysis
Appellants’ arguments are unpersuasive in showing error in the
Examiner’s findings.
As to the Examiner’s finding with respect to the subject matter of
claim 11 (FF 3), Appellants did not traverse the substance of the finding that
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led the Examiner to conclude that Puckett discloses extracting data from
both a document's enveloping information and from within the document.
Appellants argue instead that
equating the errors related to the "storage system" to the claimed
document information is incorrect since one skilled in the art of either
computing systems or e-commerce systems would not equate a
trading partner document to a storage system disclosed by Puckett.
FF 4. We disagree.
One of ordinary skill in the art reading Puckett would not conclude
that the process therein for extracting data is limited in application to the
system Puckett describes. The disclosure in col. 3, lines 5-7 of Puckett,
which the Examiner relies upon, describes capturing errors in an error log
database. While the errors being captured are related to events occurring in
the storage system, the mechanism by which Puckett captures errors (i.e.,
using an error log database represented by headers or descriptors) does not
depend on the types of errors to be captured. Furthermore, the issue is not
whether Puckett anticipates the subject matter of claim 11 but whether the
combination of Ricker and Puckett would have led one of ordinary skill in
the art to the subject matter of claim 11 such that it would have been obvious
under 35 U.S.C. § 103(a) (2002). Finally, Puckett’s disclosure is clearly
relevant to the subject matter claimed because Puckett captures errors in a
tracking database, a step which the claimed method also performs.
As to the Examiner’s finding with respect to the subject matter of
claim 12 (FF 6), Appellants did not traverse the substance of the finding that
led the Examiner to conclude that Puckett discloses a process wherein error
data is captured by writing values to variables in memory, and subsequently
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saving said values to the tracking database referenced to the internal
document identifiers. Appellants argue instead that:
the rejection of claim 12 does not indicate how translation errors in
trading partner documents are correlated to variables and stored
referenced to the internal document identifiers (which are not
disclosed by any of the applied references).
FF 7. In other words, Appellants object to Puckett’s relevance to claim 12 on
the grounds that it does not involve trading partner documents.
Appellants’ argument is unpersuasive to show error in the Examiner’s
finding because, as with the argument regarding the rejection of claim 11,
the issue is not whether Puckett anticipates the subject matter of claim 12 but
whether the combination of Ricker and Puckett would have led one of
ordinary skill in the art to the subject matter of claim 12 such that it would
have been obvious under 35 U.S.C. § 103(a) (2002). Furthermore, Puckett’s
disclosure is clearly relevant to the subject matter claimed because Puckett
not only captures errors in a tracking database but also identifies the errors
captured, steps which are also present in the claimed method.
Having found Appellants’ arguments on the relevance of Puckett
unpersuasive, we find that Appellants have not shown error in the prima
facie case of obviousness. Each step claimed performs as one of ordinary
skill in the art would expect it to perform from reading the cited prior art.
Each performs a known function and that function is spelled out in the prior
art. The steps claimed do no more than what one would expect if the steps
described in Ricker and Puckett were to be combined. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l v. Teleflex Inc.,
127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007). In that regard,
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Appellants have not shown that the claimed method yields an unexpected
result.

E. Conclusion of Law
On the record before us, Appellants have failed to show that the
Examiner erred in rejecting the claims over the prior art.

Claims 21-22 are rejected under 35 U.S.C. §103(a) as being unpatentable
over Ricker and Puckett, and further in view of Yang.

Claims 21 and 22 read as follows:
21. The process as claimed in claim 1, further comprising the step of
using the internal document identifier to identify translation error data
corresponding to the inbound document from the trading partner and
provide information to the trading partner based on the identified
translation error data.

22. The computer program product as claimed in claim 20,
configured for further performing the step of using the internal
document identifier to identify translation error data corresponding to
the inbound document from the trading partner and provide
information to the trading partner based on the identified translation
error data.

A. Issue
The issue is whether Appellants have shown that the Examiner erred
in holding the combination of Ricker’s computer-implemented e-business
process facilitating exchange of information between traders using different
formats through the translation of inbound documents from one format to
another with Puckett’s recording of errors in an error log database as part of
an error data translation system would have rendered the subject matter of
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claims 21 and 22 obvious to one of ordinary skill in the art at the time of the
invention.

B. Findings of Fact
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. We incorporate herein the facts under the Findings of Fact section for
the rejection of claims 1-2, 6, 7, and 13-20 above and add the following.
2. The Examiner found that
As per dependent claim 21, Ricker and Puckett disclose the
limitations similar to those in claim 1, and the same rejection is
incorporated herein. Ricker and Puckett fail to specifically disclose
the step of identifying error data corresponding to the inbound
document from the trading partner and provide information to the
trading partner based on the identified error data. However, Yang
discloses identifying error data corresponding to the inbound
document from the trading partner and provides information to the
trading partner based on the identified error data (column 9, table:
Here, if a translation fails, an error message is generated informing a
user that the translation does not work).
…
As per dependent claim 22, the applicant discloses the
limitations similar to those in claim 21. Claim 22 is similarly rejected
under Ricker, Puckett, and Yang.

Answer 13-14.
3. Appellants traversed the Examiner’s finding, arguing that
Claims 21 and 22 recite that translation error data of an inbound
document of a trading partner is used to provide information to the
trading partner based on the identified translation error data. The final
office action relies on Yang to disclose this feature and cites to col. 9
of Yang and a table which is presumably the code fragment disclosed
in col. 9 of Yang. However, Yang is completely irrelevant to the
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features recited in these claims. The cited portion of Yang relates to a
process flow in the translation of command strings in a test script and
is completely unrelated to identifying translation error data from
trading partner documents or to providing information to trading
partners based on the identified translation error data. Accordingly,
these features provide additional reasons for the patentability of
claims 21 and 22.
Therefore, these features recited in the dependent claims
discussed above are also not disclosed or suggested by the applied
prior art and they provide additional reasons for the patentability of
these claims.

Appeal Br. 7-8. Emphasis original.

C. Principles of Law
We incorporate herein the principles of law under the Principles of
Law section for the rejection of claims 1-2, 6, 7, and 13-20 above.

D. Analysis
Appellants’ argument (FF 3) is unpersuasive to show error in the
Examiner’s finding because, as with the argument regarding the rejections of
claims 11 and 12, the argument focuses on whether Yang involves trading
documents. However, the issue is not whether Yang anticipates the subject
matter of claims 21 and 22 but whether the combination of Ricker, Puckett,
and Yang would have led one of ordinary skill in the art to the subject matter
of claims 21 and 22 such that it would have been obvious under 35 U.S.C.
§ 103(a) (2002). There is no evidence that Yang’s process by which a user is
notified of errors cannot be combined with the Ricker and Puckett processes.
To the contrary, we find that one of ordinary skill in the art reading Yang
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would understand that Yang’s error notification process is useful wherever
errors are detected and improvements in the system are sought.
Having found Appellants’ arguments on the relevance of Puckett
unpersuasive, we find that Appellants have not shown error in the prima
facie case of obviousness. The claimed steps are disclosed in the prior art.
We find each step claimed performs as one of ordinary skill in the art would
expect it to perform from reading the cited prior art. Each performs a known
function and that function is spelled out in the prior art. The steps claimed do
no more than what one would expect if the steps described in Ricker,
Puckett and Yang were to be combined. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727, 1739, 82 USPQ2d 1385, 1395 (2007). In that regard, Appellants have
not shown that the claimed method yields an unexpected result.

E. Conclusion of Law
On the record before us, Appellants have failed to show that the
Examiner erred in rejecting the claims over the prior art.

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DECISION
The decision of the Examiner rejecting claims 1-2, 6-7, and 11-20
under 35 U.S.C. §103(a) over Ricker and Puckett; claim 3 under 35 U.S.C.
§103(a) over Ricker, Puckett, Dysart, and Casper; claim 4 under 35 U.S.C.
§103(a) over Ricker, Puckett, Dysart, Casper, and Dowling; claim 5 under
35 U.S.C. §103(a) over Ricker, Puckett, and Casper; claim 8 under
35 U.S.C. §103(a) over Ricker, Puckett, and Rusterholz; claim 9 under
35 U.S.C. §103(a) over Ricker, Puckett, and Loebig; claim 10 under
35 U.S.C. §103(a) over Ricker, Puckett, Loebig, and Casper; and claims
21-22 under 35 U.S.C. §103(a) over Ricker, Puckett, and Yang, 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)(1)(iv).

AFFIRMED

vsh

WILLIAM T. ELLIS
FOLEY & LARDNER
WASHINGTON HARBOUR
3000 K STREET, N.W., SUITE 500
WASHINGTON, DC 20007-5109