Ex Parte BITTNER et al

Patent Trial and Appeal Board

Jul 25, 2018

13099481 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/099,481 05/03/2011
24131 7590 07/27/2018
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
MAIK BITTNER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A-5229 1914
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAIK BITTNER and JURGEN MARSCHAR
Appeal2017-004404
Application 13/099,481 1
Technology Center 3600
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
HUNG H. BUI, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1, 2, 4, 5, and 7-16, which
are all the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, Heidelberger Druckmaschinen AG is the real
party in interest. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief filed September 19, 2016
("App. Br."); Reply Brief filed January 17, 2017 ("Reply Br."); Examiner's
Answer mailed November 17, 2016 ("Ans."); Final Office Action mailed
April 19, 2016 ("Final Act."); and original Specification filed May 3, 2011
("Spec.").
Appeal2017-004404
Application 13/099,481
STATEMENT OF THE CASE
Appellants' invention relates to "a system having a computer for
displaying the production performance of a machine [ connected to the
computer via a network] in comparison with the production performance of
other machines." Spec. ,r 2. In the context of two print shops having a first
press room and a second press room, Appellants' system is used for
"evaluating and comparing the performance of the productivity of several
printing presses." Spec. ,r 21.
Claims 1 and 11 are independent. Claim 1 is illustrative of the
claimed subject matter, and reproduced below with disputed limitations in
italics:
1. A production performance evaluation system, comprising:
[ 1] a performance comparison computer connected via
an Internet link for remote service to respective machine
computers of a plurality of production machines, at least some of
the production machines being provided at competitors'
locations,
[i] said performance comparison computer
being set up at a manufacturer of said production machines
or at a service partner of the manufacturer, said respective
machine computers each gathering production performance
from a corresponding production machine of said plurality of
production machines,
[ii] said performance comparison computer
acquiring production performance from said respective
machine computers of said plurality of machines and
programmed for automatically carrying out a production
performance comparison between a production performance
of one local production machine and a production
performance of at least one other external production
machine at a competitor,
[iii] said performance comparison computer
programmed for calculating suggestions or offers for
2
Appeal2017-004404
Application 13/099,481
increasing the productivity of the one local production
machine for an operator of the one local production machine
on the basis of the production performance comparison
between the production performance of said one local
production machine and the production performance of the
at least one other external production machine at the
competitor;
[2] a production performance display computer located
at said one local production machine connected via the Internet
link to said performance comparison computer and displaying
the production performance comparison in comparison with the
competitor;
the system sending the production performance
comparison data and the suggestions or offers for increasing the
productivity of the production machine via the Internet link from
said performance comparison computer to said production
performance display computer for displaying the production
performance comparison data and the suggestions or offers for
increasing the productivity of the production machine via a
display of said production performance display computer at least
to the operator of said one local production machine.
App. Br. 31-32 (Claims App'x) (bracketing added for clarity).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1, 2, 4, 5, and 7-16 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Final
Act. 8-9.
(2) Claims 1, 2, 4, 5, and 7-16 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to an abstract idea. Final
Act. 9-12.
(3) Claims 1, 2, 4, 5, and 7-16 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Mullin (US 2006/0078859
Al; published April 13, 2006), Oelsner (US 2005/0251685 Al; published
3
Appeal2017-004404
Application 13/099,481
Nov. 10, 2005), Cannon (US 2006/0229851 Al; published Oct. 12, 2006),
and Small et al. (US 2008/0010005 Al; published Jan. 10, 2008). Final Act.
12-25.
ANALYSIS
Written Description: Claims 1, 2, 4, 5, and 7-16
With respect to independent claims 1 and 11, the Examiner finds the
recited limitation: "said performance comparison computer ... programmed
for automatically carrying out a production performance comparison" is not
supported by the Specification. Final Act. 8-9 ( emphasis added).
According to the Examiner, the cited paragraph 10 of Appellants'
Specification only describes "automating the creation of comparison
classes" and not "the automation of the performance comparison as
claimed." Final Act. 9.
Appellants acknowledge paragraph 10 of the Specification teaches
"new comparison classes [that] are created automatically by the
incoming data being evaluated continuously with regard to differences in
the configuration of the machines and the scope of the print jobs." App. Br.
9-10. However, Appellants contends (1) paragraph 12 of the Specification
teaches the use of a data interface so "that data from different machines,
even from different manufacturers, can be compared practically with one
another in the performance comparison computer" and, as such, (2) "the
[S]pecification does disclose that performance comparison and not just
the comparison classes are in fact created automatically." App. Br. 10.
In response, the Examiner takes the position that "automatically
creating comparison classes" as described in paragraph 10 of Appellants'
4
Appeal2017-004404
Application 13/099,481
Specification is not the same as the claimed "'programmed for automatically
carrying out a production performance comparison."' Ans. 4. Likewise, the
exchange of performance data between different machines as described in
paragraph 12 of Appellants' Specification is not the same as the claimed
"programmed for automatically carrying out a production performance
comparison." Ans. 4.
We agree with the Examiner only in part. At the outset, we note the
written description requirement under 35 U.S.C. § 112(a) requires
Appellants to "reasonably convey[] to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) ( citation omitted). However, "the disclosure as originally filed does
not have to provide in haec verba support for the claimed subject matter at
issue." Purdue Pharma L.P. v. Paulding Inc., 230 F.3d 1320, 1323 (Fed.
Cir. 2000) ( citation omitted). In some cases, "drawings alone may provide a
'written description' of an invention as required by§ 112." Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Regardless, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. Id. at 1563-1564.
In this case, we acknowledge ( 1) the Specification and the claims, as
originally filed on May 3, 2011, are poorly worded and do not include the
word "automatic" described in connection with Appellants' claimed
"performance comparison computer" 12, shown in the drawing, and (2) the
term "programmed for automatically carrying out" was added to claims 1
and 11 in the Amendment filed October 2, 2015. However, a skilled artisan
would understand that a computer is configured to automatically perform
5
Appeal2017-004404
Application 13/099,481
programmed operations, including the disputed limitation: "automatically
carrying out a production performance comparison" as recited in claims 1
and 11. For this reason, we do not sustain the Examiner's § 112(a) rejection
of claims 1, 2, 4, 5, and 7-16 for failure to comply with the "written
description" requirement.
Section 101 Rejection of Claims 1, 2, 4, 5, and 7-16
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). The
Supreme Court has long held that "[l]aws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014). The "abstract ideas" category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice, 134 S. Ct.
at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court reiterates an analytical two-step
framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66, 79 (2012), "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 ( citation omitted). 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. (citation omitted). If the claims are
directed to eligible subject matter, the inquiry ends. Thales Visionix Inc. v.
United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
6
Appeal2017-004404
Application 13/099,481
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."
Alice, at 2355 (citing Mayo, 566 U.S. at 79, 78). In other words, the second
step is to "search for an 'inventive concept'-i.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.
(citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1, 2, 4, 5, and 7-16 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to an abstract idea of
"acquir[ ing] production performance data, carrying out a comparison,
calculat[ing] suggestions, provid[ing] display, send[ing] performance
comparison and suggestions, and display[ing] both the comparison and
suggestions" akin to those abstract ideas of organizing, storing, and
transmitting information discussed in Cyberfone, comparing information and
using rules to identify options discussed in SmartGene. Ans. 5---6 ( citing
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed. App'x 988
(Fed. Cir. 2014); SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F.
Supp. 2d 42 (D.D.C. 2012), ajf'd 555 F. App'x 950 (Fed. Cir. 2014)); see
also Final Act. 9-10. The Examiner also determines these claims are
directed to an abstract idea because the steps recited in these claims can be
performed by a human with pen and pencil or mentally. Final Act. 10
(citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011)); Ans. 7. For example, "[a] user can evaluate and compare machine
performance with only pen to paper actions, interaction between humans,
and/or mental calculation." Final Act. 10.
7
Appeal2017-004404
Application 13/099,481
The Examiner further determines the additional elements in the claims
do not amount to significantly more than the judicial exception, because "the
computers, Internet, and display" are "computer functions that are well-
understood, routine, and conventional functions". Final Act. 10-11.
According to the Examiner, "[t]he claims as a whole ... do not constitute an
improvement to computing technology in any way." Ans. 7.
Alice/Mayo-Step 1
Turning now to the first step of the Alice inquiry, Appellants do not
dispute the Examiner's determination that the claims are directed to an
abstract idea based on Cyberfone and SmartGene. Instead, Appellants
contend "many method steps" recited in claims 1 and 11 "can only be
performed by a computer network" and "[ t ]his network alone includes a
performance comparison computer and respective machine computers that
can be located anywhere in the world and that are connected by Internet
connection, which cannot be done on paper or in a person's mind." App. Br.
15-16. Appellants also argue the claims are not directed to an abstract idea
under the Enfzsh analysis. App. Br. 17-18. In particular, Appellants argue,
like Enfzsh 's claims directed to improvements in computer-related
technology, the claims recite "automatically comparing machine data, in
this case especially performance data, via a computer" and such "machine
performance can hardly be 'not significantly more than an abstract idea."'
App. Br. 17-18.
Appellants' arguments are not persuasive. At the outset, we note
Appellants' reliance on Enfish is misplaced. In Enfzsh, the claims were
directed to an improved database architecture, i.e., a self-referential table -
"a specific type of data structure designed to improve the way a computer
8
Appeal2017-004404
Application 13/099,481
stores and retrieves data in memory." Such a data structure has several
distinct advantages over conventional relational databases, including: (1)
faster searching of data than would be possible with the conventional
relational model (see US Patent No. 6,151,604 "Enfish '604 patent," 1:55-
59, 2:66-3:6); (2) more effective storage of data other than structured text,
such as storage of images and unstructured text (' 604 patent, 2: 16-22, 2 :46-
52); and (3) more flexibility in configuring the database ('604 patent, 2:27-
29).
In Enfzsh, the Federal Circuit interpreted Alice step 1 as asking
"whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea." Enfzsh, 822 F.3d at
1335. "[T]he focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a computer
database)." Id. Based on the "plain focus of the claims," the Federal Circuit
reached the conclusion that Enfzsh 's claims were directed to "a specific
improvement to the way computers operate, embodied in the self-referential
table," and, as such, were more than a mere abstract idea. Id. Because the
Federal Circuit found step 1 of the Alice two-step analysis was satisfied,
Alice step 2 was not required. Id.
In contrast to Enfzsh, Appellants' claims are directed to an abstract
idea of "acquir[ing] production performance data, carrying out a
comparison, calculat[ing] suggestions, provid[ing] display, send[ing]
performance comparison and suggestions, and display[ing] both the
comparison and suggestions." These steps, as recognized by the Examiner,
are akin to those abstract ideas of organizing, storing, and transmitting
9
Appeal2017-004404
Application 13/099,481
information as discussed in Cybeifone and comparing information and using
rules to identify options as discussed in SmartGene. Ans. 5---6.
Information as such is intangible, and data analysis and display are
abstract ideas. See, e.g., Microsoft, 550 U.S. at 451 n.12; Alice, at 2355;
Parker v. Flook, 437 U.S. 584, 589, 594--95 (1978); Gottschalk, 409 U.S. at
71-72. Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344, 1349-50 (Fed. Cir. 2014) ("Data in its ethereal, non-physical
form is simply information that does not fall under any of the categories of
eligible subject matter under section 101 ").
As also correctly recognized by the Examiner (Ans. 7), collecting and
making performance comparisons of machines can be performed manually
using, at most, pen and paper, without the need of any computer or other
machine. See CyberSource, 654 F.3d at 1372-73 ("[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967, 979
(Fed. Cir. 2009) ("[M]ental processes-or processes of human thinking-
standing alone are not patentable even if they have practical application.");
Gottschalk, at 67 ("Phenomena of nature ... , mental processes, and abstract
intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work" (emphasis added)). Additionally, mental
processes remain unpatentable even when automated to reduce the burden
on the user of what once could have been done with pen and paper.
CyberSource, 654 F.3d at 1375 ("That purely mental processes can be
10
Appeal2017-004404
Application 13/099,481
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
As also correctly recognized by the Examiner, Appellants' "claims as
a whole ... do not constitute an improvement to computing technology in
any way." Ans. 7; see Enfzsh, at 1336. Appellants' Specification and
arguments do not demonstrate the claims "improve the way a computer
stores and retrieves data in memory," as the claims in Enfish did via a "self-
referential table for a computer database." See Enfzsh at 1336, 1339.
In fact, none of the steps recited in Appellants' claims 1 and 11 recite,
and nowhere in Appellants' Specification is there any description or
explanation as to how the performance data comparison steps are intended to
provide: (1) a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks," as explained by the Federal Circuit in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) "a specific
improvement to the way computers operate," as explained in Enfzsh, or
(3) an "unconventional technological solution ... to a technological
problem" that "improve[ s] the performance of the system itself," as
explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1302 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that claims 1, 2, 4, 5, and 7-
16 are directed to the abstract idea of "acquir[ing] production performance
data, carrying out a comparison, calculat[ing] suggestions, provid[ing]
display, send[ing] performance comparison and suggestions, and
display[ing] both the comparison and suggestions" akin to those abstract
ideas discussed in Cybeifone and SmartGene.
11
Appeal2017-004404
Application 13/099,481
Alice/Mayo-Step 2
In the second step of the Alice inquiry, Appellants argue "claims 1 and
11 do include additional elements that amount to significantly more than the
abstract idea because they show an improvement in the functioning of the
computer itself." App. Br. 14. In the Reply Brief, Appellants further argue
the Supreme Court's decision in Alice is not limited to "an improvement to
computing technology"; but is rather inclusive of "other technology" as well,
especially in context of Appellants' printing machines. Reply Br. 3--4.
Appellants' arguments are not persuasive. At the outset, we note that
the second step of Alice requires a "search for an 'inventive concept'-i.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."' Alice, at 2355 (citing Mayo, 566 U.S. at 72-73).
According to the Federal Circuit, "the concept of inventiveness is distinct
from that of novelty" and "[ t ]he inventiveness inquiry of§ 101 should
therefore not be confused with the separate novelty inquiry of§ 102 or the
obviousness inquiry of§ 103." See Amdocs, 841 F.3d at 1312. Under
current Federal Circuit precedent, an "inventive concept" under Alice step 2
can be established by showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique,
e.g., a "solution [] necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks" (see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014);
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a filtering tool at
a specific location, remote from the end-users, with customizable
filtering features specific to each end user" (see Bascom Global Internet
12
Appeal2017-004404
Application 13/099,481
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016)); or
(3) "entail[] an unconventional technological solution ([e.g.,]
enhancing data in a distributed fashion) to a technological problem
([ e.g.,] massive record flows which previously required massive
databases)" and "improve the performance of the system itself' (see
Amdocs, 841 F .3d at 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1 and 11 that contains any "inventive concept"
or adds anything "significantly more" to transform the abstract concept into
a patent-eligible application. Alice, at 2357. As discussed supra, we are not
persuaded the added computer elements such as the performance comparison
computer and the production performance display computer transform the
abstract idea into a patent eligible invention. As our reviewing court has
observed: "[ A ]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible." DDR Holdings, 773 F.3d at 1256 ( citing Alice, at 2358)).
Because Appellants' claims 1, 2, 4, 5, and 7-16 are directed to a
patent-ineligible abstract concept and do not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of these claims under 35 U.S.C. § 101.
35 US. C. § 103 (a): Claims 1, 2, 4, 5, and 7-16
In support of the obviousness rejection of claims 1 and 11, the
Examiner finds (1) the combination of Mullin, Oelsner, Cannon, and Small
teaches all the claim limitation (Final Act. 12-16); and (2) there is sufficient
articulated reasoning:
13
Appeal2017-004404
Application 13/099,481
(i) "to combine the performance comparison and recommendation
of Mullin with the Internet linkage and remote computer
connection for comparison of Oelsner" (Final Act. 16);
(ii) "to combine the performance comparison and recommendation
of Mullin with the operator display of performance comparison
of Cannon" (Final Act. 17); and
(iii) "to combine the performance comparison and recommendation
of Mullin and the comparison operator display of Cannon with
the failure recovery or productivity improvement and
recommendations of Small" (Final Act. 1 7).
Appellants acknowledge Mullin teaches a system and method for
monitoring and responding to device conditions including,
data tracking performance of particular models, as well as
specific devices within a model, can be generated, and even
reports comparing the performance of specific devices within a
model group or comparing the down-time, number and type of
errors, etc., between similar model groups (for example,
comparing performance between two different brands of copy
machine).
Mullin ,r 88; App. Br. 22. However, Appellants contend Mullin's "reports
are established by a central computer, but are never sent back to machine
computers or operators of the machines," i.e.,
sending the production performance comparison data and the
suggestions or offers for increasing the productivity of the production
machine via the Internet link from said performance comparison
computer to said production performance display computer ... via a
display of said production performance display computer at least to
the operator of said one local production machine
as recited in claims 1 and 11. App. Br. 22; claim 1 ( emphasis added).
Likewise, Appellants argue "Cannon does not disclose or suggest to send
14
Appeal2017-004404
Application 13/099,481
back any performance comparison data to a machine computer and to inform
the operator of a machine" and, as such,
a person of ordinary skill in the art starting from Mullin or
Cannon does not have any motivation to look for another
document that sends back performance comparison data to a
local machine in order to inform the operator of the local
machine. There is no need and motivation addressed in any of
the references Mullin or Cannon. Therefore, appellants do not
see any reason why the examiner then combines the reference of
Oelsner apart from the reason to attack the present invention as
obvious based upon an impermissible hindsight reconsideration.
App. Br. 22-23. According to Appellants, the noted deficiency of Mullin is
not and cannot be remedied by Oelsner, Cannon, and Small and, as such,
"the combination of references ... does not result in all the claim
limitations." App. Br. 23-28 ( emphasis omitted).
The Examiner does not respond to Appellants' arguments, but instead
takes the broad view that "Examiner has established a motivation statement
for all reference combinations in all previous rejections." Ans. 7
We disagree with the Examiner. Mullin does not teach or suggest the
disputed limitation: "sending the production performance comparison data
and the suggestions ... via the Internet link from [ 1] said performance
comparison computer to [2] said production performance display computer .
. . via a display of said production performance display computer at least to
the operator of said one local production machine" as recited in claims 1 and
11. (Bracketing and emphasis added.) Instead, the cited paragraph 88 of
Mullin teaches "reports comparing the performance of specific devices
within a model group or comparing the down-time, number and type of
errors, etc., between similar model groups (for example, comparing
15
Appeal2017-004404
Application 13/099,481
performance between two different brands of copy machine)." However,
Mullin's reports are generated at monitored device 32, shown in Figure 5,
which corresponds to Appellants' claimed "production machines" and not
Appellants' claimed "performance comparison computer."
Moreover, we note that an invention "composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art." KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398,418 (2007). Instead, a determination ofunpatentability on a
ground of obviousness must include "'articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness."' Id.
(quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). The obviousness
evaluation "should be made explicit," and it "can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does."
Id.
In this case, we are not persuaded that the Examiner has presented a
sufficient rationale to combine the teachings of these references. In
particular, we find the Examiner's articulated reasoning-namely, to
"allow[] for flexibility and speed to improve the overall efficiency of the
analysis" (Ans. 7}-is conclusory. See In re Nuvasive, Inc., 842 F.3d 1376,
13 83 (Fed. Cir. 2016) ( noting that "' conclusory statements' alone are
insufficient and, instead, the finding must be supported by a 'reasoned
explanation"') (quoting In re Sang Su Lee, 277 F.3d 1338, 1342, 1345 (Fed.
Cir. 2002)); see also Active Video Networks, Inc., v. Verizon
Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (noting that
"[The] testimony is generic and bears no relation to any specific
16
Appeal2017-004404
Application 13/099,481
combination of prior art elements"). Such a conclusory statement is
insufficient to establish persuasively that a person of ordinarily skill in the
art would have recognized some deficiency in Mullin or had some other
reason to look to Oelsner, Cannon, and Small and combine their teachings
with those of Mullin.
Thus, for the reasons set forth above, we do not sustain the
Examiner's 103(a) rejection of independent claims 1 and 11 and claims 2, 4,
5, 7-10, and 12-17 dependent therefrom.
DECISION
As such, we affirm the Examiner's final rejection of claims 1, 2, 4, 5,
and 7-16 under 35 U.S.C. § 101. However, we reverse the Examiner's final
rejections of(l) claims 1, 2, 4, 5, and 7-16 under 35 U.S.C. § 112(a), and
(2) claims 1, 2, 4, 5, and 7-16 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1, 2, 4, 5, and 7-16. See 37 C.F.R. § 4I.50(a)(l).
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) (2011 ).
AFFIRMED
17