Ex Parte Boe et al

Board of Patent Appeals and Interferences

Jan 27, 2009

09966845 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARBARA J. BOE, JULIA M. HAMRICK, and
MARJORIE L. AARANT
____________

Appeal 2008-2338
Application 09/966,8451
Technology Center 3600
____________

Decided: January 26, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Barbara J. Boe, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Final Rejection of claims 1-28. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

1 This is an application for reissue of US 6,236,975 B1 [hereinafter “‘975”].

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SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The invention relates to a method and system for profiling customers
for targeted marketing. “In general, the system of the present invention
allows a business to survey specific customers and to identify ones of such
customers that might want to purchase particular products or services.” ‘975
2:67-3:2. The system involves providing a customer with a survey. “…
[S]urvey system 12 [see Fig. 1] may present survey questions to the
customer. Once the survey, or a specified portion of it, is completed by the
customer, survey system 12 may then transmit graphical feedback reports
to customer system 16 [see Fig. 1] to show the customer how his or her
responses compare to responses of other customers with the same or similar
demographics.” ‘975 3:29-35.
There are 28 claims on appeal, of which method claim 1 and
apparatus claims 15 and 23 are the independent claims. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A method of compiling customer data using an
online interaction between a customer and a survey
system, comprising:
providing the customer with customer
questions;
receiving responses to the customer
questions from the customer;

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 26, 2007) and Reply Brief (“Reply Br.,” filed Aug. 20,
2007), and the Examiner’s Answer (“Answer,” mailed Jun. 18, 2007).
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storing data associated with the responses in
the survey system;
providing the customer with a feedback
page, graphically illustrating data corresponding to
the customer's standing in a selected peer group
associated with the customer;
providing the customer with options
operable to adjust the customer's actual
demographic to a hypothetical demographic ;
receiving and processing data associated
with hypothetical demographic changes from the
customer; and
displaying hypothetical feedback
information, graphically illustrating the
hypothetical standing of the customer within
the selected peer group such that the customer can
see the effect of the hypothetical demographic
changes.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Williams
Jones, III
Marsh
US 5,999,918
US 6,925,441 B1
US 5,848,397
Dec. 7, 1999
Aug. 2, 2005
Dec. 8, 1998

Official Notice: “Official Notice is taken that [sic] is old and well
known in the art of collecting data to provide percentage of completed
question [sic] ant [sic] the date of the last visit.” (Answer 6).

The following rejections are before us for review:
1. Claims 1-9, 11-19, 22, 26, and 27 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Williams.
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2. Claims 10, 12, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Williams and Official Notice.
3. Claims 23-25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones, III and Marsh.
4. Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Williams and Jones, III.

ISSUES
The first issue before us is whether the Appellants have shown
that the Examiner erred in rejecting claims 1-9, 11-19, 22, 26, and 27 under
35 U.S.C. § 102(e) as being anticipated by Williams. As to the method
claims 1-9, 11-14, and 26, the issue turns on whether the Examiner has
shown that Williams describes, expressly or inherently, a “feedback page,
graphically illustrating data corresponding to the customer's standing in a
selected peer group associated with the customer … [and] displaying
hypothetical feedback information, graphically illustrating the hypothetical
standing of the customer within the selected peer group.” As to the system
claims 15-19, 22, and 27, the issue turns on whether the Appellants have
rebutted the Examiner’s rationale for rejecting these claims.
The second issue before us is whether the Appellants have shown that
the Examiner erred in rejecting claims 10, 12, 20, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Williams and Official Notice. As to the
method claims 10 and 12, the issue turns on whether the Examiner has
shown that Williams describes, expressly or inherently, a “feedback page,
graphically illustrating data corresponding to the customer's standing in a
selected peer group associated with the customer … [and] displaying
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hypothetical feedback information, graphically illustrating the hypothetical
standing of the customer within the selected peer group.” As to the system
claims 20 and 21, the issue turns on whether the Appellants have rebutted
the Examiner’s rationale for rejecting these claims.
The third issue before us is whether the Appellants have shown that
the Examiner erred in rejecting claims 23-25 under 35 U.S.C. § 103(a) as
being unpatentable over Jones, III and Marsh. This issue turns on whether
the Appellants’ arguments that “there is no suggestion or motivation in the
Jones III, et al. patent or the Marsh, et al. patent to combine them as
proposed by the Examiner” (App. Br. 11), that “ a reasonable expectation of
success has not been shown by the Examiner” (App. Br. 12), and, that “the
Examiner has not shown that the proposed Jones III et al. – Marsh, et al.
combination teaches and suggests all of the claim limitations” (App. Br. 13)
are persuasive.
The fourth issue before us is whether the Appellants have shown that
the Examiner erred in rejecting claim 28 under 35 U.S.C. § 103(a) as being
unpatentable over Williams and Jones, III. The issue turns on whether the
Appellants have rebutted the Examiner’s rationale for rejecting this claim.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

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The scope and content of the prior art
1. The Examiner indicated that “Jones teaches … a survey system
operable to supply the business data processing system with a
targeted marketing reports, the targeted marketing reports
dynamically generated based on a set of decision rules, the set of
decision rules (see col. 13 line 19 to col. 14 line 8) dynamically
generated based on data received directly from the customer (see
fig. 7-11, fig. 14, col. 6 line 38 to col. 17 line 45, col. 9 line 7-58).”
(Answer 6).
2. The Examiner indicated that Marsh discloses directly receiving
data from consumers. (Answer 7).
Any differences between the claimed subject matter and the prior art
3. The Examiner indicated that “Jones failed to explicitly teach the
demographic data being received directly from the consumer, it is
taught in Marsh.” (Answer 7). The Examiner appears to take the
position that the difference between the claimed subject matter
(i.e., claim 23) and Jones, III and Marsh is that the claimed subject
matter combines elements and features separately disclosed in the
references.
The level of skill in the art
4. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of compiling survey data. We
will therefore consider the cited prior art as representative of the
level of ordinary skill in the art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to
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reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (“[T]he absence of
specific findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)).
Secondary considerations
5. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
“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 (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
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prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“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 17-18.

ANALYSIS
The rejection of claims 1-9, 11-19, 22, 26, and 27 under § 102(e) as being
anticipated by Williams.
Claim 1
Claim 1 is drawn to a “method of compiling customer data using an
online interaction between a customer and a survey system” comprising
seven steps.
According to the Examiner, Williams describes the first three steps
of the claimed method (“providing the customer with customer questions;
receiving responses to the customer questions from the customer; storing
data associated with the responses in the survey system”) at Figs. 6a-6e and
col. 14, line 62 to col. 15, line 12. (Answer 3). This does not appear to be in
dispute.
According to the Examiner, Williams describes the fourth step of the
claimed method (“providing the customer with a feedback page, graphically
illustrating data corresponding to the customer's standing in a selected peer
group associated with the customer”) at Fig. 1h and col. 15, line 45 to col.
16, line. 19. (Answer 3). This is in dispute. According to the Appellants,
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“FIGURE 1h merely shows a individual user’s accumulated savings with
interest through the years compared to that individual user’s contributions
and withdrawals. There is no showing of how the individual stands within
any group let alone a selected peer group associated with the individual
user.” (App. Br. 7-8).
According to the Examiner, Williams describes the last three steps
of the claimed method (“providing the customer with options operable to
adjust the customer's actual demographic to a hypothetical demographic;
receiving and processing data associated with hypothetical demographic
changes from the customer; and displaying hypothetical feedback
information, graphically illustrating the hypothetical standing of the
customer within the selected peer group such that the customer can see the
effect of the hypothetical demographic changes”) at Figs. 1i-11, col. 9, line 5
to col. 10, line 32, and col. 16, lines 14-49. (Answer 3-4). This is in dispute.
According to the Appellants, “Williams, et al. patent merely provides a
specific output for a particular individual with no comparison to any
group let alone a selected peer group as required in the claimed invention.
Moreover, the Williams, et al. patent fails to disclose how hypothetical
changes affect a hypothetical standing of the customer within that selected
peer group as required in the claimed invention.” (App. Br. 8-9).
The Examiner responded to the Appellants’ arguments challenging the
Examiner’s contention that Williams describes the last four steps of claim 1
as follows:
Appellant argues that there is no showing in
fig.1h and 6b of how the individual stands within
any group let alone a selected peer group
associated with the individual user. Examiner
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would like to point out that Examiner cited fig. lh
and col. 15 line 45 to col. 16 line 19 and also fig.
li-11, col. 9 line 5 to col. 10 line 32 and col. 16
lines 14- 49. Williams discloses, "a graphic
depiction of portfolio returns showing absolute
returns, and comparisons to bench-marks is
shown". Williams further teaches in a preferred
embodiment, the user is able to see how his or her
recommended (or actual) portfolio compares to
others (see col. 15 line 65 to col. 16 line 4). Fig. 1h
shows entering different data to see the outcome.
For example if an individual enters data with
starting with a zero saving, starts saving at the age
of 41, and retires at the age of 66 then the
retirement savings is shown to be $146,211. The
graph shows not just the outcome for the
individual user but for anyone between ages 41
and 90 (peer group). William also shows the
option to adjust the contribution to have different
outcome. If the user in William changes the
starting age to for example 35 (hypothetical age) or
the yearly saving (hypothetical), the graph would
include the outcome (different savings) for age 35
to age 90, same as appellant's disclosure (see
appellant's fig. 4c).
(Answer 8).
The Appellants replied by repeating the arguments made in the Brief;
for example, “Williams, et al. patent merely provides a specific output for a
particular individual with no comparison to any group let alone a selected
peer group as required in the claimed invention. Moreover, the Williams,
et al. patent fails to disclose how hypothetical changes affect a hypothetical
standing of the customer within that selected peer group as required in the
claimed invention.” (Reply Br. 8-9).
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Central to the dispute over whether Williams describes the limitations
set forth in the last four steps of the claimed method is whether Williams
describes a peer group associated with the user. Claim 1 requires a
“feedback page, graphically illustrating data corresponding to the customer's
standing in a selected peer group associated with the customer … [and]
displaying hypothetical feedback information, graphically illustrating the
hypothetical standing of the customer within the selected peer group.”
Accordingly, to anticipate the claimed method, Williams must explicitly or
inherently describe a selected peer group associated with a customer such
that graphical illustrations of the customer’s standing and hypothetical
standing in the selected peer group can be provided.
In that regard, we agree with the Examiner that Williams describes a
peer group associated with the user. (See col. 16, lines 1-3): “In a preferred
embodiment, the user is able to see how his or her recommended (or actual
portfolio compares to others.” We do not see that the Appellants have
disputed this language cited by the Examiner as evidence that Williams
describes a peer group associated with the user.
The question then becomes whether Williams describes “feedback
page, graphically illustrating data corresponding to the customer's standing
in a selected peer group associated with the customer … [and] displaying
hypothetical feedback information, graphically illustrating the hypothetical
standing of the customer within the selected peer group.” In that regard,
the Examiner further pointed to Figs. 1h and 6b. We have reviewed these
Figures but have not been able to find any express description of a graphical
illustration of a customer’s standing or hypothetical standing in a selected
peer group. Fig. 1h shows an interactive planner depicting retirement
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savings needed depending on values entered for various variables. See
discussion in Williams at col. 15, lines 45-63. Fig. 6b shows a user profile
whereby a user inputs his or her goals for retirement. (See col. 14, line 66 to
col. 15, line 1). We do not see in the disclosures cited by the Examiner any
express description of a graphical illustration of a customer’s standing or
hypothetical standing in a selected peer group, notwithstanding, as we have
found earlier, that Williams does describe in elsewhere in the disclosure a
peer group associated with the user.
Since there is no express description of the last four steps of the
claimed method, to anticipate the claimed method, Williams must inherently
describe a graphical illustration of a customer’s standing or hypothetical
standing in a selected peer group. In that regard, under principles of
inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). We do not find that
one of ordinary skill would find a graphical illustration of a customer’s
standing or hypothetical standing in a selected peer group necessarily
present in Williams. While it would be possible for one of ordinary skill in
the art practicing the Williams method to provide a graphical illustration of
the customer’s standing or hypothetical standing in a selected peer group,
especially given Williams’ broad disclosure of a peer group associated with
a user, “[i]nherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214
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(CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991).
Because we find that Williams does not expressly or inherently
describe the claimed method and all its limitations, we reverse the rejection
of claim 1, and claims 2-9, 11-14, and 26 that depend on it, under § 102 over
Williams.

Claims 15-19, 22, and 27
Unlike method claims 1-9, 11-14, and 26, these are apparatus claims
which do not require a “feedback page, graphically illustrating data
corresponding to the customer's standing in a selected peer group associated
with the customer … [and] displaying hypothetical feedback information,
graphically illustrating the hypothetical standing of the customer within the
selected peer group” but rather a “survey system operable to … provide a
feedback page graphically illustrating data corresponding to the customer's
standing in a selected peer group associated with the customer … [and]
display hypothetical feedback information graphically illustrating the
hypothetical standing of the customer within the selected peer group”
(claim 15). Neither the Examiner nor the Appellants have appreciated this
distinction.
Given the Examiner’s discussion with respect to claims 16-19, 22 and
27, the Examiner appears to have taken the position that Williams describes
a system comprising a business interface, a customer interface, and a survey
system and having the capability to conduct the tasks claimed. Accordingly,
it would appear that the Examiner presented a prima facie case of
anticipation for claims 15-19, 22 and 27 over Williams. It was then
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incumbent on the Appellants to rebut the Examiner’s rationale for rejecting
the claims. We do not see in the Briefs that the Appellants have done so.
Accordingly, we will sustain the rejection of these claims.

The rejection of claims 10, 12, 20, and 21 under § 103(a) as being
unpatentable over Williams and Official Notice.
Claims 10 and 12
The Examiner did not additionally explain why one of ordinary skill
in the art would be led to the subject matter of claim 1 given Williams. It
appears the Examiner has relied upon the position that Williams describes
the subject matter of claim 1 but further renders obvious the subject matter
of these claims. However, we have found that Williams does not expressly
or inherently describe the subject matter of claim 1. Accordingly, we will
reverse the rejection as to these claims, which depend on claim 1, for the
reasons we used above in reversing the rejection of claim 1, and find that the
Examiner did not meet the initial burden of establishing a prima facie case of
obviousness for the claimed subject matter.

Claims 20 and 21
We will sustain the rejection as to these claims.
The Appellants’ response to the rejection of these claims is that the
“Examiner has yet to cite any documentation to support the taking of
Official Notice in this rejection” (App. Br. 10) and, after the Examiner cited
Hawkins (US 5,497,317), Gerace (US 5,848,396), and Snelling (US
5,826,257) (see Answer 6), that “the Official Notice supported by the
Hawkins, Gerace, and Snelling patents do not include any additional
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disclosure combinable with the Williams patent to be material to
patentability of these claims” (Reply Br. 10).
We are not persuaded by these arguments that the Examiner erred in
the rejection of claims 20 and 21 under § 103 over Williams and Official
Notice as evidenced by Hawkins, Gerace, and Snelling. The Appellants’
arguments do not appear to traverse what Examiner regards as knowledge
that would have been generally available to one of ordinary skill in the art at
the time the invention was made. Moreover, the Examiner has provided
evidence to corroborate that view. Even if one were to interpret the
Appellants’ arguments and comments as constituting a traverse, the
Appellants’ arguments and comments do not appear to constitute an
adequate traverse because the Appellants have not specifically pointed out
the supposed errors in the Examiner’s position, which would include stating
why the noticed facts are not considered to be common knowledge or well-
known in the art as evidenced by Hawkins, Gerace, and Snelling. 27 CFR
§ 1.104(d)(2), MPEP § 707.07(a). An adequate traverse must contain
adequate information or argument to create on its face a reasonable doubt
regarding the circumstances justifying Examiner’s notice of what is well
known to one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728
(CCPA 1971). That has not been done here. Accordingly, we sustain the
rejection as to claims 20 and 21.

The rejection of claims 23-25 under § 103(a) as being unpatentable over
Jones, III and Marsh.
The Appellants argued claims 23-25 as a group (App. Br. 11-14;
Reply Br. 11-14). We select claim 23 as the representative claim for this
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group, and the remaining claims 24 and 25 stand or fall with claim 23.
37 C.F.R. § 41.37(c)(1)(vii) (2007). We will sustain the rejection as to these
claims.
As with apparatus claims 15-19, 22 and 27, claims 23-25 are worded
so as to define the elements of the apparatus in terms of their capabilities.
Claim 23 calls for a system comprising a business interface, a customer
interface and a survey system and each of these elements are defined to be
“operable” to perform certain tasks.
We are satisfied that the Examiner has presented a prima facie case
of obviousness. The Examiner pointed to where in Jones III the claimed
elements, including the capabilities defined by claim 23, are disclosed.
(Answer 6). The Examiner argued that “Jones failed to explicitly teach
demographic data being received directly from the consumer” (Answer 7)
but relied on Marsh as teaching “the advertisement distribution scheduler
used to target advertisements to particular users based on demographic
information stored in a database management system” (Answer 7) to reach
the conclusion that “it would have been obvious to one of ordinary skill in
the art at the time of the invention to receive the customer data directly from
the consumer (through survey). One would be motivated to include a survey
in Jones targeted marketing for the intended purpose of collecting user’s
demographic data, such as user interests, preferences, etc, as taught in
Marsh.” (Answer 7). Therefore, the Examiner articulated an apparent reason
to combine the reference teachings, with a logical underpinning, that would
lead one of ordinary skill in the art to the claimed subject matter and thereby
met the initial burden of establishing a prima face case of obviousness. The
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burden thus shifted to the Appellants to show error in the Examiner’s
analysis.
First, the Appellants argued that “there is no suggestion or motivation
in the Jones III, et al. patent or the Marsh, et al. patent to combine them as
proposed by the Examiner.” (App. Br. 11). Second, the Appellants argued
that “a reasonable expectation of success has not been shown by the
Examiner.” (App. Br. 12). And third, the Appellants argued that “the
Examiner has not shown that the proposed Jones III et al. – Marsh, et al.
combination teaches and suggests all of the claim limitations.” (App. Br.
13). The Appellants conclude that “the Examiner has failed to establish any
of the criteria for a prima facie case of obviousness.” (App. Br. 14). Similar
arguments are made in the Reply Brief (see pages 11-14).
We will address the third argument first.
The argument that the Examiner has not shown all of the claimed
limitations in the prior art is a challenge to the Examiner’s understanding
of the scope and content of the cited references, i.e., a challenge to the first
factual inquiry in determining whether a claimed invention would have been
obvious over cited prior art to one of ordinary skill in the art. But, in that
regard, the Examiner clearly determined that Jones, III disclosed a system
that met the basic elements of the claimed system (i.e., a business interface,
a customer interface and a survey system). (See Answer 6). We do not see
that the Appellants have disputed this. Accordingly, the only question is
whether Jones III and Marsh further disclose that these elements are
“operable” to perform the tasks claimed. That question the Appellants do
not address.
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The Appellants argue instead that the cited references do not show
certain tasks being performed. For example, the Appellants argue that “the
Jones III, et al. patent receives data from content providers accumulated
based on past performance of consumers. Thus, the Jones III, et al. patent
fails to receive data directly from customers as required in the claimed
invention.” (App. Br. 13). However, claim 23 does not require a step of
receiving data directly from customers. Claim 23 requires “a survey system
operable to supply the business data processing system with targeted
marketing reports, the targeted marketing reports dynamically generated
based on a set of decision rules, the set of decision rules dynamically
generated based on data received directly from the consumers.”
Accordingly, claim 23 requires a survey system having the capability to
supply targeted marketing reports of the type claimed to the business data
processing system. While claim 23 requires that the targeted marketing
reports being supplied to the survey system be of the type that are
dynamically generated based on a set of decision rules and where the
decision rules are in turn dynamically generated based on data received
directly from the consumers, claim 23 does not require that any data be
actually directly received from customers. The Examiner clearly stated that
“Jones teaches … a survey system operable to supply the business data
processing system with a targeted marketing reports, the targeted marketing
reports dynamically generated based on a set of decision rules, the set of
decision rules (see col. 13 line 19 to col. 14 line 8) dynamically generated
based on data received directly from the customer (see fig. 7-11, fig. 14, col.
6 line 38 to col. 17 line 45, col. 9 line 7-58).” (Answer 6). And the
Examiner clearly stated that Marsh discloses directly receiving data from
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consumers. (Answer 7). We do not see that the Appellants have challenged
the Examiner’s understanding of the scope and content of Jones, III, and
Marsh. We note that the Appellants did argue that Marsh fails to disclose,
for instance, “the use of decision rules to generate the targeted marketing
reports.” (App. Br. 13). But it is Jones, III, not Marsh, that the Examiner
relied upon to show a survey system operable to supply the business data
processing system with a targeted marketing reports, the targeted marketing
reports dynamically generated based on a set of decision rules. (See Answer
6). For the foregoing reasons, we are not persuaded that the Appellants have
shown error in the Examiner’s understanding of the scope and content of the
cited references.
As to the first argument that the Examiner has not shown a motivation
to combine the disclosures in the cited references that would lead one of
ordinary skill in the art to arrive at the claimed invention, this is not the
standard for determining obviousness.
The Supreme Court decision in KSR has clarified the test for
obviousness. In KSR, the Supreme Court emphasized “the need for caution
in granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious without an explicit application of the teaching,
suggestion, motivation test. In particular, the Supreme Court emphasized
that “the principles laid down in Graham reaffirmed the ‘functional
approach’ of Hotchkiss, 11 How. 248.” Id. (citing Graham, 383 U.S. at 12
(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.
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The operative question in this “functional approach” is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 1740. Here the Examiner explained
that each of the elements of the claimed apparatus was shown in the cited
references and provided some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness for combining
the elements in the manner claimed. “[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.” Id. at 1740, (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282, 96 S.Ct. 1532 (1976)). It was not
necessary, as the Appellants appear to argue, that the Examiner show a
suggestion to combine the teachings of the references in the references
themselves before coming to the conclusion that the claimed method would
have been obvious to one of ordinary skill in the art.
As to the second argument that the Examiner has not shown a
reasonable expectation of success, this too is not the standard for
determining obviousness. In light of KSR, the question of whether there is a
reasonable expectation of success is less an issue where, as here, the
conclusion of obviousness was reached by the Examiner using the rationale
that the claimed combination is no more than the predictable result of
combining the Jones, III, survey system operable to supply the business data
processing system with a targeted marketing reports, the targeted marketing
reports dynamically generated based on a set of decision rules, the set of
decision rules dynamically generated based on data received from the
customer with Marsh’s disclosure of directly receiving data from consumers.
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The question of a reasonable expectation of success plays a greater role in
situations where the rationale employs more of an “obvious to try” reasoning
– a reasoning which the Examiner did not use and which the Examiner did
not need to be rely upon to make the prima facie case of obviousness.
The rejection of claims 23-25 under § 103(a) as being unpatentable
over Jones, III and Marsh is affirmed.

The rejection of claim 28 under §103(a) as being unpatentable over
Williams and Jones, III.
We affirm the Examiner’s rejection of claim 28 under § 103 over
Jones, III and Marsh for the reasons stated above in support of the
affirmance of claim 15 on which claim 28 depends and because the
Appellants have not shown any additional error on the part of the Examiner
in making the instant rejection.
The Appellants argue that “[c]laim 15, from which [c]laim 28
depends, has been shown above to be patentably distinct from Williams, et
al. patent.” (App. Br. 15 and Reply Br. 15). We disagree and refer the
Appellants to our discussion above regarding the rejection of claim 15. The
Appellants also argue that “the Jones III, et al. patent does not include any
additional disclosure combinable with the Williams, et al. patent that would
be material to patentability of these claims.” (App. Br. 15 and Reply Br. 15).
This is an argument challenging the rejection of claim 28 but which simply
states, in whole or in part, that the references do not disclose or suggest
certain claimed features without responding to the Examiner’s reasoning in
establishing a prima facie case of obviousness. “It is not the function of this
court to examine the claims in greater detail than argued by an appellant,
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looking for nonobvious distinctions over the prior art.” In re Baxter
Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991). See also In re Wiseman,
596 F.2d 1019, 1022 (CCPA 1979) (arguments must first be presented to the
board). A general allegation that the art does not teach any of the claim
limitations is no more than merely pointing out the claim limitations. A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. 37 C.F.R.
§ 41.37(c)(1)(vii).

CONCLUSIONS OF LAW
We conclude that:
• the Appellants have shown that the Examiner erred in rejecting claims
1-9, 11-14, and 26 under 35 U.S.C. § 102(e) as being anticipated by
Williams and in rejecting claims 10 and 12 under 35 U.S.C. § 103(a)
as being unpatentable over Williams and Official Notice; and
• the Appellants have not shown that the Examiner erred in rejecting
claims 15-19, 22, and 27 under 35 U.S.C. § 102(e) as being
anticipated by Williams; in rejecting claims 20 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Williams and Official
Notice; in rejecting claims 23-25 under 35 U.S.C. § 103(a) as being
unpatentable over Jones, III and Marsh; and in rejecting claim 28
under 35 U.S.C. § 103(a) as being unpatentable over Williams and
Jones, III.
DECISION
The decision of the Examiner to reject claims 1-28 is affirmed-in-part.
AFFIRMED-IN-PART
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JRG
BAKER BOTTS L.L.P.
2001 ROSS AVENUE
SUITE 600
DALLAS, TX 75201-2980
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