Ex Parte Felkey et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10051180 (B.P.A.I. Nov. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK A. FELKEY, TYLER J. WEST, SUSAN O. DIEMER,
MICHAEL E. MARCELLIN, DIANE L. SABATINI, ELAINE S. MASON,
DAVID K. BRAVERMAN, and PATRICIA A. BOYER
____________________

Appeal 2009-005992
Application 10/051,1801
Technology Center 2400
____________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and JAY P.
LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed January 22, 2002. Appellants claim the benefit under
35 U.S.C. § 119 of U.S. provisional patent application 60/263,222 filed
January 23, 2001. The real party in interest is MCI Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-005992
Application 10/051,180

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 40 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejection.

Appellants’ invention relates to a method of selling
telecommunications services online (Spec. ¶ [07]). In the words of
Appellants:
[A] logical architecture [is] employed in [a] system
for providing software integration for a
telecommunications services on-line procurement
system …. In Figure 5, the logical architecture
includes a web tier, an application tier, a database
tier and a service availability tool.
(Spec. ¶ [44]).
The web tier is responsible for delivering
web content (e.g., HyperText Markup Language
(HTML) pages, static content, images, Javascript
scripts and cascading style sheets, etc[.]) to the
client machines.
(Spec. ¶ [45]).
The application tier includes [a] presentation
tier framework …. Functionality from the
presentation tier framework … is leveraged to
build a customer portal. This is achieved by
reusing and/or configuring the existing JavaServer
Pages (JSPs) and objects including transition and
display policies of the presentation tier framework.
(Spec. ¶ [48]).
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The following claim illustrates the claims on appeal:
Claim 1:
1. A system for providing software integration
for on-line procurement of telecommunications
offerings, comprising:

a web tier configured to receive a request or
a user action from a web server; and

an application tier coupled to the web tier
and configured to perform order management,
online ordering or user management functions,

wherein the web tier or the application tier
includes software objects extended from general-
purpose software objects to support procurement
of the telecommunications offerings on-line and
custom software objects created to support
procuring of the telecommunications offerings on-
line.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Crawford US 6,014,651 Jan. 11, 2000
Elsbree US 6,834,388 B1 Dec. 21, 2004
(filed Mar. 12, 1999)

REJECTION
The Examiner rejects the claims as follows:

Claims 1 to 40 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Crawford in view of Elsbree.

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We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues involve whether Appellants have shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 103(a). The first issue
specifically turns on whether Crawford and Elsbree render obvious
Appellants’ claimed “web tier,” “application tier,” and “software objects
extended from general-purpose software objects” (claim 1). The second
issue is whether the Examiner properly combined the references.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a system and method for buying services
online. (See claim 1.) Appellants’ claimed system includes a web tier and
an application tier (id.). Either the web tier or the application tier includes
customizable software objects (id.).
Crawford
2. The Crawford reference discloses a system for buying services online.
(See Abstract; col. 2, ll. 14 to 23; col. 15, ll. 31 to 36.) The system may
include two tiers. (See col. 3, ll. 22 to 30.) A first tier may be visible to a
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customer purchasing online services (col. 3, ll. 22 to 25). A second tier may
operate in the background, calling on a database to fulfill a user’s request
(id. at 26 to 30).
Elsbree
3. The Elsbree reference discloses customizable software objects. (See
col. 6, ll. 19 to 21 and 35 to 39.)

PRINCIPLE OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 40
under 35 U.S.C. § 103(a)

The Examiner has rejected the noted claims as being obvious over the
combination of Crawford and Elsbree, pages 3 to 10 of the Examiner’s
Answer.
Appellants argue the Examiner improperly equates Crawford’s access
to a virtual disk drive with the claim limitation “application tier coupled to
the web tier” or any type of “on-line procurement of telecommunications
offerings,” as claim 1 requires (App. Br. 11, top).
We disagree with Appellants’ argument for the following reasons.
We find that Appellants have invented a system and method for buying
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services online (FF#1). Appellants’ claimed system includes a web tier and
an application tier (id.). Either the web tier or the application tier includes
software objects that are customizable (id.). In comparison, the Crawford
reference discloses a system for buying services online (FF#2). Crawford
generally discloses a system that may include two tiers (id.). In Crawford, a
first tier (Appellants’ claimed “web tier”) may be visible to a customer
purchasing online services (id.). The reference discloses a second tier
(Appellants’ claimed “application tier”) that may function in the
background, calling on a database to fulfill a user’s request (id.). In
addition, the Elsbree reference discloses customizable software objects
(FF#3).
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
In accordance with the teachings of In re Ngai (cited above), we read
Appellants’ argued claim phrase “telecommunications offerings” (claim 1)
as being nonfunctional descriptive material. That is, the
“telecommunications offerings” bear no functional relationship to the
limitations of claim 1. Thus, the mere fact that Crawford provides for
procurement of any type of services in an online environment suffices to
meet the claimed “system for providing software integration for on-line
procurement,” as recited in the preamble of claim 1. We further note that
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Crawford’s online services (the claimed “web tier”), which are visible and
accessible to customers, are indeed “coupled,” as claimed, to a backend
database (the claimed “application tier”) (FF#2). We find that Crawford’s
system operates no differently from Appellants’ claimed “application tier
coupled to the web tier.” Accordingly, Appellants have not shown error in
the Examiner’s conclusion of obviousness in this regard.
Next, Appellants contend that Elsbree’s instance object cannot be
equated with “software objects extended from general-purpose software
objects,” as claimed (App. Br. 12, middle).
We do not agree with Appellants. We note that Elsbree is merely
cited by the Examiner for disclosing widely known software programming
methodologies. (See FF#3.) More particularly, the Examiner has pointed to
“real-time interactive control and communication software objects” that
“have interactive capabilities.” (Col. 6, ll. 14 to 19). We find that Elsbree’s
above-stated disclosure reads on the claim limitation “software objects
extended from general-purpose software objects” of claim 1. Accordingly,
we find that Appellants have not shown error in the Examiner’s analysis.
“[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.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn, 441 F.3d at 988).
The Examiner finds that Elsbree’s customizable software objects
would “improve the functionality of Crawford’s system by allowing the
objects to carry additional information for product collection and
distribution.” (Ans. 5, top).
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Appellants dispute the rationale for combining the Crawford and
Elsbree references (App. Br 14, middle). Appellants argue that the rationale
is incorrect because there is no need established by any portion of Crawford
for reuse of existing codes or for dynamically creating objects in a quicker
and more efficient manner (id.).
The Supreme Court’s ruling in KSR extinguished the notion that the
teaching-suggestion-motivation (TSM) test was the only means for
determining obviousness. The Examiner’s proffered rationale for forming
the combination of references need not come from the disclosures
themselves. Instead, the Examiner has applied common sense in fitting the
teachings of the Crawford and Elsbree together like puzzle pieces. (KSR at
402) (holding that “[i]t is common sense that familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
of a puzzle.”) That a person of ordinary skill in the art would consider
Elsbree for its disclosure of standardized software programming techniques
would not have been beyond the grasp of the skilled artisan, as such an
artisan is accorded more than the capabilities of a mere automaton. (KSR at
421)(holding that “[a] person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton.”) Accordingly, we find that
Appellants have not shown error in the combination of the references.
In accordance with 37 C.F.R. § 41.37(c)(1)(vii), Appellants separately
argue claims 2 to 5 (App. Br. 15 to 18). Appellants argue that the Examiner
failed to make a showing for the claimed “reconfigured software objects that
include reconfigured JavaServerPages (JSPs), reconfigured transition
policies, or reconfigured display objects” of claims 2 and 4 (App. Br. 15 to
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16). Appellants further argue that the Examiner failed to make findings for
the claimed “custom software objects that include custom JavaServerPages
(JSPs), custom transition policies, or custom display objects,” as required by
claims 3 and 5 (id. at 17 to 18).
We adopt and endorse the Examiner’s findings with respect to the
separately argued dependent claims. We refer Appellants to the “Response
to Arguments” section of the Examiner’s Answer for further details (Ans. 14
to 15).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown the Examiner erred in rejecting claims 1 to 40.

DECISION
We affirm the Examiner’s rejection of claims 1 to 40.

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

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