Ex Parte Johnson

Patent Trial and Appeal Board

Dec 16, 2013

10500179 (P.T.A.B. Dec. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/500,179 12/08/2004 Perry L Johnson PJI0104PUSA 5339
22045 7590 12/16/2013
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
SANTIAGO, LUIS F
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
12/16/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PERRY L JOHNSON
____________________

Appeal 2011-011516
Application 10/500,179
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011516
Application 10/500,179

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 9-12. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellant’s invention “relates to a methodology that enables a
standards registrar to meet accreditation requirements of governmental or
quasi-governmental agencies” (Spec. 1, ll. 5-7).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. An audit quotation system comprising:
one or more computers configured to
receive client information including at least an
industry code identifying a type of industry of a product
or service provided by a client, a type of quality audit,
and a number of employees;
receive auditor staffing requirements information,
wherein the auditor staffing requirements information is
based on the number of employees;
generate a formal quotation using a computer
database application for an audit based on the client
information and the auditor staffing requirements
information;

1 Our decision will refer to Appellant’s Appeal Brief (“App. Br.,” filed
December 29, 2010) and Reply Brief (“Reply Br.,” filed May 31, 2011) and
the Examiner’s Answer (“Ans.,” mailed April 13, 2011).
Appeal 2011-011516
Application 10/500,179

3
store formal quotation information in the computer
database application for tracking existing and prospective
clients; and
transmit the formal audit quotation to a salesperson
for delivery to the client.

THE REJECTIONS
The following rejections are before us for review:
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Aycock (US 5,765,138, iss. Jun. 9, 1998) in view of Arrowood
(US 2002/0010614 A1, pub. Jan. 24, 2002).
Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Aycock in view of Arrowood and further in view of
McFarland (US 6,154,753, iss. Nov. 28, 2000).
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Aycock in view of Arrowood and further in view of Weber
(US 2002/0138377 A1, pub. Sep. 26, 2002).
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Aycock in view of Arrowood, further in view of Weber, and further in
view of Lawrence J. Abbott and Susan Parker, Auditor Selection and Audit
Committee Characteristics, Auditing, Fall 2000; 19, 2; ABI/INFORM
GLOBAL, 47-66, 3 (hereinafter referred to as “Abbott”).

ANALYSIS
We are persuaded that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) by Appellant’s argument that Aycock, on which the
Examiner relies, does not disclose or suggest “generat[ing] a formal
quotation using a computer database application for an audit based on the
Appeal 2011-011516
Application 10/500,179

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client information and the auditor staffing requirements information,” as
recited in claim 1 (App. Br. 5).
The Examiner directs our attention to Aycock, column 1, lines 45-48
and column 5, line 66 through column 6, line 13 as disclosing this feature
(Ans. 5 and 13-14). Yet the Examiner has acknowledged that Aycock does
not disclose “receiv[ing] auditor staffing requirements information, wherein
the auditor staffing requirements information is based on the number of
employees” (Ans. 6) – the very information on which claim 1 recites that the
formal quotation is based.
The Examiner points to Arrowood as teaching “‘a process for
employees or personnel to be selected to correspond to client or employer
needs, and a process to collect and interpret feedback on employee,
personnel and client, employer performance’ (Arrowood, ¶ 0044)” (Ans. 6).
And the Examiner concludes that:
[I]t would have been obvious to one of ordinary skill in the art,
at the time of the invention to have modified the system of
Aycock to have incorporated “receive” auditor staffing
requirements “information, wherein the auditor staffing
requirements information is” based on “the number of
employees” as taught by Arrowood, since the claimed invention
is merely a combination of old elements, and in the
combination each element merely would have performed the
same function as it did separately, and one of ordinary skill in
the art would have recognized that the results of the
combinations were predictable.

(Id.).

However, the Examiner does not rely on any combination of Aycock
and Arrowood as disclosing or suggesting a system configured to “generate
a formal quotation . . . based on the client information and the auditor
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Application 10/500,179

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staffing requirements information,” as recited in claim 1. Nor, for that
matter, can we find any support in paragraph [0044] of Arrowood for
Examiner’s finding that “‘receiv[ing]’ auditor staffing requirements
‘information, wherein the auditor staffing requirements information is’ based
on ‘the number of employees’ [is] taught by Arrowood.”
Arrowood discloses a system and method for computer-assisted
staffing of employees for a client, and describes that the preferred
environment for the system is in connection with legal temporary staffing
(see Arrowood, Abstract and para. [0045]). Arrowood describes in
paragraph [0044], on which the Examiner relies, that the system selects
employees to correspond to the client or employer’s needs. However, we
can find nothing in that paragraph that discloses or suggests receiving
staffing requirements information “wherein the . . . staffing requirements
information is based on the number of employees” of the client, as recited in
claim 1.
Therefore, we will not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a).
The Examiner has not established on this record that the secondary
references cited in rejecting claims 9-12 cure the deficiencies of Aycock and
Arrowood, as set forth above. Therefore, we will not sustain the Examiner’s
rejection of claims 9-12, which depend from claim 1, for the same reasons.

Appeal 2011-011516
Application 10/500,179

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DECISION
The Examiner’s rejections of claims 1 and 9-12 under 35 U.S.C.
§ 103(a) are reversed.

REVERSED

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