Ex Parte Lepari et al

Patent Trial and Appeal Board

Oct 27, 2014

12347163 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN J. LEPARI, JOHN D. ADAMS, JR., MARC CAMPOS,
RALPH C. MORRONE, and JOHN K. FULTON
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Appeal 2012-0036961
Application 12/347,1632
Technology Center 3600
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Before HUBERT C. LORIN, KEVIN W. CHERRY, and
JAMES A. WORTH, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven J. Lepari, John D. Adams, Jr., Marc Campos, Ralph C.
Morrone, and John K. Fulton (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1–20, the only claims pending

1 Our decision references Appellants’ Appeal Brief (“App. Br.”), filed
August 29, 2011, and Reply Brief (“Reply Br.”), filed December 6, 2011,
and the Examiner’s Answer (“Ans.”), mailed October 11, 2011.
2 Appellants identify Verizon Communications, Inc. as the real party in
interest for this appeal (App. Br. 1).
Appeal 2012-003696
Application 12/347,163

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in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ claimed invention is a method that provides for the
efficient collection and reconciliation of service charges to employees of a
company by telecommunications providers as well as the summarization of
those charges at each successive level of management (Spec. ¶¶ 2–3).
Claim 1, which is reproduced below, is illustrative of the subject
matter on appeal.
1. A method comprising:
assigning, by a processor, a unique identification to each
individual of a plurality of individuals;
compiling hierarchical data relating the individuals to
each other;
collecting service data from one or more service
providers corresponding to the plurality of individuals,
wherein the service data includes service charges
associated with services provided to the plurality of individuals;
and
merging the hierarchical data and the service data using
the unique identifications to generate a table of service charges
of the plurality of individuals in a hierarchical format.
(App. Br. 9, Claims App’x).

Rejections
Claims 1, 2, 4–12, and 14–20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Clark (US 7,653,187 B2, iss. Jan. 26, 2010) and
Kleewein (US 5,903,887, iss. May 11, 1999); and

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Application 12/347,163

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Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clark, Kleewein, and Cassidy (US 2006/0282432 A1,
pub. Dec. 14, 2006).
ANALYSIS
Claims 1, 2, 4–12, and 14–20
Appellants argue claims 1, 2, 4–12, and 14–20 as a group (App. Br.
4). We select claim 1 as representative, and claims 2, 4–12, and 14–20 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We are not persuaded by Appellants’ arguments that the Examiner’s
rejection is conclusory and driven by hindsight. Instead, we agree with, and
adopt the Examiner’s response to Appellants’ arguments as set forth at pages
23–25 of the Answer. In this respect, we note that the Examiner’s rejection
contains an element-by-element analysis of the claim with citations to the
references and an explanation of why a person of ordinary skill would
combine Clark and Kleewein (Ans. 14–16). As for Appellants’ contention
that the Examiner’s reasoning is driven by hindsight, we find the Examiner
has provided an articulated reason with rational underpinnings with ample
motivations to modify Clark to include the employee identifier of Kleewein.
Therefore, we reject Appellants’ argument that the combination is based on
impermissible hindsight.
We are also not persuaded by Appellants’ argument that the
Examiner’s rejection is “unreasonable” or that there is nothing in either
Clark or Kleewein to suggest that it would have been obvious to combine
Clark with Kleewein (App. Br. 6–7). To the extent Appellants seek an
explicit suggestion or motivation in the reference itself, this is no longer the
law in view of the Supreme Court’s holding in KSR Int’l Co. v. Teleflex Inc.,
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Application 12/347,163

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550 U.S. 398, 419 (2007). We conclude that a person of ordinary skill in the
art would have combined the teaching of Clark with the teaching of
Kleewein, as explained by the Examiner, in order to allow for easier viewing
by the viewer.
We are also not persuaded by Appellants’ arguments that the
Examiner erred because the combination was not “predictable” and that
there was no reasonable expectation of success (App. Br. 4–5; Reply Br. 3–
5). Instead, we agree with, and adopt the Examiner’s response to
Appellants’ arguments as set forth at page 26 of the Answer. In this regard,
we agree with the Examiner that it would have been well within the
capability of a person of ordinary skill at the time of the invention to modify
the database table of Clark to add the employee identification number of
Kleewein. Thus, we sustain the rejection of claims 1, 2, 4–12, and 14–20.
Claims 3 and 13
Appellants present no separate arguments for claims 3 and 13 aside
from the arguments we considered above for claim 1. Thus, we also sustain
the rejection of claims 3 and 13.

DECISION
The rejections of claims 1–20 are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED
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