Ex Parte Racusin

Patent Trial and Appeal Board

Dec 26, 2018

14466409 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/466,409 08/22/2014
279 7590 12/28/2018
IP Docket
Clark Hill PLC
130 East Randolph Street
Suite 3900
Chicago, IL 60601
FIRST NAMED INVENTOR
Michael A. Racusin
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.
46607-174775 6969
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
IPDocket@clarkhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. RACUSIN
Appeal2017-008624
Application 14/466,409
Technology Center 3600
Before JEREMY J. CURCURI, HUNG H. BUI, and MICHAEL J. ENGLE,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-5, 7, and 9. Claims 6, 8, and 10-11
are cancelled. Claims App. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 1
1 Our Decision refers to Appellant's Appeal Brief ("Br.") filed January 9,
2017; Examiner's Answer ("Ans.") mailed February 20, 2017; Non-Final
Office Action ("Non-Final Act.") mailed April 29, 2016; and original
Specification ("Spec.") filed August 22, 2014.
Appeal2017-008624
Application 14/466,409
STATEMENT OF THE CASE
Various systems and methods for purchasing commodities ( e.g.,
gasoline) at a discount using prepaid or credit cards are known. Spec. ,r 2
(citing CA 2,684,118; KR 2002-00074964; US 7,742,942; US 8,504,465;
US 2006/086787; and 2007 /0276738). "Due to the variance in the local fees
[e.g., taxes and other charges], many discount systems are limited to specific
geographical areas." Spec. ,r 16 (citing US 6,980,960 and US 8,019,694).
However, "[ s ]uch geographical constraints significantly impede the benefits
of such commodity discount system." Spec. ,r 17. As such, Appellant
proposes "a commodities discount card and a method for selling
commodities, such as fuel, that allows a purchaser to purchase a commodity
at a discount without any geographical constraints because the invention
automatically adjusts the price pursuant to location." Spec. ,r 1. In
particular, "the discounted retail price of the commodity is based upon the
raw commodity price not including any local fees [] that are normally added
on." Abstract. In other words, the discount applies only to the commodity,
and not the local taxes and other surcharges. "As such, the discount
commodity system [] can be provided without any geographical constraints."
Abstract.
Claims 1 and 7 are independent. Representative claim 1 is reproduced
below with disputed limitations in italics:
1. A method for operating a Point of Sale (POS)
terminal with an all in one, pre-consumption, anywhere gasoline
discount (APAGD) card having a cash value that enables a
prepaid commodity to be dispensed at the POS terminal at a fixed
unit commodity discount price without discounting local taxes
and fees and allows the cost of the units of the discounted
commodity to be debited to said APAGD card along with the
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Application 14/466,409
undiscounted local taxes and fees applicable to the units of said
commodity, the APAGD card having an initial prepaid cash
value for enabling a pump to be controlled by the POS terminal
up to the current cash value of the prepaid AP AGD card, the
method comprising the steps of:
(a) enabling at least purchaser's account number data
from said AP AGD card to be read by said POS terminal;
(b) enabling POS data including at least the location of
the POS terminal and the purchaser's account number to be
transmitted to a remote server, said server including a database
organized by purchaser account number and the current cash
value in the purchaser's AP AGD account;
( c) automatically determining the maximum number of
units of the discounted commodity that can be pumped at said
POS terminal in response to said AP A GD card being read at said
POS terminal taking into account the local taxes and local
charges applicable to each unit of the discounted commodity
based upon the location of the POS terminal and the current cash
balance of the APAGD card;
( d) automatically enabling a pump at said POS terminal
for said maximum number of units of said commodity
determined in step ( c) to allow gas to be pumped; and
( e) automatically debiting the current transaction of the
commodity and the local taxes and fees from the current cash
value of purchaser's APAGD account in a single transaction.
App. Br. 24 ( Claims App.).
EXAMINER'S REJECTIONS and REFERENCES
(1) Claims 1-5, 7, and 9 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a patent-ineligible "abstract
idea" without significantly more. Non-Final Act. 3-9.
(2) Claims 1, 2, 4, 5, 7, and 9 stand rejected under
35 U.S.C. § I03(a) as being obvious over Wanasek (US 2004/0260632 Al;
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Application 14/466,409
published Dec. 23, 2004) and Klingle (WO 01/16905 Al; published Mar. 8,
2001).
(3) Claim 3 stands rejected under 35 U.S.C. § I03(a) as being
obvious over Wanasek, Klingle, and Fell et al. (US 2008/0313013 Al;
published Dec. 18, 2008).
ANALYSIS
Patent-Eligible Subject Matter
To determine whether subject matter is patent-eligible under § 101,
the Supreme Court has set forth a two part test "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp. Pty. v.
CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). 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. 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); Enfish, 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 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, 134 S. Ct. at 2355 (quoting 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
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Application 14/466,409
[ineligible concept] itself.'" Id. (quoting Mayo, 566 U.S. at 72-73).
"'[W]ell-understood, routine, [and] conventional activit[ies]' previously
known to the industry" are insufficient to transform an abstract idea into
patent-eligible subject matter. Id. at 2359 (quoting Mayo, 566 U.S. at 73).
In rejecting claims 1-5, 7, and 9 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to the abstract idea of "automatically
pricing the total price of [a] commodity by adding the local taxes and local
charges to the price per unit of the commodity" which is considered as "a
fundamental economic practice" and includes limitations that are analogous
to those claims discussed, for example, in buySAFE and OP! Technologies.
Ans. 8 (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed.
Cir. 2014) (holding that "creating a contractual relationship----a 'transaction
performance guaranty"' is an abstract idea); and OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (holding that "offer-based
price optimization" is an abstract idea)). The Examiner also determines the
additional elements in the claims are not sufficient to amount to significantly
more than the judicial exception because: (1) the claims recite "mere
instructions to implement the idea on a computer" and "generic computer
structure that serves to perform generic computer functions [ that are] are
well-understood, routine, and conventional functions"; and (2) "[t]he
claimed invention does not 'improve another technology or technical field,'
'improve the functioning of the computer itself,' [] or 'add meaningful
limitations that amount to more than generally linking the use of the abstract
idea to a particular technology environment."' Non-Final Act. 7-8.
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Application 14/466,409
Alice/Mayo--Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellant argues the
claims are not directed to an abstract idea because: (1) "the Examiner has
overgeneralized the claims"; (2) the claims are directed to "a POS terminal
for dispensing a commodity" that is "not a fundamental economic practice"
because these claims "relate to a method for controlling a POS [point-of-
sale] terminal" and "a computerized system for processing discounted
wholesale gasoline and undiscounted local fees and local taxes at a POS
terminal"; and (3) the claims are similar or analogous to the claims in
Diamond v. Diehr, 450 U.S. 175 (1981) because (i) Appellant's "claims
here, like the claims in Diehr above, are directed to operating a machine,
namely a pump and are not abstract" and (ii) Appellant's "claims at issue,
like the claims in Diehr, improve an existing technological process and are
therefore patent eligible." App. Br. 12-19.
Appellant's arguments are not persuasive. At the outset, we note
Appellant's reliance on Diehr is misplaced because Diehr is not the most
appropriate authority for this case and does not address claims directed to "a
fundamental economic practice" as an abstract idea similar to Appellant's
claims. For example, the Supreme Court in Diehr held that a computerized
process for curing synthetic rubber into a rubber product - the process
including several steps reciting the use of a well-known mathematical
formula and a programmable digital computer - is a patent-eligible
"process" under 35 U.S.C. § 101.
Diehr's Figure 1 is representative of U.S. Patent No. 4,344,142
("Diehr's '142 patent") titled "Direct Digital Control of Rubber Molding
Presses" as reproduced below:
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Application 14/466,409
rl ARRHENIUS REACTION
CONSTANTS FOR COMPOUf'-JD
ACTUAL MOLD
TEMPERATURE
EVERY 10 SECONDS ~
.MPARES CALCULATED CURE
ME WITH ELAPSED CURE
: TIME EVERY SECOND
ACTUATES MOLD OPEf\JING
DATA STORAGE 1-----111 COMPUTER 1--~---11 WHEN CALCULATED CURE
JNPUT SIGNAL TO START
INTERIM TIMING IN COfvlPUTER
CLOSE MOLD
1 MANUALLY
FIG. 1
, TIME EQUALS ELAPSED
j CURE TIME
CONTROLS MOLD PL/\TEN
TEMPERATURE WITH
PROPORTIONAL CONTROL
ALGORITH!v1
As shown in Diehr' s Figure 1, the process of curing synthetic rubber
monitors the temperature of a mold inside a press, and uses a well-known
mathematical formula (i.e., the Arrhenius equation) to calculate the required
cure time based on the measured temperature and to determine when to open
the press and remove the cured, molded rubber, as recited in Diehr' s claims.
'142 patent, 2:17-37, 3:29-4:5. In other words, Diehr's claim requires a
practical application of such a mathematical algorithm, i.e., using a
mathematical algorithm in the context of a molding press to transform
synthetic rubber into cured rubber products.
The Supreme Court in Diehr recognized that ( 1) mere inclusion of an
"abstract idea" in a process does not make the process patent-ineligible, and
(2) even if an "abstract idea" (i.e., mathematical algorithm or formula
embedded in a process) is unpatentable, the overall claimed process-taken
as a whole and resulting in a physical and chemical transformation from
synthetic rubber to cured, molded rubber - falls within the scope of
patentable subject matter. See Diehr, 450 U.S. at 183-89.
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In contrast to Diehr, Appellant's claims and Specification are directed
to "a method for selling commodities at a discount and a discount
commodity system [] that allows a consumer to purchase units of a
commodity at a discounted unit price" and that "does not impose any
geographical constraints on the purchaser since the discounted unit price will
not vary in different locales." Spec. ,r 23, Abstract. As acknowledged by
Appellant, the claims recite "a computerized system for processing
discounted wholesale gasoline and undiscounted local fees and local taxes at
a POS terminal." App. Br. 13.
A more appropriate authority for this case is (1) Bilski v. Kappas, 561
U.S. 593 (2010) where the Supreme Court unanimously held that Bilski 's
method of hedging risk in commodities trading is "a fundamental economic
practice long prevalent in our system of commerce" and, as such, is a patent-
ineligible "abstract idea"; and (2) Alice where the Supreme Court also held
that Alice's "process" claims, like Bilski 's claims, recite a patent-ineligible
"abstract idea" of intermediated settlement risk management - "a
fundamental economic practice long prevalent in our system of commerce,"
i.e., "a building block of the modem economy." Alice, 134 S. Ct. at 2347,
2359.
Based on Appellant's claims and Specification, we agree with the
Examiner that the claims are directed to an abstract idea of "automatically
pricing the total price of [a] commodity [i.e., gasoline at a discount] by
adding the local taxes and local charges to the price per unit of the
commodity" which is considered as a "fundamental economic practice"
similar to the claims in Bilski and Alice. Such activities are squarely within
the realm of abstract ideas. Selling commodities ( e.g., wholesale gasoline)
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Application 14/466,409
at a discount that does not include ( discounted) local taxes and other
surcharges to a purchaser is a fundamental business practice prevalent in our
system of commerce, like (1) the risk hedging in Bilski; (2) the intermediated
settlement in Alice; (3) verifying credit card transactions in CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011);
(4) guaranteeing transactions in buySAFE; (5) distributing products over the
Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
( 6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
and (7) pricing a product for sale in OIP Technologies. Selling commodities
( e.g., wholesale gasoline) at a discount that does not include ( discounted)
local taxes and other surcharges to a purchaser is also a building block of a
market economy and, like risk hedging and intermediated settlement, is an
"abstract idea" beyond the scope of§ 101. See Alice, 134 S. Ct. at 2356.
Separately, we note Appellant's claims 1 and 7 do not improve the
performance of a computer or solve a problem specific to computers or
computer networks. Appellant's 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 Enfish, 822 F.3d at 1336, 1339. Instead, as
recognized by the Examiner, "the claimed invention does not provide a
technical improvement" or "improve an existing technological process."
Ans. 11.
Accordingly, we agree with the Examiner that claims 1-5, 7, and 9 are
directed to an abstract idea of "automatically pricing the total price of [a]
commodity [i.e., gasoline at a discount] by adding the local taxes and local
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Application 14/466,409
charges to the price per unit of the commodity" which is considered as a
"fundamental economic practice." Non-Final Act. 3--4.
Alice/Mayo--Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellant does not argue their
claims contain an "inventive concept." Instead, Appellant simply argues
"the claimed system provides something more than the fundamental and
conventional practices" because "the claims recite operating a pump,
analogous to the situation in Diehr." App. Br. 19.
We disagree. As recognized by the Examiner, operating a pump to
deliver gasoline after the gasoline is sold at a discount without discounting
local taxes and other surcharges is an insignificant post solution activity.
Ans. 11. Alternatively, operating such a pump is an attempt to limit the use
of the abstract idea "to a particular technological environment," which has
long been held insufficient to save a claim in this context. See Alice, 134
S.Ct. at 2358.
According to Alice, 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."' Alice, 134 S. Ct. at 2355 ( quoting
Mayo, 566 U.S. at 72-73). The most relevant Federal Circuit cases re: the
question of an "inventive concept" include (1) DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). Both
involve business-centric inventions that are similar to Appellant's invention.
For example, the Federal Circuit determined that DDR 's claims
contain an "inventive concept" under Alice step 2 because DDR 's claims
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( 1) do not merely recite "the performance of some business practice known
from the pre-Internet world" previously disclosed in Bilski and Alice, but
instead (2) provide a technical solution to a technical problem unique to the
Internet, i.e., a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also
determined that Amdocs' claims contain a sufficient "inventive concept"
because like DDR, Amdocs' claims "entail[] an unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases)" and "improve the performance of the system itself."
Amdocs, 841 F.3d at 1300, 1302.
In contrast to DDR and Amdocs, Appellant's invention does not
provide a technical solution to a technical problem unique to the Internet,
i.e., a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Nor does Appellant's invention entail, like Amdocs,
any "unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)" and "improve the performance of the system
itself." Amdocs, 841 F.3d at 1300, 1302. As such, we find no element or
combination of elements recited in Appellant's claims 1 and 7 that contains
any "inventive concept" or adds anything "significantly more" to transform
the abstract concept into a patent-eligible application. Alice, 134 S. Ct. at
2357. Instead, we agree with the Examiner that the additional elements
recited in Appellant's claims 1 and 7 (e.g., a POS terminal, debit card, and
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pump) do not transform the abstract idea into a patent eligible invention. As
our reviewing court has observed, "after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR, 773 F.3d at 1256 (citing Alice, 134
S. Ct. at 2358).
Additional Argument
Appellant argues that the claims "do not pre-empt the use of a POS
terminal and the use of a commodity card." App. Br. 20. However, this
argument is not persuasive because, although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter" under the Alice/Mayo
framework, "preemption concerns are fully addressed and made moot." Id.
Because Appellant's claims 1 and 7 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
claims 1-5, 7, and 9 under 35 U.S.C. § 101.
Obviousness
In support of the § 103 rejection, the Examiner finds the combination
of Wanasek and Klingle teaches all limitations of Appellant's claims 1 and
7. Non-Final Act. 9-15 (citing Wanasek ,r,r 6-9, 14, 19; Klingle, p. 14).
Appellant disputes the Examiner's factual findings regarding
Wanasek and Klingle. In particular, Appellant presents several arguments
against Wanasek and Klingle, including:
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( 1) "Wanasek simply does not disclose or suggest that the
commodity card disclosed therein can control a POS terminal to
dispense a commodity" and Appellant is "unaware of any POS
terminals that can be operated with credit type cards based on a
'currency' of gallons of gas";
(2) neither Wanasek nor Klingle teaches or suggests "a method for
processing a commodity discount card having a cash value";
(3) "Wanasek does not disclose that his commodity discount card
therein requires any determinations of a maximum number of
units that can be dispensed and enabling the gas pump for that
calculated maximum number"; and
(4) "[t]he Klingle reference does not disclose a system in which the
discount is only applied to the commodity and not the local taxes
and local fees."
App. Br. 5-10. Appellant also argues (1) there is no reason to combine the
references; (2) "the references teach away from a combination" because
Wanasek' s discount system "requires payment of local taxes and local fees
by way of a credit card in a separate transaction" whereas "Klingle teaches
the use of a discount system in which the gas and the local fees and taxes are
discounted"; and (3) the Examiner "has picked and chosen elements of the
references using the claims as a blueprint." App. Br. 12. Appellant further
relies on the Declaration under 37 C.F.R. § 1.132 from the inventor, Michael
A. Racusin, filed on October 26, 2015 to explain the differences between the
W anasek and Klingle references and the claimed invention.
Appellant's arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellant's arguments
supported by evidence. Ans. 3-7. As such, we adopt the Examiner's
findings and explanations provided therein. Id. For additional emphasis,
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we note Appellant cannot show nonobviousness by attacking references
individually where the rejection is based on the combination of references.
In re Keller, 642 F.2d 413,425 (CCPA 1981). "The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference .... Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art." Id.
For example, as correctly recognized by the Examiner, Wanasek
teaches "a prepaid commodity purchase system in which a user purchases a
[] commodity [i.e., gasoline at a discount] using a prepaid commodify [sic]
purchase account [ via prepaid (debit) card]." Ans. 3 ( citing Wanasek ,r 6,
Abstract); see also Wanasek ,r,r 2-3, 9. Similarly, Klingle also teaches the
use of a prepaid fuel card in the context of a gas station shown in Figure 1 A,
where a discount is triggered when the prepaid fuel card is presented at a
point-of-sale (POS) terminal and gasoline is delivered via a pump. Ans. 3
(citing Klingle, p. 14, Abstract).
Klingle's Figure IA is reproduced below:
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44 42 46
r--------- ----------------------- ----------------------- ---------,
; '
f CUSTOMER ID CERTIFICATE CERTIFlCATE !
l READER PROCESSOR GENERATOR / . ' I !
I I
' '
J PAYMENT STATION 54 :
L---------------------------------- ----------------------------------~
48
r---------- ---------------------- ----------, ' ; < I
' ' : FUEL PUMP FUEL PUMP 1 52
l CUSTOMER ID PROCESSOR l
: READER l
I I
I I
I I
I I
! I
50 I CERTIFICATE FUEL PUMP l
l READER CONTROUER 58 •
' ' ' ' : FUEL STATION 240
1 L---------~~-~~~~~~-----------------------~--~
FIG. 1 A
FUEL
DATABASE
Klingle's Figure IA shows the use of a prepaid card at POS terminal 54 and
gas station 240 to receive discounted gasoline.
Contrary to Appellant's arguments, Klingle (not Wanasek) teaches the
use of a prepaid commodity card having a cash value in the context of a POS
terminal to dispense gasoline, as shown in Figure 1 A. Ans. 3 ( citing
Klingle, p. 14, Abstract). Likewise, Wanasek (not Klingle) teaches "a
prepaid commodity purchase system in which a user purchases a []
commodity [i.e., gasoline at a discount] using a prepaid commodify [sic]
purchase account [via prepaid (debit) card]." Id. (citing Wanasek ,r 6,
Abstract); also see Wanasek ,r,r 2-3, 9. As correctly recognized by the
Examiner, Wanasek also teaches that "the discount price is not applied to the
[local] taxes and fees" which can vary in various localities. Ans. 7 ( citing
Wanasek ,r 19). As such, we agree with the Examiner that "it would have
been obvious ... to modify the fuel card of Wanasek by combining the fuel
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card authorization of Klingle, because doing so would prevent a user from
pumping more fuel than the prepaid amount" and "[t]he combination would
prevent a user from pumping more fuel than the prepaid amount" and "gas
fraud." Non-Final Act. 13-14; Ans. 7. "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results" from "the predictable use of prior art
elements according to their established functions." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 416-17 (2007). Because Klingle provides the natural
environment for W anasek, we are not persuaded that either W anasek or
Klingle teaches away from the combination. Moreover, mere description of
an implementation in the prior art that differs from Appellant's claimed
invention, without more, does not show the prior art is "teaching away" from
the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
With respect to Appellant's "impermissible hindsight" argument, that
argument is not persuasive because "the weight of the evidence shows that
the proffered combination is merely a predictable use of prior art elements
according to their established functions." See In re Cree, 818 F.3d 694, 702,
n.3 (Fed. Cir. 2016) (Appellant's hindsight argument is ofno moment where
the Examiner provides a sufficient, non-hindsight reason to combine the
references).
Lastly, we have considered the Declaration under 37 C.F.R. § 1.132,
but found Mr. Racusin's statements unpersuasive as to the legal question of
obviousness. Obviousness is a question of law based on underlying factual
findings, In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including what
a reference teaches, In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992), the
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existence of a reason to combine references, In re Hyon, 679 F.3d 1363,
1365---66 (Fed. Cir. 2012), and whether the prior art teaches away from the
claimed invention, In re Mouttet, 686 F.3d 1322, 1330 (Fed. Cir. 2012).
Mr. Racusin's statements are helpful, but are not dispositive to the legal
question of obviousness based on the record.
For these reasons, we sustain the Examiner's rejection of independent
claims 1 and 7 and dependent claims 2-5 and 9, argued for their dependency
on claim 1.
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1-5, 7, and 9 under 35 U.S.C. § 101
and§ 103.
DECISION
As such, we AFFIRM the Examiner's Non-Final Rejection of claims
1-5, 7, and 9 under 35 U.S.C. § 101 and§ 103.
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).
AFFIRMED
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