Ex Parte Rajkumar et al

Patent Trial and Appeal Board

Jan 17, 2018

12035097 (P.T.A.B. Jan. 17, 2018)

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.
12/035,097 02/21/2008 Vijayanand Rajkumar T9049-19634US01 9314
74739 7590 01/19/2018
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102-3833
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/19/2018 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIJAYANAND RAJKUMAR and
RHONDA STIEBER
Appeal 2016-005558
Application 12/035,097
Technology Center 3600
Before CARL W. WHITEHEAD JR., AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1, 3, 5—11, 13, 15—18, and 20, which
are all of the pending claims.2 * 4We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Oracle International
Corporation. (App. Br. 2.)
2 Claim 14 was canceled in an Amendment dated November 4, 2010; claims
2 and 12 were canceled in an Amendment dated March 18, 2011; and claims
4 and 19 were canceled in an Amendment dated December 19, 2014. (See
also App. Br. 17—22 (Claims App’x).) Per the Advisory Action dated
September 1, 2015 (“Adv. Act.”), Applicants’ proposed Amendment after
the Final Action was not entered. (Adv. Act. 1.)
Appeal 2016-005558
Application 12/035,097
STATEMENT OF THE CASE
Introduction
According to Appellants, the claimed invention “is directed generally
to document processing, and in particular to contract authoring.” (Spec.
11.)
Exemplary Claim
Claims 1,9, 11, and 13 are independent. Claim 1, reproduced below
with the disputed limitations italicized, is exemplary of the claimed subject
matter:
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor,
causes the processor to author a contract by:
generating a contract template designer user interface
configured to create or modify contract templates, wherein the
contract template designer user interface comprises a plurality
of attributes organized in a predetermined way, wherein the
contract template designer user interface is generated in
response to a request from a designer user for a type of
contract;
providing a catalog of new contract attributes to add to
the contract template designer user interface, wherein the
catalog is based on the type of contract, wherein the new
contract attributes include terms and conditions of the contract
based on the type of contract, and user defined questions based
on the type of contract;
receiving, from the designer user, a modification request
to modify one or more of the plurality of attributes of the
contract template designer user interface or add one or more of
the new contract attributes from the catalog;
creating a modified contract template based on the
modification request;
2
Appeal 2016-005558
Application 12/035,097
rendering a contract creation user interface that
corresponds to the modified contract template to an end user to
author the contract, wherein a role of the end user determines
which contract creation user interface of a plurality of contract
creation user interfaces is rendered;
receiving input information from the end user for the one
or more attributes; and
generating the contract based on the input information,
wherein the contract is integrated with a contract execution
system that is coupled to the contract creation user interface.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Baker US 2007/0157079 Al July 5, 2007
Lee et al. (“Lee”) US 2008/0046265 Al Feb. 21,2008
Moduga et al. (“Moduga”) US 2008/0275798 Al Nov. 6, 2008
Rejections3
Claims 1, 3, 5—11, 13, 15—18, and 20 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Claims 1, 6—9, 11, 13, 15—18, and 20 stand rejected under 35 U.S.C.
§103 (a) as being unpatentable over Lee and Baker. (Final Act. 6—20.)4
Claims 3,5, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Baker, and Moduga. (Final Act. 20-21.)
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011.
4 The Examiner’s reference to canceled claims 4 and 19 in the rejection
under 35 U.S.C. § 103(a) (Final Act. 6) is deemed to be a typographical
error, as the cover page of the Final Rejection refers, correctly, to only
claims 1, 3, 5—11, 13, 15—18, and 20 as pending and rejected (Final Act. 1).
3
Appeal 2016-005558
Application 12/035,097
Issues
(1) Whether the Examiner erred in determining that claims 1,3,5—
11, 13, 15—18, and 20 are directed to patent-ineligible subject matter.
(2) Whether the Examiner erred in finding that the combination of
Lee and Baker teaches or suggests “generating a contract template designer
user interface . . . generated in response to a request from a designer user for
a type of contract,” “providing a catalog of new contract attributes to add to
the contract template designer user interface,” and “rendering a contract
creation user interface that corresponds to the modified contract template to
an end user to author the contract,” as recited in independent claim 1 and
commensurately recited in independent claims 9, 11, and 13.
ANALYSIS
A. Section 101 Rejection
Patent eligibility is a question of law. Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012).
The Supreme Court has set forth an analytical “framework 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. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71—73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are “directed to” a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLCv. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
4
Appeal 2016-005558
Application 12/035,097
be directed to an abstract idea, then we consider under step two whether the
claims contain an “inventive concept” sufficient to “transform the nature of
the claim into a patent-eligible application.” Alice, 134 S. Ct. at 2355
(quotations and citation omitted).
Noting that the two stages involve “overlapping scrutiny of the
content of the claims,” the Federal Circuit has described “the first-stage
inquiry” as “looking at the ‘focus’ of the claims, their ‘character as a
whole,’” and “the second-stage inquiry (where reached)” as “looking more
precisely at what the claim elements add—specifically, whether, in the
Supreme Court’s terms, they identify an ‘inventive concept’ in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed.” Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that “all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that in itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfish, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that the claims are directed towards an “abstract
idea” of “creating a contract document based on user input (i.e. generating a
contract template, providing a catalog of new contract attributes, receiving a
modification request, creating a modified contract template, rendering a
contract creation user interface, receiving input information, and generating
5
Appeal 2016-005558
Application 12/035,097
the contract),” which the Examiner finds is “a fundamental business
practice.” (Final Act. 5.)
Appellants argue error by asserting “the Examiner has failed to
provide any evidence that the claims are directed to an abstract idea.” (App.
Br. 3.) We disagree that the Examiner was required to provide such
evidence as part of the Examiner’s prima facie case. Federal Circuit has
repeatedly noted that “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the Office carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Put simply, all that is required of the Office is that it set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner as to
meet the notice requirement of § 132. Id.', see also Chester v. Miller, 906
F.2d 1574, 1578 (Fed. Cir. 1990) (noting that section 132 “is violated when
a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection”).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the USPTO’s “2014 Interim Guidance on
Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the Final Office Action was mailed. Specifically, the
6
Appeal 2016-005558
Application 12/035,097
Examiner notified Appellants that claims 1,3, 5—11, 13, 15—18, and 20 are
directed to “a fundamental business practice” of “creating a contract
document based on user input”; that this is an abstract idea; and that the
claims do not include limitations that are “significantly more” than the
abstract idea itself. (Final Act. 5, 22—24.) In so doing, the Examiner
notified Appellants of the reasons for the rejection “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C. § 132. We find,
therefore, that the Examiner set forth a prima facie case of patent-
ineligibility such that the burden of production then shifted to Appellants to
demonstrate that the claims are patent-eligible.
Appellants further argue “the Examiner is ignoring most of the
limitations of the claims, and is over-generalizing the claims.” (App. Br. 4.)
In particular, Appellants argue that “as discussed above, the claims are more
specifically directed to ‘generating a contract template document based on
user input and then authoring a contract document using the generated
contract template and additional user input.’” (Id.) Appellants appear to be
arguing that application of the abstract idea in the context of computer­
generated templates removes the claims from the realm of being directed to
an abstract idea. We disagree. As the Supreme Court has said, “if a claim is
directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
nonstatutory.” Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting In re
Richman, 563 F.2d 1026, 1030 (CCPA 1977)). In addition, the Supreme
Court and the Federal Circuit have repeatedly made clear that “merely
limiting the field of use of the abstract idea to a particular existing
7
Appeal 2016-005558
Application 12/035,097
technological environment does not render the claims any less abstract.”
Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016).
Appellants further argue the Examiner failed to ensure that the
claimed concept is “similar to at least one concept that the courts have
identified as an abstract idea.” (App. Br. 4 (citing July 2015 Update:
Subject Matter Eligibility).) The Examiner cannot be faulted for not
identifying similar concepts identified as ineligible by the courts because the
Final Action issued before the July 2015 Update that Appellant references.5
(See id.) Moreover, we observe that several Federal Circuit decisions have
recognized that claims that simply provide user interfaces for organizing and
manipulating data, like those at issue here, are patent-ineligible. See, e.g.,
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237, 1240-41 (Fed. Cir.
2016) (providing a GUI interface to generate menus, i.e., “list[s] of options
available to a user displayable on a computer,” with certain functions); see
also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369-70 (Fed. Cir. 2015) (providing an interactive interface to the user).
In the Answer, the Examiner also noted that the recitation in the
claims of “generating a contract template based on user input” is “similar to
the holdings of Wells Fargo which explicitly stated that the concepts of
collecting data, recognizing certain data within the collected data set, and
storing the recognized data, is abstract.” (Ans. 4.) See Content Extraction
and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343
(Fed. Cir. 2014) (addressing claims including “interactive template creation
5 The Final Action was mailed June 18, 2015, the July 2015 Update issued
on July 30, 2015, and the Appeal Brief was filed November 10, 2015.
8
Appeal 2016-005558
Application 12/035,097
mode”), cert, denied, 136 S. Ct. 119 (2015). The Examiner further noted
that “[t]his is exactly what the claimed invention is doing. It is simply
receiving information and generating a document.” (Ans. 4.) We agree.
Thus, at step one of the analysis, we are not persuaded that the
Examiner erred in determining that the claims are directed to a patent-
ineligible subject matter—that is, to an abstract idea.
Step Two: Whether Additional Elements Transform The Idea Into
Patent-Eligible Subject Matter
Having found that the claims are directed to an abstract idea, the
Examiner also finds that the additional elements or combinations of
elements beyond the abstract idea do not amount to “significantly more”
than the abstract idea itself, but instead “amount[] to no more than a
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry.” (Final Act. 5.)
Appellants argue the Examiner’s finding is in error because “the
present claims recite functionality that goes well beyond the mere concepts
of simply retrieving, comparing and combining data using a computer.”
(App. Br. 5.) In particular, Appellants emphasize that their claimed
invention provides “two distinct and different UIs [user interfaces] (a
contract template designer UI and a contract creation UI)” and does so for
“two distinct and different users” for “two distinct and different purposes.”
{Id. (emphasis omitted).) Appellants further argue that “the use of a
computer to provide respective UI[’]s for generating contract templates and
for authoring contracts is clearly a technical solution.” (App. Br. 5.)
Appellants do not, however, persuasively argue why the cited claim
limitations (e.g., a “contract template designer user interface” and a
9
Appeal 2016-005558
Application 12/035,097
“contract creation user interface”) contain an inventive concept that
transforms the abstract idea into patent-eligible subject matter. As the
Examiner noted, generating contract documents is a fundamental economic
practice. (Final Act. 5.) And although Appellants assert that the use of
computers to perform the recited function is a “technical solution,” the
Supreme Court has explained that “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice Corp., 134 S. Ct. at 2358. Thus, automating the
generation of contract documents using a computer does not transform
Appellants’ claims into patent-eligible subject matter. (See also Ans. 5.)
Unlike the situation addressed in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), for example, Appellants do not claim
to change how the underlying technology operates. (See Ans. 6.) Claim 1
calls for a “processor” that executes “instructions” to carry out the recited
steps. The Specification describes a generic computer system, including a
processor that “may be any type of general or specific purpose processor.”
(Spec. 118.) Broadly but reasonably construed, the computer technology
recited in claim 1 covers implementation of the invention on generic
computer systems. Moreover, the tasks recited in claim 1—such as
generating user interfaces, storing and manipulating data, and generating
documents—are common computer functions. Thus, contrary to Appellants’
argument, the solution here is not a “technical solution”; rather, the solution
here is rooted in routine use of conventional computer technology to carry
out the abstract idea of generating contract documents. (See also Ans. 4—5.)
We are similarly unpersuaded by Appellants’ argument that “the
recited claims provide improvements to the functioning of the computer.”
10
Appeal 2016-005558
Application 12/035,097
(App. Br. 7—8.) We note that there is a fundamental difference between
computer functionality improvements, on the one hand, and uses of existing
computers as tools to perform a particular task, on the other. Indeed, the
Federal Circuit applied this distinction in Enfish in rejecting a § 101
challenge because the claims at issue focused on a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data, and not merely on asserted advances in uses to which
existing computer capabilities could be put. Enfish, 822 F.3d at 1335—36.
We find no parallel here between the claims before us and the claims
in Enfish nor any comparable aspect in the claims before us that represents
“an improvement to computer functionality,” i.e., an improvement in the
way a computer carries out its basic functions. The alleged advantages that
Appellants tout do not concern an improvement to computer capabilities, but
instead relate to an alleged improvement in generating contract documents
for which a computer is used as a tool in its ordinary capacity—that is,
providing a user interface to receive and manipulate data to generate a
document.
With regard to Appellants’ argument regarding “whether the claim
preempts an abstract idea” (App. Br. 6), we are also not persuaded of error.
There is no dispute that the Supreme Court has described “the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption.” See Alice Corp., 134
S. Ct. at 2354. However, characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the sole test
for patent eligibility. As our reviewing court has explained: “The Supreme
11
Appeal 2016-005558
Application 12/035,097
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 134 S. Ct. at 2354). Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id. (See also Ans. 6—7.)
Appellants also argue the Examiner failed to consider the claim
elements “in combination,” and failed, in particular, to consider that the
claim elements “taken in combination, are both novel, innovative, and
amount to significantly more.” (App. Br. 8—9.) We disagree; the Examiner
explicitly points out that each claim was considered as a whole. (Final Act.
5; see also Ans. 7.) To the extent that Appellants maintain that the claims
necessarily amount to “significantly more” than an abstract idea because the
claims are allegedly patentable over the asserted prior art references,
Appellants misapprehend the controlling precedent. Although the second
step in the Mayo/Alice framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for “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.
Although we do not agree that the claims at issue are nonobvious, as noted
below, we nevertheless observe in the context of the § 101 analysis that even
a novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
12
Appeal 2016-005558
Application 12/035,097
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter, or in rejecting on the same basis independent
claims 9, 11, and 13, as well as dependent claims 3, 5—8, 10, 15—18, and 20,
which Appellants do not argue separately. (App. Br. 3.)
B. Section 103(a) Rejections
We have reviewed the Examiner’s rejection under 35 U.S.C. § 103(a)
in light of Appellants’ arguments the Examiner has erred. We disagree with
Appellants’ conclusions and we adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 6—21, 24—25); and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 8—
11). We concur with the conclusions reached by the Examiner, and we
highlight the following points for emphasis.
The Examiner finds the combination of Baker and Lee teaches or
suggests the limitations of claim 1. (Final Act. 6—9, 24—25.) With regard to
the disputed “user interface” limitations, the Examiner relies particularly on
Lee. {Id. (citing Lee 23—30).) Lee discloses a method for creating
contracts using a computer, wherein—if no suitable contract template
already exists—a “contract administrator” will “create[] a contract template
based on the information of the desired contract through the contract
template creating module 120.” (Lee 128.) According to Lee, creating the
template includes “setting contract clauses, setting an allowable range of the
contract clauses that can be modified by the user, [and] setting data types
that can be added to the contract template by the user and storing the
contract template in the database 40.” {Id.) Further according to Lee, once
13
Appeal 2016-005558
Application 12/035,097
the contract template has been created, a user may obtain the template from
the database, at which point the user “modifies the contract clauses” as
desired and then “applies the contract template to complete the desired
contract.” {Id. at || 30—34.) The Examiner finds that Lee teaches:
rendering a user interface that corresponds to a customized
contract template stored in the database when a user (i.e. end
user) requests] to author a contract based on a customized
contract template stored in the database, wherein the user request
for a contract template determines which user interface
displaying the requested contract template will be displayed.
(Final Act. 25.)
Appellants argue the Examiner’s findings are in error because “the
prior art fails to disclose designing a contract template by a first user via a
first UI and providing the contract template to a second user via a second UI
for authoring a corresponding contract.” (App. Br. 9 (emphases added).)
Appellants further argue “Lee only describes a single UI that provides
already prepared/existing contract templates to be used by a single user for
authoring contracts” and that “Lee is completely silent regarding separate
UIs used by separate users for creation of contract templates and for
authoring contracts using such contract templates, respectively.” {Id. at 10.)
Appellants also argue “Lee is completely silent regarding selection of a UI
based on a user role.” {Id. at 12.)
We disagree. As the Examiner finds, and we agree, “[a]n interface is
merely a way of communicating with [a] computer system.” (Ans. 9.) The
Examiner finds Lee discloses two user interfaces when disclosing, first,
creation of the contract template by a contract administrator, and also
disclosing, second, creation of a customized contract based on that template
by an end user. {Id. at 8—9; see also Final Act. 6.) The Examiner thus finds,
14
Appeal 2016-005558
Application 12/035,097
according to Lee: “[o]ne interface is creating the template. The other
interface is creating the actual contract.” (Ans. 9.) More particularly, the
Examiner finds, and we agree, Lee discloses the claimed “contract template
designer user interface” that is “generated in response to a request from a
designer user” by disclosing creation of a contract template (first user
interface) by a contract administrator (designer user). (Ans. 8 (citing Lee
H 22—23).) The Examiner also finds Lee discloses the claimed “contract
creation user interface” that is used by an “end user to author the contract”
by disclosing a user’s of the template to create a customized contract and
generating that contract. (Ans. 8—9 (citing Lee Tflf 23—30); final Act. 7—8.)
Thus, the Examiner finds Lee discloses both user interfaces as recited in
claim 1, as well as use of those interfaces by different users.
We agree the Examiner’s findings are supported by the teachings of
Lee. We also determine that Appellants’ arguments, which are directed at
an incorrect characterization of the Lee reference, do not persuasively rebut
those findings.
The Examiner further finds Lee does not explicitly disclose
“providing a catalog of new contract attributes to add to the contract
template designer user interface” as recited in claim 1, and relies on Baker in
combination with Lee as providing that teaching, (final Act. 8—9.)
Appellants argue this finding is in error because the “lists” of items taught
by Baker, which the Examiner maps to the claimed “catalog,” are “used in
generating a contract and not a contract template.” (App. Br. 13.)
Appellants argue the Examiner has improperly separated the elements of the
disputed limitation. {Id. at 13—14.)
15
Appeal 2016-005558
Application 12/035,097
We disagree. As the Examiner correctly points out (Ans. 24—25),
Appellants are attacking Baker singly for lacking a teaching (“contract
template designer user interface”) that the Examiner relied on a combination
of references to show. Particularly, the Examiner points to Baker in
combination with Lee for this limitation. (Final Act. 6, 24—25; see also Ans.
10—11.) It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). Appellants
argue a finding the Examiner never made and therefore is unavailing to
show Examiner error.
For the foregoing reasons, we are not persuaded of error in the
Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1, or of
independent claims 9, 11, and 13, which are argued collectively with claim
1. (App. Br. 9, 15.) We, therefore, sustain the rejection of independent
claims 1,9, 11, and 13 as unpatentable over the combination of Baker and
Lee, along with the rejection of dependent claims 6—8, 15—18, and 20, which
are not separately argued. (Id.)
We likewise sustain the Examiner’s obviousness rejection of
dependent claims 3,5, and 10 over Lee and Baker and the additionally cited
prior art listed above (Moduga). Appellants have not particularly pointed
out errors in the Examiner’s reasoning regarding the additional teachings of
the further cited art as applied to these claims, but argues these claims
collectively with the other claims. (App. Br. 9, 15.)
16
Appeal 2016-005558
Application 12/035,097
CONCLUSION
In summary:
Claims
Rejected
Basis References) Claims
Affirmed
Claims
Reversed
1,3,5-11,
13, 15-18,
and 20
$ I«1 N/A 1,3,5-11, 13,
15—18, and 20
None
1,6-9,11,
13, 15-18,
and 20
§ 103(a) Lee and Baker 1,6-9, 11, 13,
15—18, and 20
None
3, 5, and 10 § 103(a) Lee, Baker, and
Moduga
3, 5, and 10 None
Summary 1,3,5-11, 13,
15—18, and 20
None
DECISION
The Examiner’s 35 U.S.C. § 101 rejection of claims 1, 3, 5—11, 13,
15—18, and 20 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1, 3, 5—11,
13, 15—18, and 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)(l)(iv).
AFFIRMED
17