United
States Patent & Trademark Office
FORMULATING
AND COMMUNICATING REJECTIONS
UNDER 35 U.S.C. 103 FOR APPLICATIONS DIRECTED TO
COMPUTER-IMPLEMENTED BUSINESS METHOD INVENTIONS
I.
Introduction
The
U. S. Patent & Trademark Office (USPTO) examines patent applications
to determine whether the statutory conditions of patentability have been
satisfied. The primary duty of the patent examiner is to perform a search
of the relevant prior art and determine if the claimed subject matter
is patentable.
As
is the case for inventions in any field of technology, patentability determination
under 35 U.S.C. 102 and 103 of a claimed computer-implemented business
method invention begins with a comparison of the claimed subject matter
to what is known in the prior art. If no differences are found between
the claimed invention and the prior art, the corresponding claims are
rejected under 35 U.S.C. 102 as lacking novelty. If the prior art does
not identically disclose the claimed invention but would have suggested
the claimed invention to one of ordinary skill in the art, the corresponding
claims are rejected as being unpatentable under 35 U.S.C. 103.
Patent
examiners carry the responsibility of making sure that the standard of
patentability enunciated by the Supreme Court in Graham v. John Deere
is applied in each and every case. The four factual inquiries to determine
obviousness enunciated by the Supreme Court in Graham are (1) determine
the scope and contents of the prior art, (2) ascertain the differences
between the prior art and the claims in issue, (3) resolve the level of
ordinary skill in the pertinent art, and (4) evaluate evidence of secondary
considerations.
The
examiner bears the initial burden of factually supporting any prima
facie conclusion of obviousness. If the examiner does not produce
a prima facie case, the applicant is under no obligation to submit
evidence of nonobviousness. If, however, the examiner does produce a prima
facie case, the burden of coming forward with evidence or arguments
shifts to the applicant who may submit additional evidence that the claimed
invention possesses improved properties not expected by the prior art.
The initial evaluation of prima facie obviousness thus relieves
both the examiner and applicant from evaluating evidence beyond the prior
art and the evidence in the specification as filed until a case has been
made that the prior art would have suggested the claimed invention to
one of ordinary skill in the pertinent art.
This
paper discusses the evaluation of obviousness in the USPTO. The procedure
for gathering and evaluating the relevant evidence is the subject of Part
II, and the analysis of that evidence is the subject of Part III. Communication
of a rejection in the written Office action, including representative
examples involving business methods, is the subject of Part IV.
II.
The Basic Factual Inquiries
- The
Graham inquires
The
basic factual inquires guiding the search and evaluation of the prior
art were outlined in 1966 by the Supreme Court in Graham v. John Deere
as follows:
(1)
Determining the scope and content of the prior art;
(2)
Ascertaining the differences between the prior art and the claims in issue;
(3)
Resolving the level of ordinary skill in the pertinent art; and
(4)
Evaluating any objective evidence of nonobviousness (i.e., so-called
"secondary considerations").
The
examiner first determines the most probable field of search for the invention
as claimed and described in the specification of the patent application.
The most probable field of search includes the same field of applicant’s
endeavor as well as analogous areas. The examiner must also determine
the content of the prior art. The content of the prior art is determined
at the time the invention was made to avoid hindsight. These inquiries
determine the scope and content of the prior art. Second, the examiner
determines the differences between the prior art and the claim(s). Ascertaining
the differences between the prior art and the claims requires interpreting
the claim language and considering both the claimed invention and the
prior art reference as a whole. Third, the examiner determines the level
of ordinary skill in the art. Factors that may be considered in determining
level of ordinary skill in the art include (1) the educational level of
the inventor, (2) type of problems encountered in the art, (3) prior art
solutions to those problems, (4) rapidity with which innovations are made,
(5) sophistication of the technology, and (6) educational level of active
workers in the field.
B.
Gathering the Facts
The
basic factual inquiries outlined in Graham are normally carried
out by:
(1)
Determining where to search and what to search for;
(2)
Determining whether art found during the search qualifies as "prior
art;"
(3)
Determining the relevancy of each piece of prior art to the claimed
subject matter. (i.e., which piece of art is closest to the claimed
invention, what are the differences between the closest prior art
reference and the claims, and where are the individual differences
shown in the prior art).
This
procedure is discussed in detail in the following sections.
1.
Determining where to search and what to search for.
The
question asked by 35 U.S.C. 103 is whether the "subject matter as
a whole" would have been obvious at the time of the invention. In
determining where to search and what to search for, the examiner must
consider the invention "as a whole."
a.
What to search for:
The
scope of the claimed invention must be clearly determined prior to searching.
During patent examination, the claims are given the broadest reasonable
interpretation consistent with the specification. The search should not
be limited only to the literal elements set forth in the claims. The search
should, insofar as possible, also cover all subject matter which the examiner
reasonably anticipates might be incorporated into applicant’s amendment.
The initial search should be sufficiently complete such that only an update
search is needed in the second action, unless necessitated by amendments
to the claims by the applicant in reply to the first Office action.
b.
Where to search:
In
the examination of an application for patent, an examiner must conduct
a thorough search of the prior art. Planning a thorough search of the
prior art requires three distinct steps by the examiner: (1) identifying
the field of search; (2) selecting the proper tool(s) to perform the search;
and (3) determining the appropriate search strategy for each search tool
selected.
When
determining the field of search, three reference sources must be considered
– domestic patents, foreign patent documents, and nonpatent literature
(NPL). None of these sources can be eliminated from the search unless
the examiner has and can justify a reasonable certainty that no references,
more pertinent than those already identified, are likely to be found in
the sources(s) eliminated. The field of search should be prioritized,
starting with the area(s) where the invention would most likely be found
in the prior art. The highest probability of finding the closest prior
art reference is in the same "field of endeavor" as the claimed
invention. This is the basic search area which contains the largest number
of claimed elements found in combination. Differences not found in the
inventor’s field of endeavor are then searched in, analogous arts, i.e.,
those which address the same or a similar problem with which the inventor
was involved.
Having
determined the field of search, the examiner should then determine what
search tools should be employed in conducting the search. Examiners are
provided access to a wide variety of both manual and automated search
tools. Choice of search tools is a key factor in ensuring that the most
relevant prior art is found during the search. The choice of search tools
to be used is based on the examiner’s knowledge of the coverage, strengths
and weaknesses of the available search tools that are appropriate for
use in an examiner’s assigned art. Search tool knowledge is particularly
important for examiners in arts (e.g., very active, high technology) where
patent documents may seriously lag invention and, consequently, represent
a reference source of limited value. These examiners must take special
care to ensure that their searches include consideration of NPL and employ
the effective use of tools specialized to cover NPL pertinent to their
search needs.
Having
determined what search tool(s) should be used to conduct the search, the
examiner should then determine the appropriate search strategy for each
search tool selected. The appropriate search strategy should be determined
by the examiner on a case-by-case basis along with consultation with other
examiners and/or supervisory patent examiners, where appropriate.
2.
Determining whether art found during the search qualifies as "prior
art" under 35 U.S.C. 102.
Art
found during the search must qualify as "prior art" as defined
by 35 U.S.C. 102 before it can be used to reject a claimed invention.
This involves determination of when art became public, who was the source
of the art (e.g., the inventor or another party), and whether the art
satisfies the enablement provision of 35 U.S.C. 112, first paragraph.
Subject matter that is prior art under 35 U.S.C. 102 can be used to support
a rejection under 35 U.S.C. 103.
Prior
art typically includes documentary information in published form and certain
types of non-documentary information, as discussed below.
a.
Documentary information
Publicly
available documents, such as issued patents and printed publications,
are most commonly used in prior art rejections. A reference is a "printed
publication" if it is accessible to the public. Printed documents
usually have specific publication dates that make it easy to objectively
determine if they qualify as prior art under 35 U.S.C. 102.
An
electronic publication, including an on-line database or Internet publication,
is considered to be a "printed publication" within the meaning
of 35 U.S.C. 102(a) and (b) provided the publication was accessible to
persons concerned with the art to which the document relates.
b.
Non-documentary information
Publicly
available information in non-published form may also qualify as prior
art. Common examples include admissions by the applicant, well-known scientific
principles, or common knowledge in the art.
(i)
Admissions
Statements
made in the specification or in other papers submitted during prosecution
that certain information was known to the applicant prior to the date
of invention constitutes prior art. An admission of prior art can be used
for any purpose, including rejections under 35 U.S.C. 103. It is not necessary
to cite a corroborating reference to support the admission. However, the
applicant may later assert that a statement was not actually intended
as an admission of prior art, or that the intended scope of a statement
was different than the interpretation given it by the examiner. Such problems
can be minimized if the examiner routinely requests the applicant to submit
any supporting documents pertinent to an admission of prior art.
(ii)
Common/prior knowledge in the art
Prior
art includes all public knowledge demonstrating the level of ordinary
skill in the art. The examiner may take official notice of facts outside
of the record which are capable of instant and unquestionable demonstration
as being "well known in the art." While an examiner may reject a
claim based on common/prior knowledge in the art, this practice is to
be applied sparingly. It is always incumbent upon the examiner to find
a reference to support a rejection. If the applicant traverses such an
assertion the examiner should cite a reference in support of his or her
position. When a rejection is based on facts within the personal knowledge
of the examiner, the data should be stated as specifically as possible,
and the facts must be supported, when called for by the applicant, by
an affidavit from the examiner. Such an affidavit is subject to contradiction
or explanation by the affidavits of the applicant and other persons. See
37 CFR 1.104(d)(2).
If
applicant does not seasonably traverse the well known statement during
examination, then the object of the well known statement is taken to be
admitted prior art.
3.
Determining the relevancy of each piece of prior art
to the claimed subject matter.
The
examiner continually evaluates art found during the search to determine
which art is closest to the claimed invention, whether the prior art shows
all differences not shown by the closest prior art and whether the art
suggests combining individual teachings.
III.
The Legal Conclusion of Obviousness
A.
Evaluation
of prima facie obviousness
To
establish a prima facie case of obviousness, three basic criteria
must be met. First, there must be some suggestion or motivation, either
in the references themselves or in the knowledge generally available to
one of ordinary skill in the art, to modify the reference or to combine
reference teachings. Second, there must be a reasonable expectation of
success. Finally, the prior art reference (or references when combined)
must teach or suggest all the claim limitations.
The
initial burden is on the examiner to provide some suggestion of the desirability
of doing what the applicant has done. To support the conclusion that the
claimed invention is directed to obvious subject matter, either the references
must expressly or impliedly suggest the claimed invention or the examiner
must present a convincing line of reasoning as to why the artisan would
have found the claimed invention to have been obvious in light of the
teachings of the references. Both the suggestion to make the claimed combination
and the reasonable expectation of success must be founded in the prior
art and not in applicant’s disclosure.
The
reason or motivation to combine may often suggest doing what the applicant
has done, but for a different purpose or to solve a different problem
than that asserted by the applicant. It is not necessary in order to establish
prima facie obviousness that the prior art suggest their combination
to achieve the same advantage or result discovered by the applicant.
The
supporting rationale for combining the prior art may also be based on
legal precedent. If the facts in a prior legal decision are sufficiently
similar to those in an application under examination, the examiner may
rely upon the rationale used by the court. The courts have held that certain
common practices, such as simple changes of size, shape or color of an
article or reversal of mechanical parts in an apparatus, normally require
only ordinary skill in the art and hence are considered routine expedients.
Reliance on prior case law is appropriate only when a common factual basis
has been established. If an applicant has demonstrated the criticality
of a specific limitation, it would not be appropriate to rely solely on
prior case law to support an obviousness rejection.
B.
Rebuttal of the prima facie case
Once
a prima facie case of obviousness has been established, the burden
shifts to the applicant to come forward with evidence to rebut the prima
facie case. This evidence is generally of two types: (1) evidence
of unexpected or nonobvious properties or advantages as compared with
the closest prior art; and (2) evidence of real world activities, such
as commercial success of the invention or providing a solution to a long-felt
need in the art. Arguments by applicant are not evidence.
Evidence
of advantages or unexpected results produced by the invention may be established
by affidavit or declaration under 37 CFR 1.132 or may be submitted in
unsworn form in the written description or in a reply to a rejection.
Such evidence is typically in the form of "comparative examples"
demonstrating that the invention produced properties not possessed by
the prior art. In considering evidence of nonobviousness, it is well settled
that advantages or unexpected results must be established by factual evidence.
Mere arguments or conclusory statements are not factual evidence. When
superior or unexpected results are asserted, these results must logically
be shown as superior compared to the results achieved by other
devices, methods, etc., as described in the closest prior art.
The
examiner must also consider whether the objective evidence is commensurate
in scope with the claims. Evidence must be reasonably commensurate in
scope with the claimed invention. More specifically, comparative test
results relied upon to rebut prima facie obviousness must compare
the claimed invention to the closest prior art. These tests might establish,
for example, that the closest prior art experienced a problem and that
the claimed invention has overcome that problem. The comparative tests
must truly be comparative in every respect. The test must not have been
conducted under special conditions. The data generated must be truly significantly
different and not merely normal expected variations.
The
applicant can also, without presenting any evidence of nonobviousness,
seek to show that the prima facie case of obviousness is defective
based on erroneous factual findings, failure to apply the appropriate
legal standards for factual findings and legal determination, or that
the conclusion of obviousness is in error as a matter of law.
Evidence
of unexpected results is intended to directly establish that an invention
solved a known problem or produced advantages not expected by the prior
art. Other types of objective evidence may also be submitted to indirectly
establish advantages of the invention. This evidence relates to the real
world activities of others as an inference of what one of ordinary skill
in the art would or would not have done. Common examples of real world
events that have been recognized as indicia of nonobviousness include:
(1)
commercial success of the claimed invention;
(2)
long felt need in the art for a solution to a known problem;
(3)
failure of others to solve a known problem;
(4)
skepticism of experts; and
(5)
copying of the invention in preference to the prior art.
While
objective evidence of nonobviousness should always be considered, the
mere presence of such evidence does not necessary mandate a conclusion
of nonobviousness. The evidence must in fact be related to the merits
of the claimed invention rather than to extensive advertising aggressive
marketing, or other such unrelated activities. Specifically, a nexus must
be established between the merits of the claimed invention and the objective
evidence offered. If the objective evidence is drawn to features not being
claimed, the evidence must establish that the success is not due to the
unclaimed features.
C.
The
Final Legal Conclusion
To
reach a proper determination under 35 U.S.C. 103, the examiner must step
backward in time and into the shoes worn by the hypothetical "person
of ordinary skill in the art" when the invention was unknown and
just before it was made. In view of all the factual information, the examiner
must then make a determination whether the claimed invention "as
a whole" would have been obvious at that time to that person. Knowledge
of applicant's disclosure must be put aside in reaching this determination,
yet kept in mind in order to determine the "differences," conduct
the search and evaluate the "subject matter as a whole" of the
invention. The tendency to resort to "hindsight" based upon
applicant’s disclosure is often difficult to avoid due to the very nature
of the examination process. However, impermissible hindsight and application
of per se rules must be avoided and the legal conclusion must be
reached on the basis of the facts gleaned only from the prior art.
IV.
Communicating the Rationale for a Proper Rejection under 35 U.S.C. 103
When
an examiner rejects a claim as failing to meet one or more of the statutory
requirements for patentability, administrative due process and 35 U. S.C.
132 require that applicant be adequately notified of the reasons for the
rejection of the claim so that applicant can decide how to proceed. The
statutory requirement that an Office action state the reasons for any
rejection is critical to proper action taking.
In
writing a rejection under 35 U.S.C. 103, the examiner should appropriately
communicate:
(1)
the particular part of a reference being relied upon should be designated
as nearly as practicable; 37 CFR § 1.104(c)(2);
(2)
the differences between the claimed invention and the closest prior
art;
(3)
where the differences are found or suggested in the prior art;
(4)
how the teachings of the prior art are combined; and
(5)
why the combination of those teachings would have been obvious to
one of ordinary skill in the art at the time the invention was made.
Do not recite the disclosure of the prior art which reads on the claimed
invention as the motivation. Communicate why the references themselves,
the knowledge of one of ordinary skill in the art, or the nature of
the problem to be solved establishes a motivation to combine the prior
art references.
Once
applicant has presented rebuttal evidence, examiners should reconsider
any initial obviousness determination in view of the entire record. All
the proposed rejections and their bases should be reviewed to confirm
their correctness. Only then should any rejection be imposed in an Office
action. The Office action should clearly communicate the Office’s findings
and conclusions, articulating how the conclusions are supported by the
findings.
The
following are examples of written obviousness rejections illustrating
the preferred manner of communicating the supporting rationale. The examples
are grouped into two broad categories: those where the rationale is either
implicitly or explicitly contained in a reference, and those where the
rationale is based upon a technical line of reasoning, such as established
business principles, art-recognized equivalents, legal precedent, common
knowledge or official notice.
A
.
Examples of express or implied rationale statements from a reference
The
following examples are based on an explicit or implicit rationale contained
in one of the applied references.
Example
1: Rationale expressly contained in a reference.
a.
The
claimed invention
The
invention is drawn to an online auction house wherein various items are
placed on display on a web page with information about the items for sale
including but not limited to a starting price, model number and quantity
available. The disclosed auction process includes a central location on
a network which receives bids on items from registered users and awards
the item to the bidder who has successfully outbid the other users at
the specified end of the auction. In addition, this web site lists the
user names of those that have placed bids for the purpose of allowing
other users to identify with whom they are in competition.
Claim
1:
A
method of conducting an on-line auction over the Internet, the method
comprising the steps of:
displaying
a plurality of items being offered for auction on a web page including
for each item a color photograph of the item, a model number or other
unique identifier, the quantity available, and a reserved starting price;
providing
a bidder’s display board at a central location including the model number
or other unique identifier of the item currently up for bid, the current
list of the names of all parties having submitted bids and a complete
listing of their bids in chronological order, and the time remaining in
the auction period for the item;
at
the close of the auction period for the item, determining the winning
party and the winning bid; and
preparing
an auction sales contract for settlement by the winning party which is
forwarded to the winning party over the Internet.
b.
Evidence
There
exists two pieces of prior art. The first reference is to Smith who teaches
an online auction process including all of the elements of the claimed
application with the exception of displaying user names that are bidding
on a particular item. The secondary reference to Jones et al teaches an
auction void of many of the claimed features, however; Jones et al teaches
that their auction displays those users who are bidding on a particular
item to allow other users to see whom they are competing against. Jones
et al goes on to say that by displaying the users identification, it would
eliminate users who may work for the same company or who are friends from
bidding against each other and thereby not inflating the price of the
object up for bid.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in
view of Jones et al. Smith teaches all of the claimed elements except
for the displaying of the names of those that are bidding during the auction.
Jones et al has been cited for teaching the display of the names of those
whom have placed bids on an item in a particular auction. Jones et al
further teaches that by displaying the names, the price of an object would
not become overly inflated by coworkers or friends bidding on the same
object for the same cause. Coworkers would be more likely to allow for
only a single bidder to participate if the item is for the business. Therefore,
it would have been obvious to one having ordinary skill in the art at
the time of the invention to have displayed the names of the participants
in an auction in Smith as taught in Jones et al for the explicit reasons
discussed herein above.
Example
2: Rationale expressly contained in a reference.
a.
The claimed invention
The
disclosed invention is an online remote banking system which allows bank
customers to make use of the Internet to perform various banking functions.
Among the banking functions that can be performed are the transfer of
funds from one account to another, accessing customer account information,
and the purchase of various investment vehicles, such as mutual funds
and securities, offered by the bank. Bank may also use online surveys
to determine customer preferences for services being offered and customer
satisfaction.
Claim
1:
A
remote banking system on the Internet comprising:
means
for connecting a plurality of customer computers located at remote sites
to a central computer associated with a bank;
means
for allowing customers to access and retrieve selected information associated
with their individual accounts;
means
for permitting a customer to transfer funds from one customer account
to another customer account through the use of said customer’s computer;
and
means
for purchasing mutual funds offered by said bank through the use of said
customer computers.
b.
Evidence
Jones
discloses various software packages for use on the Internet. These packages
allow users to perform various functions remotely that normally are performed
only in a face to face transaction. The first package discussed in Jones
is Remote Banking which makes use of the Internet to allow customers of
a bank to access their accounts for balance information and to transfer
funds from one account to another. Another package discussed is Remote
Investing which allows investors to communicate with their brokers via
the Internet to place buy and sell orders for various trades.
Smith
discloses that banks, in addition to their conventional banking services,
are more frequently being used to broker the purchase of various investments
including stocks, bonds, mutual funds, futures, etc. Customers may stop
in at the bank for a withdrawal and at the same time may decide to make
an investment. Smith discloses that this combined service is very popular
among and well received with banking customers.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in
view of Smith. Jones discloses means for allowing customers to use their
personal computers to communicate with a remotely located bank computer
over the Internet to perform various functions including access to account
information and transfer of funds from one account to another. Jones also
discloses means by which an Internet user may employ his/her personal
computer to remotely place trade orders with his/her broker. However,
Jones fails to disclose that banks would allow their customers to place
securities or investment trade orders either remotely through their personal
computer or at the bank. Smith explicitly discloses that banks may in
addition to their conventional banking functions take on the role of an
investment broker so that customers may benefit from both banking and
investment opportunities. It would have been obvious to make use of the
Remote Investing package of Jones to allow a bank doing business over
the Internet to include remote trading as one of its services offered
to customers in view of the express suggestion in Smith.
Example
3: Rationale implicitly contained in a reference.
a.
The claimed invention
The
invention is drawn to a method of providing a bank customer with the ability
to remotely transfer money between a plurality of accounts within the
same banking institution on a computer network. While providing the customer
with a convenient methodology to make the transfers, the system and method
provide a high level of transaction security by including an authorization
form required as a pre-requisite to initiating any transfer activities.
The form is only provided to the customer once the right to access the
various accounts is established through a password system. The form provides
both the customer and the banking institution with a validation record
of the transfer activities.
Claim
1:
A
method of transferring funds from one account to another account in a
bank remotely by an account holder comprising the steps of:
(1)
retrieving from an account holder identification and password information;
(2)
determining if the account holder has authorization to transfer funds
based on the identification and password information;
(3)
if authorization is confirmed, transmitting an electronic form to the
account holder; the form asking information about the transfer of funds
from one account to another;
(4)
filling out the form and electronically sending it back to the bank by
the account holder; and
(5)
receiving the form at the bank's computer and automatically transferring
the funds from one account to another account as specified in the form.
b.
Evidence
Reference
A shows a method of transferring funds between a plurality of accounts
held with the same banking institution. The method is performed remotely
over a computer network and employs a validation form to record the transaction.
The method includes the steps of transmitting an electronic form to the
account holder wherein the form requests transfer information, filling
out the form and electronically sending it back to the bank, and upon
receipt of the form at the bank’s computer automatically transferring
the funds from one account to another account as specified in the form.
The disclosure is silent as to the inclusion of any password protection
for the process.
Reference
B shows a remote banking method for accessing account information and
checking account balances. To provide access and transaction security
for the customer, the system and method incorporate a password protection
system. To access the account information the customer must provide identification
and password information, that information must be validated by the banking
institution, and only upon validation by the bank is the access permitted
to the customer.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A in view of Reference B. Reference A shows a method of remotely transferring
funds from one account to another account in a bank comprising the steps
of: transmitting an electronic form to the account holder wherein the
form requests information about the transfer, filling out the form and
electronically sending it back to the bank, and receiving the form at
the bank's computer and automatically transferring the funds from one
account to another account as specified in the form. Reference A does
not expressly show retrieving from an account holder, identification and
password information to validate the authorization of the customer to
request the form and perform the transfer. Reference B teaches retrieving
from an account holder, identification and password information; determining
if the account holder identification and password match; if the identification
and password match processing the account holder’s transactions. Note
that the matching step implies determining if the account holder has authorization
to transact the requested banking function.
It
would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify the method of transferring funds
from one account to another account as taught by Reference A to include
the identification and password validation steps of Reference B because
fund transfer transactions are clearly intended to be performed only for
authorized customers. Steps to enhance the transactional security for
the customer represent an obvious modification to the prior process taught
by Reference A.
Example
4: Rationale implicitly contained in a reference.
a.
The claimed invention
A
system for diagnosing a patient’s illness based on a comparison with a
plurality of prior diagnosis made by a plurality of other physicians.
The disclosed invention includes a computer system including an input
means for a physician to enter a plurality of data on a patient’s current
physical condition and symptoms. The computer system compares the inputted
data against a database of prior diagnosis made by other physicians and
the underlying physical conditions and symptoms of the patient that they
were treating to determine a potential list of diagnosis for the current
patient; the listing including a probability listing that the proposed
diagnosis is correct. The computer system then prints for the physician
a paper report listing one or more possible illnesses that the patient
may have along with the probabilities and possible test(s) to confirm
that the patient indeed has each of the listed illnesses.
Claim
1:
A
computer implemented method of diagnosing an illness based on a series
of prior diagnosis, comprising the steps of:
a.
inputting to a computer system data representing a patient’s current
physical condition and symptoms;
b.
comparing said patient’s current physical condition and symptoms to
a medical illness database in the computer wherein the database includes
the physical conditions and symptoms of other patients;
c.
preparing a listing of possible illnesses said current patient has
including a probability that said current patient has said illnesses;
d.
preparing a list of medical test(s) to confirm that said patient indeed
has said possible illnesses; and
e.
scheduling said list of medical tests and treating said patient according
to results from said conducted tests.
b.
Evidence
The
Jones reference discloses a medical condition diagnostic system including
a computer system wherein current medical condition data from a patient
is inputted for comparison against a database of prior diagnosis and the
underlying data with respect to each diagnosis. The system includes all
of the data fields of the patient’s current physical condition and symptoms
as disclosed in the instant invention. The system provides an output of
a listing of potential diagnosis for the patient including a probability
that the listed diagnosis is accurate.
The
Smith reference is a standard medical reference which teaches that it
is well known to prepare a list of medical tests and perform that list
of tests to diagnose a patient. The reference provides a listing of the
appropriate tests to be performed to confirm a potential diagnosis of
a particular disease or condition. The reference provides for each potential
disease or condition a list of mandatory tests and other optional tests
that could be performed if desired or necessary to confirm the results.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in
view of Smith. Jones teaches inputting a patient’s medical data for comparison
to a database and determining a potential diagnosis but does not teach
the steps of preparing a list of medical test(s), performing said list
of tests to confirm the proper treatment, and treating the patient. Smith
teaches that it is well known to prepare a list of medical tests and perform
those list of tests to confirm the potential diagnosis of a patient. It
would have been obvious to one of ordinary skill in the art at the time
of the invention to include preparing a list of medical test(s) and performing
said list of tests in the method of Jones as taught by Smith to properly
treat patients. It would have been obvious to confirm the potential diagnosis
from the computer system comparison before relying on that output to prevent
inaccurate diagnosis. Further, once the tests have been performed, treating
the patient would have been the obvious next step in the claimed process.
B.
Examples of rationale statements logically reasoned from sources
other than a reference
The
following examples rely upon a teaching other than an explicit or implicit
teaching from the references as the rationale supporting the rejection,
i.e., the rationale is not found within the applied references.
The
rationale may be reasoned from common knowledge in the art, official notice,
a known business principle, art-recognized equivalents, or legal precedent
established by prior case law. A simple statement that a difference is
a "design choice" or "lacks an advantage or unexpected
result" is insufficient rationale to support a well written and legally
sufficient rejection. These are conclusions, not statements of fact.
Example
5: Rationale reasoned from common knowledge in the art.
a.
The claimed invention
The
invention is drawn to the use of computers and the Internet to sell books
through a web page. A customer would browse through the selection of books,
place an order by filling out a form and submit the order with credit
card information so that the customer can be charged and the order sent
in just a few days.
Claim
1:
A
method of providing and ordering books through the Internet comprising:
providing
a selection of books for sale on a web page by displaying an image of
the front cover of the book along with a written description;
providing
a selection box adjacent to each book for sale to allow a buyer to select
a book or books to be purchased;
adding
the selection or selections to an online shopping cart provided for the
customer’s selections; and
providing
the customer with a form to be filled out with the customer’s credit card
information to enable the sale transaction to be carried out on the Internet.
b.
Evidence
The
examiner cites a reference to Smith which has all of the features of the
invention with the exception that Smith is silent on how money is transferred
to the book seller including providing credit card information over the
Internet.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Smith. Smith
teaches all of the elements claimed with the exception of using credit
card information over the Internet as the method of paying for the purchased
books. The examiner takes Official Notice that paying for purchases using
credit card information sent over the Internet is old and well established
in the business of e-commerce as a convenient way for a consumer to pay
for purchased items. It would have been obvious to one having ordinary
skill in the art at the time of the invention to have included the step
of paying for the book purchases in Smith by using credit card information
sent over the Internet because the skilled artisan would have recognized
that this business practice streamlines the process and saves time spent
by a consumer in making purchases and is clearly applicable to the sale
of any type of product. These advantages are well known to those skilled
in the art.
Example
6: Rationale reasoned from an established business principle.
a.
The claimed invention
The
invention is drawn to an online bookstore. The bookstore has a catalog
of different books that are made available through a series of web pages.
Customers having Internet access are able to browse through the collection
of books, choose those that they would like to buy and make an online
purchase using a credit card. The bookstore would then accept the order,
process the credit card information and send the books to the customer
by mail. This online bookstore has the added feature of e-mailing the
customer sometime after the purchase with a customer service survey to
enable the customer to comment on the condition of the books as delivered,
the ease of use of the web pages and any other comments the customer would
like to add.
Claim
1:
A
method of providing and ordering books through the Internet comprising:
providing
a selection of books for sale on a web page by displaying an image of
the front cover of the book along with a written description;
providing
a selection box adjacent to each book for sale to allow a buyer to select
a book or books to be purchased;
adding
the selection or selections to an online shopping cart provided for the
customer’s selections;
providing
the customer with a form to be filled out with the customer’s credit card
information to enable the sale transaction to be carried out on the Internet;
and
e-mailing
the customer, a predetermined time after the purchase, a customer service
survey to be filled out by the customer as a way of obtaining customer
feedback.
b.
Evidence
A
reference to Smith has been cited which teaches an online bookstore that
uses the Internet in much the same way as that in the application with
the exception that Smith is void of any customer survey e-mail.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Smith. Smith
teaches all of the claimed process steps with the exception of e-mailing
a customer service survey to a customer some time after the purchase of
a book. Customer service is a key factor in the success of any business,
whether it be brick and mortar or online. The most common vehicle for
businesses to measure customer service is by asking the customers directly
what they believed was good or bad about their experience with the business.
Businesses have resorted to many different techniques of obtaining customer
comments including comment cards, follow-up telephone calls, as well as
mailing customer surveys to customers. This practice is well known in
the business community and would follow in the Internet world as well
where competition is sometimes worldwide and customers have a greater
influence on the success of a business. Therefore, it would have been
obvious to one of ordinary skill in the art at the time of the invention
to have added the well-known steps of asking the customer for an e-mail
address at the time of the on-line purchase and then later e-mailing a
customer service survey to the process of Smith for the purpose of gaining
information about their service from the customer.
Example
7: Rationale reasoned from established business principle.
a.
The claimed invention
The
invention is drawn to an online hardware store where customers would visit
a web site and shop for various items commonly found in a hardware store.
The web site associated with the hardware store would include a shopping
cart known in the technology to allow customers to virtually shop and
add items to be purchased into the shopping cart. This online store also
has the capability of price matching of any advertised sale. For instance,
the online store would have for sale a particular brand of wrench at a
displayed price. A customer having seen the same wrench advertised for
less merely provides proof of the lower price to obtain not only that
price but a percentage off the price as well. The proof is provided by
submitting an electronic copy of the other advertisement; e.g., submitting
the URL for the other web site. The online store can then review the submitted
other advertisement and determine if the price reduction and additional
percentage off are appropriate.
Claim
1:
A
method of selling tools on the Internet through a web page comprising:
displaying
tools for sale on the web page including a picture of the tool, brand
name and price tag;
providing
a customer with a shopping cart to enable the customer to add tools intended
for purchase;
accepting
electronic indications which represent sales ads of other sellers from
the customer demonstrating a lower advertised price than the displayed
price; and
offering
to the customer the lower advertised price along with a percentage off
the lower advertised price if the other sales advertisement is valid.
b.
Evidence
Smith
teaches an online hardware store similar to that claimed which provides
online ordering and an e-mail capability from the customer to submit information
or questions to the seller regarding matters related to the purchase,
but there is no method of accepting sales ads to thereby receive a reduced
price on a tool by the customer and provide an additional discount. Jones
teaches employing the use of hypertext links such as URLs in e-mail messages
to alert or inform another person of the existence of useful information
that may be found at that web site.
c.
Good Statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Smith in
view of Jones. Smith teaches all of the steps claimed with the exception
of accepting ads and offering the customer a lower price plus an additional
percentage off the lower price. Jones teaches the use of a hypertext link,
such as a URL, in an e-mail as a convenient method of providing information
about another web site to another person. The business practice of matching
sales ads and giving a customer a percentage off of the sales ads is an
old and well-established business practice. This practice is designed
to entice customers to a particular store that they would normally not
visit. It improves customer relations and helps to generate return business.
It would have been obvious to one of ordinary skill in the art at the
time of the invention to include in the method of Smith the e-mail submission
of other web site advertisements as taught by Jones to obtain a lower
sales price for goods to be purchased, plus an additional percentage price
reduction, in view of the well known business practice of using competitor’s
advertisements as set forth above. Note the added steps in Smith, which
would include adding the URL of a competitor’s web site in an e-mail message
to the seller which demonstrates a competitor’s lower price for the same
product per the teachings of Jones, are merely the automation of the old
and well known manual process of submitting a competitor’s advertisement.
Example
8: Rationale reasoned from legal precedent - automation of a known manual
process.
a.
The claimed invention
The
disclosed invention is a method of determining the "best fit"
of an insurance policy from a given insurance company for a specific individual.
An insurance agent, either in response to a specific request by an individual
or as part of a general sales/marketing plan, forwards a questionnaire
to a particular client over the Internet. The client responds to the questionnaire
and forwards the response to the insurance agent. The agent then compares
the client’s responses and the data therein to a number of potential insurance
policies that might meet the client’s insurance goals or objectives. This
comparison, performed on a programmed computer platform, is made by scoring
each policy on the basis of how well it meets various client criteria.
After each of the potential individual policies is scored, the programmed
computer platform compares the collective results and determines the best
fit for the individual client. The insurance agent then employs the results
in a recommendation to the client.
Claim
1:
A
computerized method of selecting an insurance policy comprising the steps
of:
(1)
retrieving information from a customer and an insurance policy;
(2)
automatically scoring the insurance policy based upon the information
from the customer and policy; and
(3)
automatically iterating steps (1) through (2) with the different policies
until a best insurance policy is selected based on the score determined
from step 2.
b.
Evidence
Reference
A is a published training manual that insurance companies use to train
their insurance agents. The manual discloses the following manual steps
to be done by an agent:
(1)
reviewing information received from a customer and at least two insurance
policies;
(2)
scoring each insurance policy based upon the information from the customer
on a paper worksheet in the training manual; and
(3)
iterating steps (1) through (2) with the different policies that the company
sells until the agent decides which insurance policy is best for the customer.
c.
Good Statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A. Reference A shows:
A
method of selecting an insurance policy comprising the steps of:
(1)
retrieving information from a customer and an insurance policy;
(2)
scoring the insurance policy based upon the information from the customer
and the insurance policy; and
(3)
iterating steps (1) through (2) with the different insurance policies
until a best insurance policy is selected based on the score determined
from step 2.
Reference
A does not expressly show automating steps 2 and 3.
It
was known at the time of the invention that merely providing an automatic
means to replace a manual activity which accomplishes the same result
is not sufficient to distinguish over the prior art, In re Venner,
262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). For example, simply automating
the step of scoring the insurance policy based upon the information from
the customer and policy gives you just what you would expect from the
manual step as shown in Reference A. In other words there is no enhancement
found in the claimed step. The claimed scoring step only provides automating
the manual activity. Likewise, automating the iterating step (step 3)
only gives just what one would expect from the manual steps shown in the
reference. The end result is the same as compared to the manual method.
A computer can simply iterate the steps faster. The result is the same.
It
would have been obvious to a person of ordinary still in the art at the
time of the invention to automate the scoring and iterating steps because
this would speed up the process of matching policies with customers, which
is purely known, and an expected result from automation of what is known
in the art.
Example
9: Rationale reasoned from legal precedent - automation of a known manual
process on the Internet.
a.
The claimed invention
The
disclosed invention is a method of determining the "best fit"
of an insurance policy from a given insurance company for a specific individual.
An insurance agent, either in response to a specific request by an individual
or as part of a general sales/marketing plan, forwards a questionnaire
to a particular client over the Internet. The client responds to the questionnaire
and forwards the response to the insurance agent. The agent then compares
the client’s responses and the data therein to a number of potential insurance
policies that might meet the client’s insurance goals or objectives. This
comparison, performed on a programmed computer platform, is made by scoring
each policy on the basis of how well it meets various client criteria.
After each of the potential individual policies is scored, the programmed
computer platform compares the collective results and determines the best
fit for the individual client. The insurance agent then employs the results
in a recommendation to the client.
Claim
1:
A
method of selecting an insurance policy over the Internet comprising the
steps of:
(1)
generating one or more questions for a customer;
(2)
transmitting questions to the customer over the Internet;
(3)
receiving a customer’s response to each of the questions transmitted to
the customer over the Internet;
(4)
retrieving unique information from the customer’s responses and at least
one insurance policy from an insurance company’s computer both over the
Internet;
(5)
scoring an insurance policy based upon the unique information and the
answers; and
(6)
automatically iterating steps (1) through (5) multiple times with different
insurance policies until a best insurance policy is selected.
b.
Evidence
Reference
A is a published training manual that insurance companies use to train
their insurance agents. The manual discloses the following manual steps
to be done by the agent. The manual teaches how the agent retrieves unique
information from a customer and an insurance policy from an insurance
company. The manual also lists a series of one or more questions for the
customer and teaches how to ask the questions to the customer. The manual
provides a worksheet to place the customer's answers on and explains how
to score different insurance policies and select the best one using a
worksheet in the manual.
Reference
B shows an Internet process of surveying customers over the Internet for
particular products and determining the product most closely meeting the
customer’s needs/desires. This reference shows:
(1)
generating one or more questions for the customer;
(2)
transmitting questions to the customer over the Internet;
(3)
receiving a customer answer, indicative of the customer’s response to
each of the questions over the Internet; and
(4)
automatically determining the best product based on the answers.
Reference
B also states that the advantage of conducting the question and answer
session over the Internet allows the company to match products with customers
anywhere in the world that has access to the Internet.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A in view of Reference B. Reference A shows:
A
method of selecting an insurance policy comprising the steps of:
(1)
retrieving unique information from a customer and an insurance policy
from an insurance company;
(2)
determining one or more questions for the customer;
(3)
asking the questions to the customer;
(4)
receiving a customer answer, indicative of the customer’s responsive to
each of the questions;
(5)
scoring the insurance policy based upon the unique information and the
answers; and
(6)
iterating steps (1) through (6) multiple times with different policies
until a best insurance policy is selected.
Reference
A does not expressly show retrieving the unique information and insurance
policy over the Internet; running the question and answer session over
the Internet and automating step 6.
Reference
B teaches retrieving unique information about customers and products over
the Internet; running a question and answer session over the Internet
with a customer and automatically determining the best product based on
the answers received from a customer.
It
would have been obvious to a person of ordinary skill in the art at the
time of the invention to automate the manual process shown in Reference
A and modify it to include retrieving the unique information and insurance
policy over the Internet; and run the question and answer session over
the Internet because the advantage of conducting the question and answer
session over the Internet allows a company to match products with customers
anywhere in the world that has access to the Internet as evident by Reference
B.
Furthermore,
it would have been obvious to a person of ordinary skill in the art at
the time of the invention to automate the scoring and iterating steps
since it has generally been recognized that merely providing an automatic
means to replace a manual activity which accomplishes the same result
is not sufficient to distinguish over the prior art, In re Venner,
262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958).
Example
10: Rationale reasoned from legal precedent - automation of a known manual
process and performed on the Internet.
a.
The claimed invention
The
invention is drawn to a method of performing stock brokerage activities
over the Internet. The method includes setting up the account and performing
all transactions decisions between the broker and the customer over the
Internet. The method also includes the ability to automatically review
the customer’s current portfolio of stocks against a predetermined list
of stocks defined to meet the customer’s investment objectives to determine
whether the sale of currently held stocks and/or the purchase of additional
or different stocks would increase the value of the portfolio. The review
is performed periodically by the broker with the aid of a computer platform
including a computer program that determines whether a particular change
in the make up of the portfolio would increase the value of that portfolio.
The broker merely enters on the computer the proposed change, such as
sell x shares of stock A and buy y shares of stock B, and the computer
determines if a net gain in the value of the portfolio has been achieved.
Based on the result, the broker may make transaction recommendations to
the customer.
Claim
1:
A
method of buying stock from a broker over the Internet comprising the
steps of:
setting
up a customer's account at a broker's computer;
purchasing
stocks to create a portfolio of stocks for the customer;
automatically
determining proposed transactions that could improve the value of the
customer’s portfolio;
transmitting
the proposed transactions to the customer over the Internet;
the
customer sending back over the Internet a notice either agreeing to the
proposed transactions or not; and
if
the customer agrees with said proposed transactions, the broker implementing
the transactions at the appropriate stock exchange.
b.
Evidence
Reference
A is a textbook that explains the role of stock brokers. The textbook
shows that stock brokers setup accounts for customers; manage each customers
portfolio and determine ways to optimize the portfolios in such a way
as to make the brokers money through fees and at the same time increase
the value of the portfolio for the customer. Brokers will usually call
the customers to see if he or she is interested about the broker's idea
of ways to improve the existing portfolio. If the customer is interested,
the customer will give the go ahead to sell or buy this stock according
to the broker's idea.
Reference
B shows the advantage of communicating over the Internet for businesses
to reach customers anywhere in the world. The reference suggests that
the disclosed plan is applicable to any type of business.
c.
Good Statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A in view of Reference B. Reference A shows:
A
method of buying stock from a broker comprising the steps of:
setting
up a customer's account with the broker;
purchasing
stocks to create a portfolio of stocks for the customer;
determining
proposed transactions that could improve the value of the customer’s portfolio;
communicating
the proposed transactions to the customer;
the
customer either agreeing or disagreeing to the proposed transactions;
and
if
the customer agrees with said proposed transactions, the broker implementing
the transactions at the appropriate stock exchange.
Reference
A does not expressly show automating the disclosed method to be performed
on the Internet and automatically performing the step of determining proposed
transactions that could improve the customer’s portfolio.
It
was known at the time of the invention that merely providing an automatic
means to replace a manual activity which accomplishes the same result
is not sufficient to distinguish over the prior art, In re Venner,
262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). For example, simply automating
the step of determining proposed transactions that could improve the portfolio
gives just what one would expect from the manual step as shown in reference
A; determining if certain transactions increase the value of the portfolio
and doing so in a more expedient manner. In other words, there is no enhancement
found in the claimed step other than the known advantage of increased
speed. The end result is the same as compared to the manual method.
It
would have been obvious to a person of ordinary skill in the art at the
time of the invention to automate the step of determining proposed transactions
that could improve the portfolio because this would speed up the determining
step which is purely known and expected result from automation of what
is known in the art.
Reference
A does not further show transmitting the proposed transactions to the
customer over the Internet and the customer sending back over the Internet
a notice either agreeing to the proposed transactions or not.
Reference
B shows the advantage of communicating over the Internet for businesses
to reach customers anywhere in the world.
It
would have been obvious to a person of ordinary skill in the art at the
time of the invention to transmit the proposed transactions to the customer
over the Internet and have the customer send back over the Internet a
notice either agreeing to the proposed transactions or not because the
advantage of communicating over the Internet allows a broker to do business
with customers anywhere in the world that has access to the Internet as
evident by Reference B.
Example
11: Rationale reasoned from official notice.
a.
The claimed invention
The
invention is drawn to the use of computers and the Internet to sell women’s
clothing through a web page. A buyer would browse through the selection
of women’s clothing in the on-line catalog and place an order by filling
out a form including information such as the number of items of a selected
women’s clothing item that the buyer desires and appropriate delivery
and billing information. The web server compares the number of articles
of clothing of each specific type, for example, slacks, to a predetermined
quantity. If the requested number of articles of clothing of a specific
type is larger than the predetermined quantity, the server confirms the
requested quantity before accepting the order. The advantage of the confirmation
is to avoid obvious data entry errors which would require time consuming,
expensive, and unacceptable correction efforts.
Claim
1:
A
method for selling women’s clothing to a buyer over the Internet, wherein
the buyer browses the available articles of clothing through an on-line
catalog on a seller’s web page, comprising the steps of:
a. receiving
from said buyer a selection of one or more desired products to
include size, color and quantity;
b. receiving
demographic, delivery, and payment information from said buyer;
c. requesting
verification of said quantity by said buyer when said quantity
exceeds a predetermined amount;
d. receiving
verification of said quantity from said buyer;
e. processing
said delivery and payment information; and
f. forwarding
said desired products to the buyer based on said delivery information.
b.
Evidence
Smith
teaches an on-line ordering system for clothing which is implemented on
the Internet. The system and the method for using the system include all
of the same features as the instant invention except that the quantity
verification feature is not disclosed.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Smith. Smith
teaches all of the elements claimed with the exception of the verification
of the desired quantity step. The examiner takes Official Notice that
one would verify the number of desired products of an ordered item to
eliminate processing orders of clearly wrong quantity. Evidence of this
is provided by the following example of ordering a pizza. A buyer calls
a pizza delivery service and orders 500 pizzas. The pizza shop would verify
that the buyer said 500 and not 5 before processing the order. It would
have been obvious to one of ordinary skill in the art at the time of the
invention to include verification in the system of Smith because verification
of the number of items ordered would eliminate processing of clearly wrong
orders. The use and advantages of this step are well known.
Example
12: Rationale reasoned from the difference is the data being stored (article
of manufacture).
a.
The claimed invention
The
invention is drawn to a computer readable memory including a plurality
of data fields stored thereon. The data is representative of various categories
of information related to the tracking and maintenance of a mortgage portfolio
including the primary mortgage holder, the mortgagor’s name and address,
the state and county where the property securing the mortgage is located,
and economic criteria indicative of the likelihood of selling high-end
title insurance and other miscellaneous real estate products to the mortgagor.
The data is processed on a specialized programmed computer system designed
for this business use.
Claim1:
An
article of manufacture comprising:
a
computer readable medium storing a plurality of record files for mortgagors;
each
record file comprising:
a
first field of data identifying a mortgagor,
a
second field of data identifying the geographic location of said mortgagor,
and
a
third field of data indicating the likelihood of success of selling title
insurance products to said mortgagor.
b.
Evidence
Reference
A shows a CD-ROM having stored thereon a plurality of record files wherein
each record file has three data fields storing data relating to a non-business
use.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A. Reference A shows:
An
article of manufacture comprising:
a
computer readable medium storing a plurality of record files;
each
record file comprising three fields of data.
Reference
A does not expressly show the first field of data identifying a mortgagor,
the second field of data identifying the geographic location of said mortgagor
and the third field of data indicating the likelihood of success of selling
expensive products to said mortgagor.
However
these differences are only found in the non-functional data stored on
the article of manufacture. Data identifying a mortgagor, the geographic
location of said mortgagor and data indicating the likelihood of success
of selling expressive products to said mortgagor is not functionally related
to the substrate of the article of manufacture. Thus, this descriptive
material will not distinguish the claimed invention from the prior art
in terms of patentability, see Cf. In re Gulack, 703 F.2d
1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32
F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Therefore,
it would have been obvious to a person of ordinary skill in the art at
the time the invention was made to store any data in the fields of the
article of manufacture as shown in Reference A because such data does
not functionally relate to the substrate of the article of manufacture
and merely labeling the data differently from that in the prior art would
have been obvious matter of design choice. See In re Kuhle, 526
F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975).
Example
13: Rationale reasoned from the data being processed (machine).
a.
The claimed invention
The
invention is drawn to a network system for the remote evaluation of an
individual’s physical health; preferably implemented on the Internet.
The system includes at least one network server storing a plurality of
questions designed to indicate the general physical health of an individual
based upon the collective answers. Individuals connect their personal
computer terminals to the server and enter their responses to the queries
presented to them for transmission to the server for analysis in accordance
with a diagnostic computer program. The remote diagnostic system provides
a convenient and time saving method for receiving an overview of an individual’s
general health.
Claim
1:
A
system for remotely assessing the health of an individual comprising:
a) a
server;
b)
a remote interface for programming into the server a set of queries;
c)
a plurality of remote terminals for use by individuals to connect
to said server for interactively providing said queries to an individual
and receiving responses from said individual;
d) a
network connecting elements a), b) and c); and
e)
wherein said set of queries resides on said server to assist in assessing
the health of said individual.
b.
Evidence
Reference
A teaches an interactive Television system with a set of interactive audience
viewing preferences survey queries. The queries are forwarded to an individual’s
television set and the responses entered by the individual using a remote
control device are returned for analysis. A second embodiment of the invention
is disclosed which includes an interactive Internet survey system of customer
buying preferences wherein the survey questions are stored on a server
on the Internet and individual may connect to the server to answer product
preference questions in exchange for coupons and other incentives. The
survey questions are loaded onto the server, and periodically updated,
through a remote interface and controller.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A. Reference A teaches an interactive Internet survey of customer buying
preferences, comprising, a server (10 Fig. 1), a remote interface for
programming the server (a computer [15 Figure 1] with a GUI, connected
to a Local Area Net [17 Figure 1]), a plurality of individual user terminals
for accessing the server (terminals 34 in Figure 1), a network (the Internet)
connecting all the above elements, and a set of interactive customer preference
queries resident on the server for interactive user by the individuals
over the Internet. Reference A does not teach the specific queries recited
in the claimed invention. However, the specific meaning/interpretation
of the queries loaded onto the server does not patentably distinguish
the claimed system. Further, the recited statement of intended use, to
assess an individual’s health, does not patentably distinguish the claimed
system. It would have been obvious to one of ordinary skill in the art
at the time the invention was made to provide any type of queries in the
system taught by Reference A because the subjective interpretation of
the queries does not patentably distinguish the claimed invention; a network
system.
Example
14: Known system/machine with computer program (patentable/unpatentable).
a.
The claimed invention
A
system is disclosed for rewarding customer patronage of a retail establishment
or purchase of specified items. Customer purchase habits and patronage
information are tracked via use of a customer ID card that the customer
presents at time of checkout. The card is then scanned along with purchases
and the ID read from the card used as an index to a purchase history database.
Records for the customer associated with the ID are read from the database.
These records are then updated with purchase data read from scanned items.
The updated records are subsequently used to determine if a coupon or
other incentive should be issued to the customer based on established
criteria. The criteria can include amount of purchase, type of item purchased,
frequency of purchase, etc. In addition, purchase history records are
updated with time and date of purchase. This information is used to track
customer patronage. The disclosed system includes two computer programs
employed to implement the above noted system and the associated method.
A first program is used to regulate and enter data into the database,
designating the proper sequence for entry and locations in memory for
storage of the various elements. The second program controls the retrieval
and analysis of the customer and product data to determine whether a coupon
or other incentive should be issued and, if so, what type and value.
Claim
1: A system for storing data representing a plurality of purchases by
a customer in a database and for generating customer coupons, said system
comprising:
means
for scanning a first record including first encoded data representing
the customer’s identity and a second record including second encoded data
representing an item being purchased by the customer;
program
means for controlling the storage of the first and second data; and
means
for entering said first and second data into a database wherein the stored
data represents a plurality of customer purchase histories wherein each
purchase history represents an individual customer purchase history of
all prior purchases by the individual customer over a predetermined period
of time.
Claim
2: A system for rewarding customer purchases of specified items, said
system comprising:
means
for scanning a customer ID card presented at time of checkout to retrieve
customer ID data;
means
for retrieving a record from a purchase history database, said record
including customer related data for a customer associated with said ID
data;
means
for scanning items presented for purchase at said time of checkout to
retrieve purchase information;
means
for storing said purchase information in said purchase history database
to update the customer purchase history; and
means
programmed to process the updated information stored in said purchase
history database to generate coupons for customers meeting specified criteria,
said criteria including purchase of a specific brand of product or of
a specified amount of a product type.
b.
Evidence
Reference
A discloses a sales tracking system employing one or more scanners to
read data from encoded data bearing records. It states that it is known
that the encoded records are found on cards or on other tangible items
including products for sale. In using the system, a salesperson first
uses a scanner to scan an ID card and then with the same, or a separate
scanner, scans each item to be purchased by the customer. Each data item
is stored in a separate memory device for later use in association with
the scanned ID card.
Reference
B discloses storing data read from a plurality of data bearing records
into a database to update associated inventory data for all products sold
within a given time period. The database has a plurality of data fields
with a separate field for each category of product type and another field
indicating an ID for use in maintaining the proper stocking of each product
type. Data entry into and retrieval from the database is controlled by
a computer program which controls the sequencing of the entries to ensure
that the data is properly stored in and retrievable from the database.
c.
Analysis of rejections based upon the prior art
Claim
1 would be properly rejected as being unpatentable over Reference A in
view of Reference B for the following reasons:
An
analysis of claim 1 reveals that the invention defined therein is a system
having at least (1) means for scanning, (2) means for entering data read
by said scanning means into a database, and (3) a means with a computer
program to control entry of the data into the database. The examiner takes
note that the data scanned and stored represents customer ID and purchase
item data. However, what the data read by the scanner or input to the
database represents does not modify the structure of the scanner or database
or the operation of the computer program means which controls the data
entry. Thus, the specific data involved would not create a patentable
difference. Reference A discloses a system that makes use of a scanner
for reading data bearing records and for storing the data into a database.
Although that system is directed to scanning and storage of product inventory
data, the examiner again asserts that what the data read and stored represents
does not change the scanner or the database. However, Reference A lacks
the claimed program means for controlling entry of the data into the database.
Reference B teaches that the entry of a plurality of data elements into
a database may be controlled by a computer program which sequences the
data entry to ensure that the data is properly stored into and retrievable
from the database. Note that the program controls the entry of both individual
person identification data and product data into appropriate fields in
a database. It would have been obvious to one of ordinary skill in the
art to provide the record scanning system of Reference A with a programmed
means to control the entry of the data into a database to ensure that
the data is properly entered into the correct fields in the database as
taught by Reference B. Ensuring the integrity of data entered into a database
is a well known and desirable advantage in the database art. Further,
to employ a database rather than separate memory sections to store data
is a well known equivalent to those of ordinary skill in the art and would
have been an obvious modification in the system of Reference A.
Claim
2 is allowable over the prior art shown in Reference A and Reference B.
Although systems are known which scan and use data from two separate records
to generate an output or result, such as disclosed in Reference A, the
prior art does not teach the programmed processor for generating coupons
as claimed. The programmed processor limitation, properly evaluated under
35 USC 112, 6th paragraph, defines a machine which is distinct
from other machines which do not include a computer program for generating
coupons as recited in claim 2. The invention of claim 2 includes means
to generate coupons using purchase history data (i.e., scanned item data)
and consumer ID data. Thus, the specific data used in claim 2 further
imparts a patentable distinction to the claim because the data is used
to perform a specific function. The apparatus used to perform this function
(e.g., a computer) is changed when the software for implementing the recited
function is executed.
Example
15: Rationale reasoned from art-recognized equivalents.
a.
The claimed invention
The
invention is directed to a system for automatically matching mortgage
lenders with potential borrowers. Each borrower is interviewed to obtain
information on current job status, age, debt load, and credit rating including
payment history, defaults, late fees etc. This information is then inputted
into a program for real time credit scoring. The program makes use of
a probit model for scoring potential borrowers based on the input information.
A separate program automatically matches borrowers with lenders based
on lender specified criteria and borrower credit scores.
Claim
1:
A
system for automatically matching a potential mortgagee with a mortgage
lender, said system comprising:
means
for inputting borrower information obtained during an initial interview
with said potential mortgagee, said information including data relating
to job status, age, debt load, and credit rating including payment history,
defaults, and late fees;
means
for predicting the credit worthiness of said potential borrower by developing
a credit score based on a probit model;
means
to input said predicted credit score to means for matching borrowers and
lenders;
means
for automatically reviewing lender criteria for borrower credit worthiness;
means
for selecting lenders whose criteria are met by the credit score of said
potential borrower; and
means
for outputting said selected lenders for review by said potential borrower.
b.
Evidence
Jones
discloses the use of a system for automatically matching mortgage lenders
and borrowers based on credit scores. Scores are obtained using borrower
data gathered during an initial interview. Information from the interview
is inputted to credit scoring software that rates borrowers. The system
and all of the components thereof are exactly the same as those recited
in the instant claimed invention. However, the credit scoring software
is based on linear probability modeling.
Smith,
an article published in Business Banking, provides a comparison of several
statistical methods used as a basis for credit scoring systems. Both probit
and linear probability models are included in the discussion of applicable
statistical models. The article addresses the underlying theories behind
each of the statistical modeling techniques reviewed and notes that each
are standard techniques used to determine the credit worthiness of a borrower.
While acknowledging differences in the underlying theories of the models,
Smith also discloses that these standard techniques are equally effective
in predicting the credit worthiness of a borrower and may be used interchangeably
without significantly affecting the results.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Jones in
view of Smith. Jones discloses the use of borrower information gathered
during an interview as input to a system for predicting the credit worthiness
of a borrower. The credit score output by this system is then used as
a basis for matching borrowers with mortgage lenders based on borrower
credit scores. Lenders whose selection criteria match the credit score
of the borrower are listed as potential lenders to the borrower. Jones
meets all of the limitations of the claimed invention but differs from
the claimed invention in that software used to develop credit scores is
based on a linear probability model instead of a probit model. The examiner
however directs attention to Smith that establishes the equivalency of
probit and linear probability based credit scoring models in arts relating
to mortgage loans. As noted in the Business Review article both linear
probability and probit models are standard techniques used to develop
credit scores for borrowers and are equally effective in estimating the
credit worthiness of a borrower. The substitution of a probit model for
the linear probability model of Smith would have been obvious to one of
ordinary skill in the art at the time of the invention as it is irrelevant
whether a model assuming a linear relationship or a logical distribution
(probit) is the basis of credit scoring as each is a standard technique
used by the ordinary artisan and both have been recognized to provide
a good estimate of the credit worthiness of a potential borrower.
Example
16: Rationale reasoned from the level of skill in the art.
a.
The claimed invention
The
invention is drawn to a banking system that utilizes the Internet to communicate
to customers their bank balances, records of all transactions on a month
to month basis and most other informational services usually provided
by banks. The disclosure indicates that the invention provides the ability
to access almost all of the full banking informational services that are
normally available to a regular banking institution but does so over the
Internet. This service is provided with a high level of transaction security
for all customer activities through encryption-decryption software interfaces.
The invention states that this is the first banking system to provide
this service to their customers.
Claim
1:
A
method of providing banking services to customers comprising the steps
of:
assigning
a customer identification number unique to each customer that is used
to access a customer’s account;
providing
a web page on the Internet for access by customers with said identification
number, said web page allowing customers to access their own personal
bank account; and
providing
a secure connection for each customer to allow the customer to read and
download their account information including account balance and transaction
information.
b.
Evidence
The
available prior art is a brochure from the Acme Bank that describes all
of the disclosed informational banking services set forth in the instant
invention but does not include the use of the Internet to provide these
services. For example, the Acme Bank system provides a monthly statement
of transactions for a customer’s account. The prior art teaches that this
statement would be mailed on a monthly basis and that the security is
provided by confidential mailing. Another example of the Acme bank informational
services is how a customer may access real time account information from
an ATM, with the security being provided by the PIN (Personal Identification
Number) controlled access methodology.
c.
Good statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over the Acme
Bank brochure. The brochure of the Acme Bank discloses all of the informational
features normally provided by a banking institution. Acme does not discuss
the use of the Internet to allow customers secure access to their account
information as claimed. In determining the obviousness of applying what
is generally known in the banking industry to what is known in the world
of the Internet one must determine the level of ordinary skill (Dann
v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976)). The Internet, to
one ordinarily skilled in the art, for some time now is recognized as
a vehicle in which information is shared from computer to computer. A
typical example would be for one computer to access and download files
from another computer located at a different site than the first. Security
for protecting such information is widely known by the use of encryption
techniques. Also, the banking industry has utilized computers for years
to keep track of accounts and present this data to their customers through
tellers, the US mail and ATM machines. Therefore, it would have been obvious
to one of ordinary skill in the art at the time of the invention to have
utilized the Internet to access the data in one’s account in a typical
banking system such as that taught in the Acme Bank brochure for the purpose
of obtaining account information. The desirability to do this is clearly
to save a customer the time of traveling to a bank or interfacing with
a teller to get the customer account information.
V.
Examples of Improper Rejection under 35 U.S.C. 103
Example
17: Improper rejection based upon hindsight - general motivation statement.
a.
The claimed invention
The
invention is drawn to a smart card containing a tracking mechanism, which
tracks shopping preferences of consumers by recording the type, quantity,
and dates of purchase for a pre-selected group of products. The smart
card is useful in a system and method for introducing new and alternative
products that are of the same type as products normally purchased by the
shopper. The smart card records the shopper’s purchases and submits an
automatic notification to the shopper when a quantity threshold is achieved
for the pre-selected products. This notification will encourage the consumer
to consider alternative products by providing the consumer incentives,
such as a pricing discount, to purchase an alternative product.
Claim
1:
A
method for using a smart card in a marketing analysis program designed
to introduce new products, the method comprising the steps of:
storing
product information on the smart card when said products are purchased
by a consumer wherein said information including type, quantity and
dates of the product purchased;
identifying
for each product a threshold for each of said type, quantity and dates
of products purchased;
determining
an incentive for an alternative product based on said threshold; and
automatically
notifying said consumer when said threshold is reached for a given
product identified on the smart card and providing the consumer with
said incentive, whereby the incentive encourages the consumer to consider
alternative products.
b.
Evidence
Reference
A discloses smart card that tracks consumer preferences by recording the
type, quantity, and dates of purchase of pre-selected products to determine
trends in consumer purchases. The smart card is periodically read by a
scanner to determine its contents for market analysis. In return for using
the smart card and participating in the marketing program, the user is
provided with free product coupons for products that are normally purchased
by the shopper.
Reference
B discloses a traditional consumer incentive program that provides coupons
for the purchase of named products based upon the consumer’s purchase
of those same products to promote customer loyalty.
c.
Poor statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A in view of Reference B. Reference A discloses the conventional use of
a smart card to track consumer preferences and provide incentives. However,
Reference A does not disclose the automatic notification to consumer providing
incentives. Reference B discloses providing incentives to consumers to
purchase the desired products. It would have been obvious to combine Reference
A’s smart card with Reference B’s incentive to consumers because the combination
would allow Reference A’s smart card to be more efficient.
d.
Analysis
The
motivation, improve efficiency, is too general because it could cover
almost any alteration contemplated of Reference A and does not address
why this specific proposed modification would have been obvious. Additionally,
there is nothing in either of references that would suggest automatically
notifying the consumer when reaching a threshold nor is there anything
in either reference that would suggest the notifying step. Finally, although
Reference B teaches a traditional coupon scheme to promote customer loyalty,
there is no suggestion, other than applicant’s disclosure, to employ this
scheme to promote the introduction of new and alternative products. The
rejection is improper.
Example
18: Improper rejection based upon hindsight - proposed motivation contrary
to the stated purpose of the reference.
a.
The claimed invention
The
claim recites a smart card containing a tracking mechanism which tracks
shopping preferences of consumers including the type and quantity of products
purchased as well as the time interval over which the purchases are made
by the consumer. Additionally, after a predefined start-up period, an
automatic notification to the consumer is provided when a particular product
would normally be purchased by the consumer. This notification will encourage
the consumer to consider same product by providing the consumer incentives
to purchase the product, including substantial price reductions which
vary on a periodic basis, thereby increasing sales and product loyalty.
Claim
1:
A
method for using a smart card in a marketing analysis program, the method
comprising the steps of:
storing
a product information on the smart card when said products are purchased
by a consumer wherein said information including type, quantity and
dates of the product purchased;
identifying
a threshold for each of said type, quantity and dates of products
purchased;
determining
an incentive for each purchased product based on said threshold; and
automatically
notifying said consumer when said threshold is reached for the same
type of product identified on the smart card and providing the consumer
with said incentive, whereby the incentive encourages the consumer
to purchase the same product to increase sales and product loyalty.
b.
Evidence
Reference
A discloses smart card that tracks consumer preferences by recording the
type, quantity, and dates of purchase of pre-selected products to determine
trends in consumer purchases and the potential for offering new products
to certain shoppers. The smart card is periodically read by a scanner
to determine its contents for market analysis. In return for using the
smart card and participating in the marketing program, the user is provided
with free product coupons for new and alternative products that are of
the same type as the products normally purchased by the shopper.
Reference
B discloses a traditional consumer incentive program that provides coupons
for the purchase of named products based upon the consumer’s purchase
of those same products to promote customer loyalty.
c.
Poor statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A in view of Reference B. Reference A discloses the use of a smart card
to track consumer preferences and determine what new products might be
of interest to the consumer. However, Reference A does not disclose the
automatic notification to consumer providing incentives. Reference B discloses
providing incentives, such as coupons, to consumers to purchase the desired
products. It would have been obvious to combine Reference A’s smart card
with Reference B’s incentive to consumers because the combination would
allow Reference A’s smart card to increase sales of the desired product.
d.
Analysis
The
motivation is not sound because there is nothing in either of references
that would suggest that the motivation for combining the references is
known outside of applicant’s disclosure. Additionally, there is nothing
in the references that would suggest incorporating the claimed notifying
step with the smart card. Further, the proposed modification would destroy
the intended purpose of Reference A; providing a program to introduce
new and alternative products. The rejection is improper.
Example
19: Improper rejection based upon hindsight - proposed motivation not
directed to the claim differences.
a.
The claimed invention
The
claim recites a smart card containing a tracking mechanism which tracks
shopping preferences of consumers including the type and quantity of products
purchased as well as the time interval over which the purchases are made
by the consumer. Additionally, after a predefined start-up period, an
automatic notification to the consumer is provided at a point of sale
terminal (POS) when a particular product meeting the quantity requirement
is purchased by the consumer. This notification will encourage the consumer
to continually purchase the same product by providing the consumer incentives
for reaching the quantity requirement including a substantial price reduction
on the current purchase. The magnitude of the price reduction may vary
on a periodic basis.
Claim
1:
A
method for using a smart card in a market analysis program, the method
comprising the steps of:
storing
a product information on the smart card when said products are purchased
by a consumer wherein said information includes type, quantity and
the purchase date of the product purchased;
identifying
a threshold for each of said type, quantity and purchase dates of
products purchased;
determining
an incentive for the product based on said threshold; and
automatically
notifying said consumer at POS terminal when said threshold is reached
for the same type of product identified on the smart card and providing
the consumer with said incentive, whereby the incentive encourages
the consumer to purchase the product more frequently by providing
the consumer with a substantial price reduction on the current purchase.
b.
Evidence
Reference
A discloses smart card that tracks consumer preferences by recording the
type, quantity, and dates of purchase of pre-selected products to determine
trends in consumer purchases for inventory management purposes. The smart
card is periodically read by a scanner to determine its contents for market
analysis. In return for using the smart card and participating in the
marketing program, the user is provided with free product coupons for
new and alternative products that are of the same type as the products
normally purchased by the shopper.
Reference
B discloses a traditional consumer incentive program that provides coupons
for the purchase of named products.
c.
Poor statement of the rejection
Claim
1 is rejected under 35 U.S.C. 103 as being unpatentable over Reference
A in view of Reference B. Reference A discloses the conventional use of
a smart card to track consumer preferences and determine what new products
might be of interest to the consumer. However, Reference A does not disclose
the automatic notification to consumer providing incentives based on reaching
a quantity threshold. Reference B discloses providing incentives, such
as coupons, to consumers to purchase the desired products. It would have
been obvious to combine Reference A’s smart card with Reference B’s incentive
to consumers because the combination would allow Reference A’s smart card
to increase sales of the desired product. Further, coupons and price reductions
are well known equivalents in the art.
d.
Analysis
The
motivation is not sound because there is nothing in either of references
that would suggest that the motivation for combining the references is
known outside of applicant’s disclosure. Additionally, there is nothing
in the references that would suggest incorporating the claimed notifying
step at the POS terminal with the smart card. Furthermore, the claimed
threshold data is significant because it provides a patentable distinction
and is not merely data being stored. The data plays a vital role in the
distinguishing features of the invention. Also, the statement of equivalents
in the art is not well taken as the examiner has not presented any evidence
on this position and it does not appear to be well known; coupons are
normally supported by the product manufacturer and the price reduction
appears to be supported by the store where the consumer is shopping.
The rejection is improper.
Footnotes
- 383
U.S. 1, 148 USPQ 459 (1966).
- In
re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
- Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537, 218 USPQ 871, 877 (Fed.
Cir. 1983).
- Environmental
Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868
(Fed. Cir. 1983).
- In
re Morris, 17 F.3d 1048, 44 USPQ2d 1023 (Fed. Cir. 1997).
- See
In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992); Medtronic, Inc. v. Cardiac Pacemakers, 721 F.2d 1563, 220 USPQ
97 (Fed. Cir. 1983) (Patent claims were drawn to a cardiac pacemaker
which comprised, among other components, a runaway inhibitor means for
preventing a pacemaker malfunction from causing pulses to be applied
at too high a frequency rate. Two references disclosed circuits used
in high power, high frequency devices which inhibited the runaway of
pulses from a pulse source. The court held that one of ordinary skill
in the pacemaker designer art faced with a rate-limiting problem would
look to the solutions of others faced with rate limiting problems, and
therefore the references were in an analogous art.).
- See
In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) ("Accordingly,
whether information is printed, handwritten, or on microfilm or a magnetic
disc or tape, etc., the one who wishes to characterize the information,
in whatever form it may be, as a 'printed publication'…should produce
sufficient proof of its dissemination or that it has otherwise been
available and accessible to persons concerned with the art to which
the document relates and thus most likely to avail themselves of its
contents.").
- See
also Amazon.com v. Barnesandnoble.com, 73 F. Supp. 2d 1228, 1233-34,
53 USPQ2d 1115, 1119 (W.D. Wash. 1999) (Pages from a website were relied
on by defendants as an anticipatory reference (to no avail), however,
status of the reference as prior art was not challenged.).
- See
In re Nomiya, 509 F.2d 566, 571,184 USPQ 607, 610 (CCPA 1975) (Figures
in the application labeled "prior art" held to be an admission that
what was pictured was prior art relative to applicant's invention).
- In
re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970) (Board
properly took judicial notice that "it is common practice to postheat
a weld after the welding operation is completed" and that "it is old
to adjust the intensity of a flame in accordance with the heat requirement.").
- In
re Chevenard, 139 F.2d 71, 60 USPQ 239 (CCPA 1943).
- In
re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992);
-
In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).
-
In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
-
In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985).
- In
re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991);
-
In re O'Farrell, 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988).
- In
re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990);
- In
re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972).
-
In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990).
- See
MPEP 2144.04 for examples of common practices which the court has held
to be routine expedients.
- In
re Dillion, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990).
-
In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997);
- In
re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978);
-
In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972). In
re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995).
- In
re Chupp, 816 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987).
-
In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir.
1990);
- In
re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 777 (Fed. Cir. 1983).
- Demaco
Corp. v. F. Von Langsdorff Lic., Ltd., 851 F.2d 1387, 7 USPQ2d 1222
(Fed. Cir. 1988);
- Lindemann
Maschinenfabrik v. American Hoist & Derrick Co., 730 F.2d 1452, 221
USPQ 481 (Fed. Cir. 1984).
- Windsurfing
Int'l, Inc. v. AMF, Inc., 782 F.2d 995, 228 USPQ 562 (Fed. Cir. 1986).
-
Intel Corp. v. United States ITC, 946 F.2d 821, 20 USPQ2d 1161 (Fed.
Cir. 1991);
- Panduit
Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).
- In
re O'Farrell, 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988).
- Specialty
Composites v. Cabot Corp., 845 F.2d 981, 6 USPQ2d 1601 (Fed. Cir. 1988);
- Panduit
Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).
- Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed.
Cir. 1985); Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 224 USPQ
195 (Fed. Cir. 1984).
- In
re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996);
In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1132 (Fed. Cir. 1995).
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