Appeal 2007-0768 Page 14
Application 10/430,883
1 been led to the relevant teachings of The Jury Research Institute to arrive at
2 the claimed invention and thus established a prima facie case of obviousness
3 of the claimed invention over that of The Jury Research Institute. FF 13-17.
4 The burden now shifts to Appellant to come forward with evidence or
5 argument showing error in Examiner’s determination.
6 Appellants argue that that the references do not teach that the claimed
7 Juror Suitability Test is administered prior to any prospective juror panel
8 being assembled at a trial. FF 18. However, as before, this argument is not
9 commensurate in scope with what is claimed. Its acceptance requires us to
10 read into the claims a step of administering the form to a prospective juror
11 panel prior to being assembled at a trial. However, given their broadest
12 reasonable interpretation, the claims on appeal require no more than
13 transmitting the form to prospective jurors and accepting their responses
14 using a host server over a computer network, and that can be accomplished
15 while a prospective juror panel is assembled at a trial.
16 Appellants also argue that "automation of the process is not disclosed
17 in the applied references." FF 19. That is the sum total of Appellants'
18 argument. A mere suggestion that appellants' process does automatically
19 what The Jury Research Institute process does by hand is not per se a strong
20 argument as the Examiner has suggested, where no difference in mechanism
21 is shown between conducting a process automatically and doing the same by
22 hand, a patentable distinction has not been made out by arguing that the
23 instant process involves "automation." FF 16. We do not find this argument,
24 without more, overcomes the Examiner’s prima facie case of obviousness.
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