Appeal 2007-1403
Application 10/226,966
All claims on appeal, claims 1, 3 through 11, 13 through 21, and 23
through 33, stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the Examiner relies upon Fiszman in view of Bahar.
Rather than repeat the positions of the Appellants and the Examiner,
reference is made to the Brief and Reply Brief for Appellants’ positions, and
to the Answer for the Examiner’s positions.
OPINION
For the reasons set forth by the Examiner in the Answer, as expanded
upon here, we sustain the rejection of all claims on appeal under 35 U.S.C.
§ 103. On page 11 of the principal Brief, Appellants argue independent
claim 1 as representative of the subject matter of independent claims 11 and
21 as well. Similar approaches are taken with respect to dependent claim 31
and the other dependent claims 32 and 33 as expressed at page 20 of the
principal Brief on appeal.
At the outset, the principal Brief does not argue before us that
Fiszman and Bahar are not properly combinable within 35 U.S.C. § 103.
Rather, in the principal brief, Appellants just argue in effect that the
combination does not teach or suggest the features of providing the claimed
service bureau in the initial clause of independent claim 1 on appeal as well
as generating the process definition requirement in the next succeeding
clause. As such, any arguments of the absence of combinability within 35
U.S.C. § 103 are waived.
Nonetheless, “‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness’ . . . .
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
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