Ex Parte MCCALDEN et al - Page 7



          Appeal No. 2004-0044                                                        
          Application No. 09/375,214                                                  
          Appellants that the sales transactions of Taricani relates to               
          only a single taxpayer event, which does not constitute the                 
          claimed taxpayer profile including information relating to a                
          plurality of taxpayer events for the respective taxpayer.                   
               In concluding that Honarvar’s case management system and the           
          sales tax database of Taricani provide the teaching and                     
          suggestion for arriving at the claimed subject matter in claim              
          13, the Examiner attempts to forge a combination of a database              
          related to uncollected sales tax that has nothing to do with a              
          decision management system used for monitoring the movement of              
          clients across different client categories.  Thus, assuming,                
          arguendo, that it would have been obvious to combine Taricani               
          with Honarvar, as held by the Examiner, the combination would               
          still fall short of teaching or suggesting the claimed taxpayer             
          profile and the feedback mechanism.  We note that other dependent           
          claims, similar to claim 13, require identification of the                  
          taxpayer profile and the feedback mechanism for feeding back the            
          result of the decision management system.  Accordingly, as the              
          Examiner has failed to set forth a prima facie case of                      
          obviousness, we do not sustain the 35 U.S.C. § 103 rejection of             
          independent claims 13, 22, 35-38 as well as claims 14-19, 33 and            
          34, dependent thereupon, over Honarvar and Taricani.                        

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