Appeal No. 2006-1123
Application No. 09/766,934
We therefore conclude that Ensel does incorporate the object generation claimed
in claim 1.
Given that Ensel therefore teaches an incorporation of the elements of claim 1 in
a billing structure, we must sustain the rejection, and the decision that Claims 1-4 and
16-20 stand rejected under 35 U.S.C. § 102(e) as being unpatentable as anticipated
under Ensel is affirmed.
Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ensel in
view of Siemens
Appellant argues that skilled artisans would not have been motivated to modify
the billing system of Ensel to incorporate the translation facility of Siemens. (See brief
at page 6) .
While the examiner indicates that the rejection is based on Ensel in view of the
Siemens patent (Answer, pages 4 and 7), the examiner merely points to teachings in
the English language Derwent abstract of Siemens and does not provide an English
language translation of the entire document as instructed in the Manual of Patent
Examination Procedure section 706.02 (II) entitled “Reliance Upon Abstracts and
Foreign Language Documents In Support of a Rejection” and section 1207.02 entitled
“Contents of the Examiner’s Answer.” The teachings specifically alluded to by the
examiner are directed broadly to simplification of communications between countries
and provide no teaching or suggestion of the translation of correlated data to a selected
language prior to generating the bill in a billing system. We make no determination as
to whether such teaching or suggestion may be found in the Siemens patent itself as
that was not the basis of the examiner’s rejection.
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