Appeal No. 2006-1123
Application No. 09/766,934
Therefore, we find that the examiner has not established a prima facie case of
obviousness of dependent claim 12. Accordingly, the rejection of claim 12 under 35
U.S.C. § 103 as being unpatentable over Ensel in view of Siemens is not sustained and
the decision that claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Ensel in view of Siemens is reversed.
Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ensel in
view of Mitra et al
Appellant further argues that skilled artisans would not have been motivated to
modify the billing system of Ensel to incorporate the teachings of Mitra. (See brief at
page 6 and 7) .
We agree with the examiner that the billing system of Mitra complements the
billing system of Ensel leading one of ordinary skill in the art to Mitra. But that is almost
beside the point because the rejection does not attempt to combine Mitra’s system with
Ensel’s. Rather, the teaching in Mitra is relied upon as evidence for the unremarkable
showing that some bills of the types Ensel would prepare would be final, and may need
to be identified as such. Any art in the field of billing services that generically taught the
proposition that some bills are final and are identified as such would be equally
persuasive as evidence that such bills tend to occur.
Accordingly we must sustain the rejection, and the decision that Claim 14 stands
rejected under 35 U.S.C. § 103 as being unpatentable over Ensel in view of Mitra et al.
is affirmed.
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