Appeal No. 2006-1123
Application No. 09/766,934
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ensel in
view of Logan 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 Logan. (See brief at
page 7).
We agree with the examiner that the billing system of Logan complements the
billing system of Ensel leading one of ordinary skill in the art to Logan. But that is
almost beside the point because, as with Mitra and claim 14 above, the rejection does
not attempt to combine Logan’s system with Ensel’s. Rather, the teaching in Logan is
relied upon as evidence for the unremarkable showing that some bills of the types Ensel
would prepare would be duplicate, 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
duplicate 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 15 stands
rejected under 35 U.S.C. § 103 as being unpatentable over Ensel in view of Logan et al.
is affirmed.
CONCLUSION
To summarize:
The decision of the examiner to reject claim 12 as being unpatentable under 35
U.S.C. § 112, first paragraph, for lack of enablement, is affirmed.
The decision of the examiner to reject claims 1-4 and 16-20 under 35 U.S.C.
§ 102(e) as being unpatentable as anticipated under Ensel is affirmed.
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