Appeal No. 2006-1523
Application No. 09/793,687
Rejection of claims 1 through 3, 5, 6, 8, 9, 14 through 19 and 21 through 24
under 35 U.S.C. § 103 (a) as being unpatentable over Burchetta in view of Sloo.
Rejection of claims 1 through 3, 5, 6, 8, 9, and 14 through 19.
Appellant’s arguments, on pages 15 through 17 of the brief, group claims 2, 3, 5,
6, 9 and 14 through 19 together with claim 1. Appellant argues on page 17 of the brief
that the combination of Burchetta and Sloo is “improper; Burchetta’s system already has
a procedure for computing a settlement account [ ]and there is nothing in Burchetta that
would motivate one of ordinary skill in the art to substitute a teaching from Sloo for
Burchetta’s carefully designed procedure.” Further, appellant argues:
Burchetta has a complete system for obtaining a settlement amount,
involving a computed procedure for arriving at an amount; this is imposing a
solution rather than suggesting a solution. Sloo is not really concerned with how
complaints are settled, but nevertheless provides an elaborate arbitration system
for deciding complaints. Arbitration does not suggest a solution as required by
claim 1, instead, arbitration imposes a solution. Accordingly, the references
themselves do not show or suggest the invention of claim 1. [Emphasis added]
The examiner responds, on pages 19 through 27 of the answer, asserting that the
motivation can be found in Sloo’s teaching of providing the highest satisfaction levels to
the parties when settling the claims. Further, on pages 20 through 26 of the answer, the
examiner equates the teachings of Burchetta and Sloo with the invention as claimed in
claim 1.
We concur with the examiner’s rationale as set forth on pages 20 through 26 of
the answer. “The motivation, suggestion or teaching may come explicitly from
statements in the prior art, the knowledge of one of ordinary skill in the art, or, in some
cases the nature of the problem to be solved.” In re Huston 308 F.3d 1267, 1278, 64
USPQ2d 1801, 1810 (Fed. Cir. 2002, citing In re Kotzab 217 F.3d 1365, 1370, 55 USPQ
1313, 1317 (Fed. Cir. 2000)). When considering the motivation in the obviousness
analysis “the problem examined is not the specific problem solved by the invention but
the general problem that confronted the inventor before the invention was made.” In re
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