Appeal No. 2006-2952
Application No. 10/209,242
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000)). See also In
re Thrift, 298 F.3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These
showings by the examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative persuasiveness
of the arguments. See id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984);
and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
arguments actually made by appellants have been considered in this decision. Arguments
which appellants could have made but chose not to make in the brief have not been
considered and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how the claimed invention is deemed to be rendered
obvious by the collective teachings of Marriott and Simon [answer, pages 4-9].
Appellants argue that the examiner’s findings with respect to Marriott are incorrect.
Specifically, appellants argue that Marriott fails to disclose or suggest that (1) an inferred
vector is determined for each variable data document; (2) the inferred vector is a function
of the set of calculated set of value properties; and/or (3) the inferred intent vector is
determined by a matrix multiplication applied to a vector of value properties. Appellants
also note that Simon fails to teach these features. Appellants also contradict an assertion
by the examiner that appellants admit in the specification that the determination of an
inferred intent vector for each variable data document as a function of the set of
calculated set of value properties was well known [brief, pages 4-7].
The examiner responds that appellants’ interpretation of Marriott ignores and/or
misinterprets the basic mathematical operations and concepts of the reference. The
examiner notes that Marriott teaches the determining step of claim 1 because graph
functions can be mathematically expressed as matrices with x and y axes, a vector could
be mathematically expressed as an array, and the mathematical notation for the function
fx represents any function, which could include a function of matrix multiplication
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