Appeal 2007-0221
Application 09/737,404
employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385,
1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 1 and 7 based on the combination of Nazem, Nehab,
Gershman, and Rao, after reviewing the Examiner’s analysis (Answer 3-9),
it is our opinion that the stated position is sufficiently reasonable that we
find that the Examiner has at least satisfied the burden of presenting a prima
facie case of obviousness. The burden is, therefore, upon Appellants to
come forward with evidence and/or arguments which persuasively rebut the
Examiner’s prima facie case. 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 waived [see 37 C.F.R. § 41.37(c)(1)(vii)].
Appellants’ arguments in response to the Examiner’s 35 U.S.C.
§ 103(a) rejection do not attack the Examiner’s establishment of motivation
for the proposed combination of references but, rather, assert a failure by the
Examiner to establish a prima facie case of obviousness since all of the
claimed limitations are not taught or suggested by the applied prior art
references. In particular, Appellants focus (Br. 6-7) on the alleged
deficiency of Gershman in teaching the retrieving, storing, and summarizing
financial information that is “proprietary” to the user.
After careful review of the disclosure of Gershman in light of the
arguments of record, however, we are in general agreement with the
Examiner’s position as stated in the Answer. For all of the reasons
articulated by the Examiner (Answer 18-20), we find that the bill-paying
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