Appeal 2007-1235
Application 09/748,125
saving said values to the tracking database referenced to the internal
document identifiers. Appellants argue instead that:
the rejection of claim 12 does not indicate how translation errors in
trading partner documents are correlated to variables and stored
referenced to the internal document identifiers (which are not
disclosed by any of the applied references).
FF 7. In other words, Appellants object to Puckett’s relevance to claim 12 on
the grounds that it does not involve trading partner documents.
Appellants’ argument is unpersuasive to show error in the Examiner’s
finding because, as with the argument regarding the rejection of claim 11,
the issue is not whether Puckett anticipates the subject matter of claim 12 but
whether the combination of Ricker and Puckett would have led one of
ordinary skill in the art to the subject matter of claim 12 such that it would
have been obvious under 35 U.S.C. § 103(a) (2002). Furthermore, Puckett’s
disclosure is clearly relevant to the subject matter claimed because Puckett
not only captures errors in a tracking database but also identifies the errors
captured, steps which are also present in the claimed method.
Having found Appellants’ arguments on the relevance of Puckett
unpersuasive, we find that Appellants have not shown error in the prima
facie case of obviousness. Each step claimed performs as one of ordinary
skill in the art would expect it to perform from reading the cited prior art.
Each performs a known function and that function is spelled out in the prior
art. The steps claimed do no more than what one would expect if the steps
described in Ricker and Puckett were to be combined. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l v. Teleflex Inc.,
127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007). In that regard,
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