Ex Parte Ahlert et al

Board of Patent Appeals and Interferences

Jul 9, 2012

11138689 (B.P.A.I. Jul. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/138,689 05/27/2005 Dirk Ahlert 07781.0230-00 8913
60668 7590 07/10/2012
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
HASSAN, RASHEDUL
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
07/10/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DIRK AHLERT, CHRISTIAN GUENTHER,
and JOCHEN KOUNTZ
_____________

Appeal 2009-012346
Application 11/138,689
Technology Center 2100
______________

Before, MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3, 4, 6, and 8-26.
1
We have jurisdiction under 35
U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

1
Claims 2, 5, and 7 were previously cancelled.
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Application 11/138,689

2
INVENTION
The invention is directed to a computer-program product and method
that personalizes software programs by using administrative personalization
data and user personalization data. Spec. 6-21. Claim 1 is representative of
the invention and is reproduced below:
1. A method for personalizing software programs in a computer
system, comprising:
determining default values for personalization data for a
plurality of end-users at start-up of a program in the computer
system, the default values being personalized individually with
regard to a specific end-user such that the program started-up
by the end-user runs in a fashion that is adapted to the
individual needs or preferences of the end-user as determined
by the personalization data;
providing two levels of personalization, in each of which
personalization data for the end-users can be stored, the two
levels of personalization including a first, administrative
personalization level containing administrative personalization
data for the end-user which can be set by a system
administrator, but not by the end-user, and a second, individual
personalization level containing additional, individual
personalization data, which can be set by the end-user, wherein
the individual personalization data of the individual
personalization level overrides, modifies, or limits the
administrative personalization data of the administrative
personalization level;
displaying, to the end-user, information related to the
personalization data stored in the levels for the end-user, at the
start-up of the program; and
arranging, in the computer system, a hierarchical
personalization data filing system comprising personalization
nodes arranged in a tree structure, the personalization nodes
being assigned at least one personalization characteristic,
wherein when the program reads out the personalization data on
personalization characteristics of a lower-ranking
personalization node, the program is automatically provided
also with the personalization data on personalization
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Application 11/138,689

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characteristics of personalization nodes ranking higher in the
direct analytical path.

REFERENCES
Kasso US 5,832,505 Nov. 3, 1998

Lewish US 6,266,661 B1 Jul. 24, 2001

Cox US 6,324,578 B1 Nov. 27, 2001

REJECTIONS AT ISSUE
Claims 1, 3, 4, 6, 8-12, and 14-26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Cox and Lewish.
Ans. 3-9.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Cox, Lewish, and Kasso. Ans. 10-12.
ISSUES
Did the Examiner err in finding that the combination of Cox and
Lewish teaches or suggests personalization nodes arranged in a tree structure
wherein the personalization nodes are assigned at least one personalization
characteristic?
Did the Examiner rely on improper hindsight to combine Cox and
Lewish?
ANALYSIS
Claims 1, 3, 4, 6, 8-12, and 14-26
Appellants effectively select claim 1 as representative of the group
comprising claims 1, 3, 4, 6, 8-12, and 14-26, as Appellants do not
separately address any of the other claims with sufficient particularity. App.
Br. 20; Reply Br. 6. Claim 1 requires personalization nodes arranged in a
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tree structure wherein at least one personalization characteristic is assigned
to the personalization nodes. Appellants argue that neither Cox nor Lewish
teaches or suggests this limitation since, while Cox may teach
personalization data, Cox does not teach personalization characteristics and
Lewish’s configuration files (210a-210j) do not contain personalization
characteristics. App. Br. 18; Reply Br. 3. We disagree.
The Examiner finds that Cox teaches two levels of personalization,
i.e., a user set and an administrator set, and that these sets contain
personalization data wherein personalization data includes personalization
characteristics.
2
Ans. 15. The Examiner further finds that Lewish teaches
arranging configuration nodes in a hierarchical tree structure based on
priority wherein each node contains a configuration file. Ans. 16.
Therefore, the Examiner interprets the configuration nodes and configuration
files as the claimed nodes and data elements (respectively). Ans. 15. Thus,
the Examiner finds that one of ordinary skill in the art would have found it
obvious to store Cox’s personalization characteristics in Lewish’s
configuration files in order to create personalization nodes that contain at
least one personalization characteristic in a tree structure, as required by the
claim. Ans. 15-16. We agree as this is simply a combination of familiar
elements according to known methods which produces nothing more than
predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418,
(2007).

2
Appellants also argue that neither of the references specifically teaches
“personalization characteristics.” Reply Br. 3. However, we agree with the
Examiner that personalization data includes personalization characteristics.
Ans. 15.
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Appellants additionally argue that the Examiner relies on improper
hindsight to combine Cox and Lewish. App. Br. 18; Reply Br. 6. We
disagree and add the following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellant’s invention and does not include
knowledge gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 3-12. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
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obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 3-12. Thus, we agree with the
Examiner’s findings and conclusions.
For the reasons stated supra, we sustain the Examiner’s rejection of
claims 1, 3, 4, 6, 8-12 and 14-26.
Claim 13
Appellants make the same arguments with respect to claim 13 as with
claim 1. App. Br. 20-21; Reply Br. 6-7. Therefore, we sustain the
Examiner’s rejection of claim 13 for the reasons discussed supra with
respect to claim 1.
CONCLUSIONS
The Examiner did not err in finding that the combination of Cox and
Lewish teaches or suggests personalization nodes arranged in a tree structure
wherein the personalization nodes are assigned at least one personalization
characteristic.
The Examiner did not rely on improper hindsight to combine Cox and
Lewish.
SUMMARY
The Examiner’s decision to reject claims 1, 3, 4, 6, and 8-26 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

ELD