Ex Parte Alavi et al

Board of Patent Appeals and Interferences

Nov 29, 2006

10726624 (B.P.A.I. Nov. 29, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Ali Alavi, Gunther L. Brenes, Luis A. Dector,
L. Douglas Everhart, Arturo Oliver, and Ramkumar Ramachandran
____________

Appeal No. 2006-3184
Application No. 10/726,624
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HEARD: Nov. 16, 2006
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Before MARTIN, JERRY SMITH, and BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

A patent examiner rejected claims 1-20. The appellants appeal therefrom under
35 U.S.C. § 134(a). We reverse.

I. BACKGROUND
The invention at issue on appeal concerns user interfaces to the World Wide
Web. Users employ such Web interfaces to perform tasks such as query submission
and report navigation. (Spec. at 1.) ActiveX and JAVA controls have been used to
regulate existing user interfaces. Applications are downloaded onto a client device and
run within its browser. The device makes http calls back to a Web server to get
additional data. (Id. at 2.)

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Despite the functionality provided by ActiveX and JAVA interfaces, the appellants
have encountered difficulties with the interfaces. Impeded by security at client devices,
installation of such user interfaces on client devices has proven difficult. The
functionality of ActiveX and JAVA consumes a great deal of the memory of client
devices. Furthermore, transmission of large sets of data often consumes excessive
bandwidth. (Id.)

Accordingly, the appellants' invention provides a user interface to a business
information system. A first set of Hypertext Markup Language ("HTML") interface tools
(i.e., spreadsheet tools, graphing tools, auto-prompt tools, and report generation and
management tools) is located on a business intelligence server. A second set of HTML
interface tools (i.e., navigation tools and "internationalization" tools) is located on a Web
server. (Id. at 22.) The appellants assert that the use of HTML tools residing on the
Web server and the business intelligence server eliminates many of the difficulties
associated with Java and ActiveX tools on client devices and improves the functionality
of the HTML tools. (Id. at 17.)

A further understanding of the invention can be achieved by reading the following
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claim.
1. A web interface system for use with a business information system, the
web interface system providing an interface to a client computer and
comprising:

a first set of HTML interface tools located on a business intelligence
server, the first set of HTML interface tools including spreadsheet tools,
graphing tools, auto-prompt tools, and report management tools;

second set of HTML interface tools located on a web server, the
second set of HTML interface tools including navigation tools and
internationalization tools; and

means for providing communication between the business
intelligence server, the web server, and the client computer, such that the
client computer is able to utilize the first set of HTML interface tools and
the second set of HTML interface tools.

Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as obvious over U.S.
Patent No. 6,668,253 ("Thompson ") and U.S. Patent No. 6,748,569 ("Brooke").

II. OPINION
"Rather than reiterate the positions of the examiner or the appellants in toto, we
focus on a point of contention therebetween." Ex parte Sienel, No. 2005-2429,
2006 WL 1665423, at *1 (B.P.A.I. 2006). The examiner makes the following assertions.
Thompson et al., (i.e. web server) (Fig. 1, item 106) and ("The web
server 106 that EIM integrates is preferably Microsoft's Internet
Information Server (IIS) version 4.0 running on Windows NT 4.0. Col. 30,

lines 59 - col. 31 line 4 and col. 60 [sic], lines 61-67) Clearly teaches EIM
is located on a web server. "The ASP pages generate the DHTML
necessary for the EIM application.'' And "These HTML pages, static in
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nature, are accessible through the EIM system and allow an enterprise to
distribute their financial statements and other financial reports
electronically'' clearly teaches HTML interface tools are located on a web
server.

(Examiner's Answer at 13-14.) The appellants argue, "The cited lines merely
state that the reference requires a web server." (Reply Br. at 5.)

"In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the independent claims at issue to determine their scope. Second,
we determine whether the construed claims would have been obvious." Ex Parte
Cuomo, No. 2003-0509, 2004 WL 4978831, at *2 (B.P.A.I. 2004).

A. CLAIM CONSTRUCTION
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). Here, claim 1 recites in pertinent part the following limitations: "second set of
HTML interface tools located on a web server, the second set of HTML interface tools
including navigation tools and internationalization tools. . . ." Claim 14 includes similar
limitations. In other words, the independent claims require navigation tools located on a
web server.

B. OBVIOUSNESS DETERMINATION
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"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Ex Parte Massingill, No. 2003-
0506, 2004 WL 1646421, at *3 (Bd.Pat.App & Int. 2004). "In rejecting claims under 35
U.S.C. Section 103, the examiner bears the initial burden of presenting a prima facie
case of obviousness." In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992)). "'A prima facie case of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed subject matter to a person of
ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976)).

Here, Thompson's invention "relates to enterprise information
management ("EIM"). . . ." (Col. 1, ll. 13-14.) More specifically, "[t]his invention, EIM,
provides a web-based information solution that serves the business monitoring,
reporting, and analysis needs of automobile dealerships and enterprises." (Col. 6, l. 66
– col. 7, l. 1.) "FIG. 1 depicts an overview of the EIM architecture 100 according to
embodiments of this invention. As shown in FIG. 1, client workstations 102-1,

. . . 102-4 connect to a Data Warehouse server 104 via a web server 106." (Col. 7,
ll. 56-59.)

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"Every user is typically required to provide a valid userid and password that is
known to EIM. Once this userid has been authenticated by EIM, a new browser window
is opened in kiosk or full screen mode. . . . The new browser window presents the user
with an interface. . . ." (Col. 7, l. 64 – col. 8, l. 3.) "FIG. 2 shows the structure of the
EIM user interface ('UI') layout. . . ." (Col. 6, ll. 23-24.) "The majority of the left side of
the EIM UI consists of the task list. The user's task selection items are preferably listed
in a group/subgroup, expandable format. This region is scaleable and a scroll bar is
preferably shown if the number of tasks dictates it." (Col. 8, ll. 15-19.) "The lower left of
the screen contains all of the buttons/controls that launch user assistance components."
(Id. at ll. 20-22.)

Although the expandable list, scroll bar, and buttons/controls constitute
navigation tools, we are unpersuaded that these tools are located on the reference's
web server 106. To the contrary, by discussing its "EIM application," (col. 30, l. 44),
under the heading and subheading "Software Location" and "Client," respectively, (id. at
ll. 42-43), Thompson implies that the EIM's navigation tools are located on the client
workstations rather than on the web server. The reference's explanations that "[t]he

[EIM] application functionality is delivered through the PC's web browser," (id. at ll. 46-
47), and that "EIM's present embodiments operate on browsers with support for ActiveX
controls and Visual Basic Scripting," (id. at ll. 49-51), support this implication.
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Furthermore, the examiner does not allege, let alone show, that the addition of
Brooke cures the aforementioned deficiency of Thompson. Absent a teaching or
suggestion of navigation tools located on a web server, we are unpersuaded of a prima
facie case of obviousness. Therefore, we reverse the obviousness rejection of claims 1
and 14 and of claims 2-13 and 15-20, which depend therefrom.

In closing, we note the appellants' "request[ ] that the Board of Patent Appeals
and Interferences . . . withdraw the rejections of record, and allow the pending claims."
(Reply Br. at 2.) In an ex parte appeal, however, the Board "is basically a board of
review C we review . . . rejections made by patent examiners." Ex parte Gambogi, 62
USPQ2d 1209, 1211 (B.P.A.I. 2001). We lack authority to withdraw an examiner's
rejection and to allow claims.

III. CONCLUSION
In summary, the rejection of claims 1-20 under § 103(a) is reversed.

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REVERSED

JOHN C. MARTIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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