Ex Parte Anantharaju

Patent Trial and Appeal Board

Aug 8, 2018

14231823 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/231,823 04/01/2014 Girish Anantharaju
141563 7590 08/10/2018
MHKKG (CA Technologies)
P.O. BOX 398
AUSTIN, TX 78767-0398
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
US20140100US1/7100-06000 4112
EXAMINER
NGUYEN, TRUONG
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
08/10/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIRISH ANANTHARAJU
Appeal 2018-002513
Application 14/231, 823 1
Technology Center 2400
Before MARC S. HOFF, JASON J. CHUNG, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 9, 11-17, 19, and 21. Appellant has canceled claims 8, 10, 18,
and 20. App. Br. 22, 24. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant identifies CA Inc. as the real party in interest. App. Br. 2.
Appeal 2018-002513
Application 14/231,823
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention is generally directed to
providing context-sensitive help in a community-driven manner for a user
application. Spec. ,r,r 1, 4. More particularly, in a disclosed embodiment, a
user may be running an application on a computing device when an error or
problem is encountered with the application. Spec. ,r 19. If the user
application is not connected to a network (e.g., the Internet), the user may
capture a screen snapshot of the error condition with a mobile device and
send the snapshot to a notification server. Spec. ,r,r 19--25. "[I]n response to
sending information to the notification server, the mobile device
app[lication] receives one or more links from the notification server ... that
point to online help-related resources available for the user to access via the
mobile device." Spec. ,r 25.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A computer-implemented method for providing help
information, comprising:
receiving, by a computer, a message from a mobile device
associated with a user utilizing a user application,
wherein contents of the message comprise a request for
help information related to a diagnostic-related message of the
user application executing on a separate computer;
forwarding, by the computer, an autonomically generated
query to a help repository, the query based on the contents of the
message;
receiving, by the computer, from the repository an
identification of a resource within the repository relevant to the
query;
2
Appeal 2018-002513
Application 14/231,823
sending, by the computer, a notification message to the
mobile device associated with the user that is utilizing the user
application,
wherein contents of the notification message comprise
data related to the identification of the resource and related to
notifying the mobile device that relevant data is available on the
computer that pertains to the request for help information related
to the diagnostic-related message of the user application
executing on the separate computer;
receiving, by the computer from the mobile device, in
response to the notification message, a request to retrieve the
relevant data; and
sending, by the computer to the mobile device, the relevant
data.
The Examiner's Rejections
1. Claims 1, 5-7, 9, 11, 15-1 7, 19, and 21 stand rejected under
35 U.S.C. § 103 as being unpatentable over English (US 7,594,176 Bl;
Sept. 22, 2009) and Baumeister et al. (US 2006/0147015 Al; July 6, 2006)
("Baumeister"). Final Act. 3-9.
2. Claims 2--4 and 12-14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over English, Baumeister, and Xiao et al. (US
2012/0309424 Al; Dec. 6, 2012) ("Xiao"). Final Act. 9-11.
3
Appeal 2018-002513
Application 14/231,823
ANALYSIS 2
In rejecting claim 1, the Examiner relies on the combined teachings of
English and Baumeister. Final Act. 3-9. We begin our analysis with a brief
review of the prior art.
English is directed generally to automatically providing context-
sensitive user support in response to a particular triggering event (e.g., error
message or usage problem). English, col. 3, 11. 11-15. English teaches that
when an event is determined, "[t]he invention automatically determines the
nature and context of the event, and searches a database for support items,
such as other users' comments, suggestions, or answers that are relevant to
the event." English, col. 3, 11. 15-19. English describes embodiments
wherein the invention "operates within the context of [the] software
application" and "displays the selected support from within the application,
so that the user need not exit the program to view the support item."
English, col. 3, 11. 28-30, 44--46.
Baumeister is generally directed to the "delivery of enhanced
directory assistance" to a Voice Over IP (VoIP) phone. Baumeister ,r 1.
Baumeister discloses that although the typical directory assistance request is
to retrieve, or be connected to, a desired telephone number, additional
requests may include requesting directions or a particular service.
Baumeister ,r,r 14--15. In a disclosed embodiment, a directory assistance
system receives a directory request and, in response, provides a call
2 Throughout this Decision, we have considered the Appeal Brief, filed
September 12, 2017 ("App. Br."); the Reply Brief, filed January 10, 2018
("Reply Br."); the Examiner's Answer, mailed November 15, 2017 ("Ans.");
and the Final Office Action, mailed March 13, 2017 ("Final Act."), from
which this Appeal is taken.
4
Appeal 2018-002513
Application 14/231,823
completion record including information relating to (i) a VoIP device if the
requested information relates to a VoIP device; (ii) a mobile phone if the
requested information relates to a mobile phone; or (iii) a landline device if
the requested information relates to a landline device. Baumeister ,r 6. In
particular, a VoIP device may send a request to the directory assistance
server and the server may return a notification message that the VoIP device
may retrieve the requested information from a web server. Baumeister
,r,r 105-114.
Appellant asserts the independent claims require, inter alia, a
computer, a mobile device, and a separate computer ( on which the user
application is running). App. Br. 13. Appellant contends English describes
two communicating entities-a support engine (i.e., a computer) and a client
system (i.e., a separate computer). App. Br. 13. Additionally, Appellant
contends Baumeister also only discloses two communicating entities
corresponding to the claim limitations-a VoIP device (i.e., a mobile device)
and the directory assistance system (i.e., a computer). App. Br. 13-14.
Appellant argues merely substituting Baumeister' s VoIP device for the client
system of English would fail to teach all of the claimed computing entities-
particularly, a mobile device and a separate computer. App. Br. 14.
Further, Appellant argues one of ordinary skill in the art would not
have found it obvious to add Baumeister' s VoIP device as a separate,
additional device to the system of English. App. Br. 15. Specifically,
Appellant contends "in English, the diagnostic-related solution information
from the support engine is already sent directly to the support plugin on the
client system on which the user application is executing that generated a
diagnostic-related query." App. Br. 17. Appellant asserts, therefore, the
5
Appeal 2018-002513
Application 14/231,823
unmodified system automatically retrieves, evaluates, and presents the
context-sensitive user support information to a user and the Examiner fails to
provide a logical reason (based on the teachings and suggestions of English
and Baumeister) why one would modify English to receive the support
information on a mobile device instead of the client computer. App. Br. 17-
19.
"Obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination." Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). "Rather, obviousness requires the additional showing
that a person of ordinary skill at the time of the invention would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention." Unigene Labs.,
655 F.3d at 1360. It is improper to base a conclusion of obviousness upon
facts gleaned only through hindsight. To draw on hindsight knowledge of
the patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction-
an illogical and inappropriate process by which to determine patentability.
Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing W.L. Gore &Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)). The U.S. Supreme Court has held the relevant inquiry in an
obviousness analysis is whether the Examiner has set forth "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007)).
6
Appeal 2018-002513
Application 14/231,823
In support of the proposed combination, the Examiner states that an
ordinarily skilled artisan would have been motivated to combine English and
Baumeister "to allow for a mobile device to be notified and kept up to date
on information related to a service request." Final Act. 8; Ans. 5---6.
With respect to the motivation to modify the teachings of English with
the mobile device of Baumeister, we agree with Appellant (see Reply Br. 3-
5) that the Examiner has not provided the requisite "articulated reasoning
with some rational underpinning" to support the proposed combination. See
Kahn, 441 F.3d at 988. The unmodified system of English already receives
the information related to a service request. See, e.g., English, col. 3, 11. 28-
30, 44--46. The Examiner has not provided sufficient, persuasive evidence
or technical reasoning to support the proposed modification to add the
additional mobile device of Baumeister to English.
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner's rejection of claim 1. For similar
reasons, we also do not sustain the Examiner's rejection of independent
claims 11 and 21, which recite similar limitations. Additionally, we do not
sustain the Examiner's rejection of claims 5-7, 9, 15-17, and 19, which
depend directly or indirectly therefrom. Further, the Examiner rejected
claims 2--4 and 12-14 under 35 U.S.C. § 103 over the combined teachings
and suggestions of English, Baumeister, and Xiao. Final Act. 9-11. The
Examiner does not rely on Xiao to address the deficiencies related to the
rejection of independent claims 1, 11, and 21, discussed above.
Accordingly, we do not sustain the Examiner's rejections of claims 2--4 and
12-14.
7
Appeal 2018-002513
Application 14/231,823
DECISION
We reverse the Examiner's decision rejecting claims 1-7, 9, 11-17,
19, and 21.
REVERSED
8