Ex Parte Bartley et al

Board of Patent Appeals and Interferences

Jan 31, 2008

09892435 (B.P.A.I. Jan. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROYAN HERBERT BARTLEY, MICHAEL JOHN BRANSON,
STEVEN GENE HALVERSON, DAVID ALAN JAEGER, TODD MARK
KELSEY, and PAUL WILLIAM WERTZLER
____________________

Appeal 2007-2583
Application 09/892,4351
Technology Center 2100
____________________

Decided: January 31, 2008
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Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY, III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed June 27, 2001. The real party in interest in this appeal is International
Business Machines, Corp.
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Application 09/892,435

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 29. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

Appellants’ Invention
Appellants invented a method and system for allowing a customer to
access on his/her computer execution data previously downloaded from a
vendor computer in exchange for enabling the transmission of the
downloaded execution data to the vendor. (Spec. 4-5.) As depicted in Figure
1, the vendor computer (110) includes an execution data collection
mechanism (130) for remotely collecting execution data from a customer
computer (120). The vendor computer (110) further includes an execution
analysis mechanism (140) that analyzes the collected execution data to
determine if the customer needs additional product from the vendor.
(Spec. 5.) The vendor computer (110) allows the customer computer (120) to
download the collected execution data (152) via an execution data collection
mechanism (150) located on the customer computer (120). Further, an
execution data transmission mechanism (170) located on the customer
computer (120), when enabled, transmits at least a portion of the
downloaded execution data to the user of another computer via a network.
Additionally, the customer computer (120) includes an execution data access
mechanism (160) for allowing the customer to access the downloaded
execution data (152) on the customer computer only if the execution data
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transmission mechanism (170) is enabled to allow the vendor to access the
downloaded execution data on the customer computer. (Spec. 6.)
Independent claim 1 is illustrative of the invention, and it reads as
follows:
1. A computer system comprising:

at least one processor;

a memory coupled to the at least one processor;

an execution data collection mechanism residing in the memory
and executed by the at least one processor, the execution data
collection mechanism collecting execution data for the computer
system;

an execution data transmission mechanism residing in the
memory and executed by the at least one processor, the execution data
transmission mechanism, when enabled, transmitting at least a portion
of the execution data to another computer system coupled to the
computer system via a network; and

an execution data access mechanism residing in the memory
and executed by the at least one processor, the execution data access
mechanism allowing access to the execution data by a user of the
computer system only if the execution data transmission mechanism is
enabled.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Mikami US 5,704,031 Dec. 30, 1997
Farhat US 6,510,463 B1 Jan. 21, 2003

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The Examiner rejects the claims on appeal as follows:
Claims 1 through 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mikami and Day.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Mikami
1. Mikami discloses a method and system for allowing clients to
perform self-diagnosis and self-repair in a client server network. As depicted
in Figure 1, Mikami discloses a management unit (3) that collects contents
of an error information file (13) in a server unit (1). Further, the
management unit (3) uploads updated software and firmware into the server
as backup data to update the client. (Col. 2, ll. 11-37; col. 6, ll. 11-47.)

Day
2. Day discloses a method and system for providing context-
sensitive help for users of thin clients that have been redirected from a
plurality of partner sites to a back-end server. (Abstract.)
3. As shown in Figure 2, businesses (201, 205) executing thin
client programs (HTML/XML) (204, 208) on their computing devices (203,
207) access a business operation center (220) via a data network (210) to
perform various transactions such as payroll, human resource management.
(Para. [0045].)
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4. Day discloses a relational database (228) for storing user data
including a hierarchically established set of access privileges thereby
preventing an unauthorized user (202) from accessing data under the domain
of another user (206). Each user (202, 206) is granted access to a set of
privileges permitting them to accede to a certain level of access to the data.
(Para. [0047].)
5. Day discloses that the user (202) of a company (201) may have
access privileges to data of another company (205), if the data set that has
been enabled. (Id.)
6. Day discloses that the business operation center (BOC) (220)
places a cookie (211, 212) on the user computers (203, 207) such that the
user (202, 206) experiences a customized set of applications when it is
redirected to the back-end of the BOC from a particular site. (Para. [0048],
[0055].)

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

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“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41(2007)).
“One of the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
Discussing the obviousness of claimed combinations of elements of
prior art, KSR explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
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ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. Where the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that there was “an apparent reason to combine the known elements
in the fashion claimed.” KSR, 127 S. Ct. at 1740-41. Such a showing
requires “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” Id., 127 S. Ct. at 1741
(quoting In re Kahn, 441 F.3d 977, 987(Fed. Cir. 2006)).
The reasoning given as support for the conclusion of obviousness can
be based on 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. KSR, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2007).
We note our reviewing court has recently reaffirmed that:
[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of
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references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process
is universal—and even common-sensical—we have held that there
exists in these situations a motivation to combine prior art references
even absent any hint of suggestion in the references themselves. In
such situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining
the prior art references.

Leapfrog, 485 F.3d at 1162 (holding it “obvious to combine the Bevan
device with the SSR to update it using modern electronic components in
order to gain the commonly understood benefits of such adaptation, such as
decreased size, increased reliability, simplified operation, and reduced
cost”).
Also, a reference may suggest a solution to a problem it was not
designed to solve and thus does not discuss. KSR, 127 S. Ct. at 1742
(“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle. . . . A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
The prior art relied on to prove obviousness must be analogous art.
As explained in Kahn,
the “analogous-art” test . . . has long been part of the primary
Graham analysis articulated by the Supreme Court. See Dann
[v. Johnston,] 425 U.S. [219,] 227-29 (1976), Graham, 383
U.S. at 35. The analogous-art test requires that the Board show
that a reference is either in the field of the applicant's endeavor
or is reasonably pertinent to the problem with which the
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inventor was concerned in order to rely on that reference as a
basis for rejection. In re Oetiker, at 1447. References are
selected as being reasonably pertinent to the problem based on
the judgment of a person having ordinary skill in the art. Id.
(“[I]t is necessary to consider ‘the reality of the
circumstances,’—in other words, common sense—in deciding
in which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor.” (quoting In re Wood, 599 F.2d 1032 (C.C.P.A.
1979))).
Kahn, 441 F.3d at 986-87. See also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“[a] reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.”).
In view of KSR’s holding that “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed,” KSR
127 S. Ct. at 1742 (emphasis added), it is clear that the second part of the
analogous-art test as stated in Clay, supra, must be expanded to require a
determination of whether the reference, even though it may be in a different
field from that of the inventor's endeavor, is one which, because of the
matter with which it deals, logically would have commended itself to an
artisan’s (not necessarily the inventor’s) attention in considering any need or
problem known in the field of endeavor. Furthermore, although under KSR
it is not always necessary to identify a known need or problem as a
motivation for modifying or combining the prior art, it is nevertheless
always necessary that the prior art relied on to prove obviousness be
analogous. See KSR, 127 S. Ct. at 1739. (“The Court [in United States v.
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Adams, 383 U.S. 39, 40 (1966)] recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”) (emphasis added). See also
Sakraida, 425 U.S. at 280 (“Our independent examination of that evidence
persuades us of its sufficiency to support the District Court's finding ‘as a
fact that each and all of the component parts of this patent . . . were old and
well-known throughout the dairy industry long prior to the date of the filing
of the application for the Gribble patent.’”).

§ 103 ANALYSIS

Independent claims 1, 6, 11 through 14, 18, and 24 require in relevant
part allowing a user of a computer system to access execution data on the
computer system only if an execution data transmission mechanism on the
computer system is enabled to transmit at least a portion of the data to
another computer system. (Claims Appendix.) Similarly, independent claim
15 requires a business method for enabling a customer to access an
execution data on the customer computer system if the customer accepts an
offer to access execution data gathered by the customer computer system in
exchange for the customer’s sharing of the execution data. (Id.) With
respect to independent claim 1, Appellants argue that neither Mikami nor
Day teaches the cited limitation. Further, Appellants argue that there is
insufficient rationale for combining the applied references. Therefore,
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Appellants submit that the combination of Mikami and Day does not render
claims 1 through 29 unpatentable. (App. Br. 7-15.)
In response, the Examiner submits that Day teaches the cited
limitation as an access mechanism that allows or rejects transitions between
computers. The Examiner therefore concludes that the combination of
Mikami and Day renders the claims unpatentable. (Ans. 7.)
The issue before us is therefore whether the combination Mikami and
Day renders claims 1 through 29 unpatenable under 35 USC § 103 (a)?
Particularly, does the proffered combination teach a mechanism that allows
a computer user to access execution data on the user’s own computer only
upon enabling the computer to transmit the execution data to another
computer? We answer this question in the negative.
As set forth in the Findings of Fact section above, Mikami discloses a
mechanism for allowing a management unit computer to collect error data
pertaining to a server on a network, as well as a mechanism for uploading
software and firmware data to update computers on the network. (FF 1.)
Further, Day discloses a mechanism wherein a user computer can access its
own data locally or in a remote database. (FF 4.) Day further discloses that
the computer user can access data of another user’s computer in the remote
database if it has been enabled for direct access. (FF 5.) We find that one of
ordinary skill in the art would have readily recognized that the Mikami-Day
combination, at best, teaches a system for allowing a computer user to
collect data, to transmit the data, to access the data locally or remotely, and
to allow another computer user to access the data by enabling a data
transmission mechanism. However, the ordinarily skilled artisan would
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have also recognized that the cited combination does not lend itself to the
computer user being able to access previously gathered data on his or her
own computer only if the computer allows another computer to access the
collected data. In other words, the proffered combination teaches that the
computer user can access previously collected data on its machine
unconditionally. It is therefore silent on the computer user accessing
previously collected data on his/her own computer only if another computer
user is allowed to access the collected data on the machine (i.e. transmission
mechanism enabled).
It follows that Appellants have shown that the Examiner erred in
concluding that the combination of Mikami and Day renders independent
claims 1, 6, 11, through 15, 18, and 24 unpatentable. If follows for these
same reasons that Appellants have shown that the Examiner erred in
concluding that the cited combination renders dependent claims 2 through 5,
7 through 10, 16, 17, 19 through 23, and 25 through 29 unpatentable.

SUMMARY
Appellants have shown that the Examiner failed to establish that
claims 1 through 29 are unpatentable under 35 U.S.C. § 103(a) over the
combination of Mikami and Day.

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DECISION
We reverse the Examiner’s decision rejecting claims 1 through 29.

REVERSED

pgc

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