Ex Parte Beckmann et al

Board of Patent Appeals and Interferences

Mar 31, 2010

09946157 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM H. BECKMANN,
DIANA F. KUHL, and GERARD E. PHILIPP
____________________

Appeal 2008-004695
Application 09/946,157
Technology Center 3600
____________________

Decided: March 31, 2010
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-202.
We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2008-004695
Application 09/946,157

2
The claims are directed to a method, apparatus, server, system, and
media with software for personalizing search requests before they are
submitted to a network and revising the results obtained before submitting
the results to the user. First and second processors are used to personalize
the requests and revise the results for the user, respectively. The two
processors utilize personal user information to modify the requests and the
results.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A apparatus for facilitating a personalized interface with
a network, said apparatus comprising:

a first input configured to receive request information
from a user;

a memory configured to store a user information
database;

a first processor to process said request information into
at least one modified request based upon said user information
database;

an output configured to output said at least one modified
request to said network; a second input configured to receive at
least one response to said at least one modified request from
said network;

a second processor to process said at least one response
into a modified response based upon said user information
database; and

a second output configured to output said modified
response to said user.

Appeal 2008-004695
Application 09/946,157

3
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ginter
Van Huben
Pascucci
Bowman-Amuah
US 5,917,912
US 6,094,654
US 6,115,713
US 6,289,382 B1
Jun. 29, 1999
Jul. 25, 2000
Sep. 5, 2000
Sep. 11, 2001

REJECTIONS
Appellants seek our review of the rejection of claims 1 and 4-202,
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ginter. Reply
7.
Appellants seek a review of the rejection of claims 2 and 3 as rejected
under 35 USC § 103 as unpatentable over Ginter in view of Pascucci. See
Answer, sections W and X.

ANALYSIS
At the outset we are compelled to mention that the Examiner's Answer
is not a model of clarity. The Examiner has not included all claims discussed
in the rejection in the statement of the rejection. The Examiner has not
numbered the pages of the Answer, and when the Examiner discusses the
Ginter reference, the Examiner does not supply citation to the reference by
line number. Furthermore, it is unclear whether or when the Examiner is
relying on Van Huben, Pascucci and Bowman-Amuah in many of the
sections explaining the rejections, for those patents are mentioned in passing
but never stated in a rejection of the claims. By analogy to the holding of the
Appeal 2008-004695
Application 09/946,157

4
rejections of claim 1 in Section A, and Claims 2 and 3 in sections W and X,
respectively, we take it that the Examiner did not intend to state a separate
rejection to the claims where the secondary references are merely discussed
in passing in these sections.
With respect to the Pascucci, Bowman-Amuah, and Van Huben
references, where a reference is relied on to support a rejection, whether or
not in a "minor capacity," there would appear to be no excuse for not
positively including the reference in the statement of rejection. In re Hoch,
428 F.2d 1341, 1342 n.3 (CCPA 1970).
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. As a result of this review we
have reached the determination that the applied prior art does not establish
the prima facie obviousness of the claims on appeal. Therefore the rejections
of these claims are reversed. Our reasons follow.

Claim 1
Appellants advance a claim construction of the claim term “a user
information database.” Appellants state that claims 9-11 help to define the
meaning of the term “user.” To the extent that Appellants are seeking to
have user profiles, user preferences, or user behaviors read into claim 1, we
decline to do so. We agree with the Examiner that the broadest reasonable
interpretation of “user information” in “user information database” is any
information that pertains to a user or client on the network system. Thus the
network in Ginter that stores a user's Internet address, physical address,
phone number, name, or type of client equipment stores “user information.”
Appeal 2008-004695
Application 09/946,157

5
Notwithstanding our claim construction noted above, we reverse the
rejection of claim 1. The Examiner in section A of the Answer relies on the
client computer 206 in the lower right-hand corner of Figure 1 of Ginter. To
meet the claim limitation of a first processor and a second processor the
Examiner states that a CPU with a math coprocessor chip is the first and
second processor. There is no disclosure in Ginter of the type of processor
used, and the Examiner's reliance on a specific processor with an onboard
coprocessor is pure speculation. A § 103 rejection cannot be based on
speculation and conjecture. Secondly, it is conjecture on the part of the
Examiner to state that a math coprocessor would be used to convert a search
response into a modified response based upon information from a database.
The Examiner's reading of the inputs and outputs claimed in claim 1 is also
problematic. Accordingly, the rejection of independent claim 1 is reversed as
well as dependent claims 4-42 which depend therefrom.

Claim 43
In the rejection of claim 43 in section AY in the Examiner's Answer,
the Examiner analogizes between the rejection of claim 1 in section A, and
the rejection of claim 43. The Examiner states that claim 43 and other
independent claims contain analogous limitations to claim 1, although they
are directed to a method, a system, a server, or software. We disagree that
these different inventions and different statutory classes can be lumped
together for a blanket rejection.
The Examiner has failed to explain how Ginter teaches the process
steps of claim 43. The Examiner also fails to state the differences between
the subject matter of claim 43 and the applied prior art. Finally, the
Appeal 2008-004695
Application 09/946,157

6
Examiner has not stated what would have been obvious to one of ordinary
skill. As far as we can determine the Examiner has not followed any step of
a proper and mandated Graham analysis. Accordingly, the rejection of claim
43 is reversed. The rejection of dependent claims 44-82 is also reversed.1

Claim 83
In a similar manner to what we have found with claim 43, the
Examiner refers us to section A for the rejection of claim 83. Since the
Examiner did not mention or discuss servers with respect to the rejection of
claim 1, we have not had the Examiner's views on the system of 83 which
calls for a remote server. Inasmuch as the Examiner has failed to explain
how Ginter satisfies the interaction of the user at 206 with a remote server,
the rejection of claim 83 cannot be sustained.
We further note that that claim 83 contains limitations to the first and
second processor. As noted above, Ginter does not disclose the two
processors claimed. The rejection of independent claim 83 is reversed, along
with dependent claims 84-91, 94-103, and 105-109.

Claim 1102
Claim 110 is directed to a server. Since section AY of the answer
refers to section A, but does not explain how the Examiner reads Ginter to
disclose the claimed server, there is no evidentiary basis on which the

1 Claims 75-82 which ultimately depend from claim 43 are erroneous in that
they state they are directed to an apparatus. This should be changed in any
further prosecution.
2 The claim term “said request information’ in line 2 of claim 110 has no
antecedent basis. This should be corrected in any further prosecution before
the Examiner.
Appeal 2008-004695
Application 09/946,157

7
rejection of claim 110 can be affirmed. We further note that claim 110 calls
for the first and second processors which we have not found in computer 206
of Ginter. The rejection of claim 110 is reversed along with the rejection of
dependent claims 92, 93, 104, 111-118, 121-130, and 132-136.

Claim 137
Claim 137 is directed to an apparatus that uses two processors on
remote servers to personalize a local user interface. In sections A and AY
the Examiner fails to explain where the remote servers called for in the claim
reside in the Ginter patent. Nor has the Examiner advanced a convincing
argument with respect to first and second processors. Accordingly, the
rejection of claim 137 is reversed, along with the rejection of dependent
claims 119, 1203, 131, 138-145, and 148-163.

Claim 164
Claim 164 is a Beauregard claim directed to software on a physical
medium. This is an article claim, and the Examiner has not indicated where
this article is to be found in the Ginter disclosure. Accordingly, this rejection
does not stand on an appropriate evidentiary basis and therefore this
rejection of claim 164 as well as claims 146, 1474, and 165-191is reversed.

Claim 192
Independent claim 192 is directed to an apparatus for facilitating a
personalized interface. Unlike claim 1, claim 192, defines the user

3 Claims 119, 120 and 131 are said to be directed to the server of claim 137.
Claim 137 is directed to an apparatus rather than a server.
Appeal 2008-004695
Application 09/946,157

8
information as preferences, user behavior, and user profile information. It is
unclear to us where the Examiner believes that Ginter discloses using user
preferences, behavior, and profile information to modify search requests. In
the absence of this explanation, we must conclude that the Examiner has
failed to establish a prima facie case of obviousness with respect to
independent claim 192. Therefore, the rejection of claim 192 and claims
193-196, dependent thereon, is reversed.

Claim 197
Claim 197 is directed to a computer network implemented method
wherein user information including preferences, behavior, and profile
information is used to modify search request before such search request are
submitted to the network. As noted above with respect to the rejection of
claim 192, the Examiner does not establish the obviousness of a user
information system that includes preferences behavior and the user profile.
Therefore the rejection of claim 197 and claims 198 through 202 is reversed.

Claims 2 and 3
Turning to the rejection of claims 2 and 3 as unpatentable over Ginter
in view of Pascucci, the Examiner states that Pascucci discloses the client
peer-to-peer network claimed in claim 2. However, Pascucci does not
ameliorate the problems we have recognized with respect to the rejection of
claim 1. Accordingly, the rejection of claim two is reversed. With respect to
the rejection of claim 3, assuming arguendo that Pascucci does disclose a
second memory as alleged by the Examiner, the combined references do not

4 Claims 146 and 147 are directed to an apparatus whereas claims 164 is
directed to media with a program thereon.
Appeal 2008-004695
Application 09/946,157

9
disclose the claimed the first and second processor and the input and output
means claimed in claim 1. Therefore the rejection of claim 3 is reversed.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-202 are
reversed.

REVERSED

Vsh

NEIFELD IP LAW, PC
4813-B EISENHOWER AVENUE
ALEXANDRIA VA 22304