Ex Parte Bodin et al

Board of Patent Appeals and Interferences

Nov 23, 2009

10756110 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM KRESS BODIN, MICHAEL JOHN BURKHART,
DANIEL G. EISENHAUER, DANIEL MARK SCHUMACHER, and
THOMAS J. WATSON
____________

Appeal 2008-004720
Application 10/756,1101
Technology Center 2100
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Decided: November 23, 2009
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Before JAY P. LUCAS, ST. JOHN COURTENAY, III., and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed January 13, 2004. The real party in interest is
International Business Machines Corporation (“IBM”).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-30, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
Appellants invented a system, method, and computer program product
for providing differential dynamic content delivery with a participant
alterable session copy of a user profile. (Spec. 70, Abstract.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 1-30. Claims 1, 11, and 21 are
independent claims. Claim 1 is illustrative:
1. A method for differential content delivery, the method
comprising:
providing a session document for a presentation, wherein
the session document includes a session grammar and a session
structured document and presentation content that is filtered according
to attributes of a plurality of participants for the presentation;
providing a session copy of each participant’s user
profile including a user classification;
receiving, from one of the plurality of participants of the
presentation, a user classification instruction to change a user
classification in the session copy of that participant’s user profile;
changing the user classification in the session copy of
that participant’s user profile in dependence upon that participant’s
user classification instruction;
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selecting from the session structured document a
classified structural element in dependence upon a user classification
in the session copy of that participant’s user profile in the
presentation; and
presenting the selected structural element to that
participant.

C. REFERENCE
The sole reference relied upon by the Examiner as evidence in
rejecting the claims on appeal is as follows:
Ho US 6,029,043 Feb. 22, 2000

D. REJECTION
The Examiner entered the following rejection which is before us for
review:
Claims 1-30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ho.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Ho
1. Ho discloses that “[t]he registry can also access a summarized
profile of the existing users to help the potential user make joining
decisions.” (Abstract.)
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2. Ho discloses that “[t]he public sector can be accessed by any
person, such as a potential user, while the private sector can be accessed
only by those with specific keys.” (Col. 21, ll. 60-62.)

III. PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellants have the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the burden on appeal to the Board to demonstrate error in
the Examiner’s position. In re Kahn, 441 F.3d. 977, 985-86 (Fed. Cir.
2006).

IV. ANALYSIS
Common Feature In All Claims
Our representative claim, claim 1, recites, inter alia, “receiving . . . a
user classification instruction to change a user classification in the session
copy of that participant’s user profile.” Independent claims 11 and 21 recite
similar limitations. Thus, the scope of each of the independent claims
includes “a user classification instruction to change a user classification in
the session copy of that participant’s user profile.”

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).

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Appellants contend:
Changing a user classification in a session copy of a participant’s
profile as claimed in the present application occurs in dependence
upon received participant’s user classification instruction. Ho does
not disclose or suggest . . . receiving a user classification instruction
and therefore cannot disclose or suggest changing a user classification
in a session copy of a participant’s user profile in dependence upon
such a user classification instruction.

(App. Br. 12.)
The Examiner found that Ho discloses “that the participant can access
their own user-profile and classification data. Although access does not
mean explicitly that the user can modify such user profile data [sic].”
(Ans. 14.)

Issue: Have Appellants shown that the Examiner erred in finding that
Ho discloses “receiving . . . a user classification instruction to change a user
classification”?

Regarding the “instruction to change” limitation, the Examiner has
merely directed our attention to the fact that Ho discloses allowing access to
the user profile (FF 1-2). However, the claimed invention requires receiving
a user classification instruction to change a user classification. The
Examiner has not shown and we do not readily find how Ho’s “allowing
access to a profile” necessarily includes the ability to make changes to the
profile’s classification. We find no clear indication in Ho that any
modification of a user classification is being permitted by the participants.
While it seems logical that updates to a user’s classification would be
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desirable, the Examiner has left it up to us to speculate as to whether Ho
actually permits such updates. As such, we find that the Examiner has not set
forth a sufficient initial showing of obviousness.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding Ho
renders claims 1-30 unpatentable.
Thus, Appellants have persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 1. Therefore, we reverse
the Examiner’s § 103 rejection of independent claim 1 and of claims 2-30,
which stand therewith.

V. CONCLUSION
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-30.

VI. DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 1-30 under § 103.

REVERSED

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