Ex Parte Boland et al

Board of Patent Appeals and Interferences

Sep 16, 2008

09735835 (B.P.A.I. Sep. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VERNON KEITH BOLAND, KATHY DEAN,
RONALD A. RUSH JR., ROBERT N. JOSEPHSON, II
and DENNIS A. PARKER
____________________

Appeal 2008-2634
Application 09/735,835
Technology Center 3600
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Decided: September 16, 2008
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Before: LINDA E. HORNER, ANTON W. FETTING and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

REMAND ORDER
The Appellants appeal under 35 U.S.C. § 134 (2002) from the final
rejection of claims 1-5, 7-10, 13, 15-18, and 20-24. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
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The claims on appeal relate to a system and method for establishing
the context of a consumer/business interaction. (Spec. 3, ll. 7-9). Claims 1-
5, 7-10, 13, 15-18 and 20-24 are rejected as being anticipated or
unpatentable over Gardenswartz (Patent US 6,298,330 B1, issued 2 Oct.
2001). The threshold issue before us is the statutory ground for this
rejection. Based on the facts and analysis set out below, we REMAND this
appeal to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) (2007) for
clarification of the statutory basis for the rejection.

BACKGROUND
Both the Final Office Action mailed May 19, 2005 [“Final Rejection”]
and the Examiner’s Answer mailed July 5, 2006 reject claims 1-5, 7-13 and
15-24, and those papers cite Gardenswartz as evidence of unpatentability.
(Final Rejection at 9; Ans. 3.) Similarly, the Supplemental Examiner’s
Answer mailed October 1, 2007 rejects claims 1-5, 7-10, 13, 15-18 and 20-
24, and cites Gardenswartz as evidence of unpatentability (Supp. Ans. 1).1
The Final Rejection, Examiner’s Answer, and Supplemental Examiner’s
Answer open the statement of the rejection with the heading: “Claim
Rejections – 35 USC § 103.” Each follows this heading with a quotation of
the language of 35 U.S.C. § 103(a) (2002). (Id.) The Examiner finds that
“Gardenswartz does not specifically teach that providing said interactive
information which is relevant to the interaction with the registered customer
includes providing a context for the communication received from the

1 The Supplemental Examiner’s Answer was filed in response to an
Order mailed May 14, 2007 requiring clarification regarding which claims
were subject to the rejection from which that Appellant appeals.
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customer.” (Final Rejection 10; Ans. 4; Supp. Ans. 2 [emphasis in
originals].) The Examiner concludes that:

it would have been obvious to one having ordinary
skill in the art [at] the time the invention was made
to modify Gardenswartz to include that said
providing interactive information which is relevant
to the interaction with the customer includes
providing a context for the communication
received from the customer, because without
indication in the specification the advantages of
using the term “context” over the prior art, it
appears that said term “context” is [an] obvious
variation of said interactive information associated
with a particular purchase history classification.

(Final Rejection 10; Ans. 4.; Supp. Ans. 2)
On the other hand, both the Final Rejection and the Examiner’s
Answer follow the quotation of § 103(a) with the statement: “Claims 1-5, 7-
13 and 15-24 are rejected under 35 U.S.C. 102(e) as being unpatentable over
Gardenswartz et al. (6,298,330).” (Id.)2 Similarly, the Examiner’s
Supplemental Answer follows the quotation of § 103(a) with the statement:
“Claims 1-5, 7-10, 13, 15-18 and 20-24 are rejected under 35 U.S.C. 102(e)
as being unpatentable over Gardenswartz et al. (6,298,330)” (Supp. Ans. 1).
The Brief on Appeal filed April 11, 2006 identifies the rejection at
issue in this appeal as “[w]hether claims 1-5, 7-10, 13, 15-18 and 20-24 were
properly rejected under 35 U.S.C. § 102(e) as being unpatentable over

2 The Final Office Action mailed May 19, 2005 also included a
rejection of claims 1-5 and 7-10 under 35 U.S.C. § 101 (2002) as not being
within the technological arts. The Examiner withdrew this rejection in an
Advisory Action mailed Oct. 12, 2005.
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Gardenswartz et al. (U.S. Patent No. 6,298,330).” (App. Br. 6.) The
Examiner’s Answer states that the Appellants’ statement of the grounds of
rejection on appeal is correct. (Ans. 2.) Although the Brief on Appeal does
not address the issue of whether it would have been obvious to modify
Gardenswartz in accordance with the reasoning articulated by the Examiner,
the Examiner’s Answer does not point out this omission. (See Ans. 8-9.)

ANALYSIS
The Final Rejection, the Examiner’s Answer, and the Supplemental
Examiner’s Answer are ambiguous as to the statutory basis for the rejection
of claims 1-5, 7-10, 13, 15-18 and 20-24. Although the Examiner states that
these claims are rejected under 35 U.S.C. § 102(e) (2002), the Examiner’s
reasoning in support of the rejection is inconsistent with a rejection under
§ 102(e) and consistent instead with a rejection under § 103(a). In
particular, we note that “[t]o anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The
Examiner’s concession that Gardenswartz does not disclose an element
recited in each of the rejected claims calls into question whether the
Examiner intended a rejection under § 102(e) or § 103(a).
In apparent reliance on the statement of the rejection in the Final
Rejection and the Examiner’s approval of the Appellants’ statement of the
“Grounds of Rejection to be Reviewed on Appeal”, the Appellants did not
address the issue of whether it would have been obvious to modify
Gardenswartz so as to meet the limitations of the appealed claims. In light
of this reliance, we believe that fairness requires us to remand this appeal so
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that the Examiner can clarify the statutory basis for the rejection and so that
the Appellants may respond in the event that the Examiner maintains the
rejection of these claims on a basis other than § 102(e).

DECISION
Pursuant to § 41.50(a)(1), we REMAND this appeal to the Examiner
and ORDER that:
1) if the Examiner chooses to maintain the rejection of claims 1-5,
7-10, 13, 15-18 and 20-24, the Examiner shall prepare a Supplemental
Examiner’s Answer which clarifies the statutory basis for the rejection of the
appealed claims and provides an opportunity for the Appellants to respond;
and
2) the Examiner perform such further action as may be
appropriate.
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286
Off. Gaz. Pat. Office 21 (September 7, 2004)) is made for further
consideration of a rejection. Accordingly, 37 CFR § 41.50(a)(2) applies if a
supplemental examiner's answer is written in response to this remand by the
Board.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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REMANDED

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JRG

JAMES M. STOVER
TERADATA CORPORATION
2835 MIAMI VILLAGE DRIVE
MIAMISBURG, OH 45342
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