Ex Parte Borg

Board of Patent Appeals and Interferences

Sep 13, 2007

09991752 (B.P.A.I. Sep. 13, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. BORG
____________

Appeal 2007-2167
Application 09/991,752
Technology Center 2100
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Decided: September 13, 2007
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and ROBERT E. NAPPI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which are all of the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2007-2167
Application 09/991,752

Appellant has invented a method for automating portions of a data
entry process as a user enters the user information (Specification 3).
According to Appellant, by storing user information in a storage medium
and accessing the entered information, the identity of a user is determined
and additional information pertaining to the user is retrieved from the
storage medium (id.).
Claim 1, which is representative of the claims on appeal, reads as
follows:
1. An automated data entry method comprising:

entering a user information at a first location;

searching a storage medium at said first location to determine
an identity of a user based on the entered information;

accessing a storage medium at a second location upon not being
able to identify a user by searching the storage medium at said first
location, said medium at the second location containing information
for a plurality of users;

searching the storage medium at the second location to
determine an identity of said user based on the entered information;
and
retrieving additional information pertaining to the user from the
storage medium at the first or second locations based on the
determined identity.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gupta US 5,826,258 Oct. 20, 1998
Gupta US 6,199,079 B1 Mar. 6, 2001

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Application 09/991,752

The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) based
upon the teachings of Gupta ‘079 and Gupta ‘258.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103. Appellant asserts that the
disclosure of Gupta “079 has nothing to do with “determining a user’s
identity” by searching and accessing a second location or “retrieving
additional (or any) user information” from the second location (Br. 6).
Appellant further argues that the use of a “wrapper” in Gupta ‘258 is not
related to the “identity of a user” or its determination (Br. 7). Based on such
assertions, Appellant argues that the combination of the references would
not teach or suggest access to the customer data from the vendor’s web site
nor determining the identity of a user (Br. 7-8). Therefore, the issue turns on
whether the combination of the applied references teaches the claimed
subject matter including determining “the identity of a user” from the
information entered at a first or a second location and “retrieving additional
information” based on the determined identity.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal and are believed to be supported by a preponderance of the
evidence.
1. Gupta ‘079 provides for a method of automatically filling in on-
line forms presented by web pages in an internet transactional environment
(Abstract), wherein a user may shop for items from different vendors' Web
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Application 09/991,752

sites to automatically fill in order forms and then to purchase these items
without having to browse and interact with different sites (col. 2, ll. 60-63).
2. Gupta ‘079 shows in Figure 1C a transaction integrator 100
which processes information in conjunction with one or more wrapper
programs 140, 150 and 160 configured to specific merchandising sites 139,
149 and 159 while a User Meta-database 170 and User Selection database
180 are used for filling in of online forms presented by various shopping
sites (col. 6, ll. 11-22). Transaction integrator 100 controls responding to the
user's requests to search for various merchandise, obtaining information
from the user about the user's merchandise selections from the search results
and building information into the User Meta-database 170 and the User
Selection database 180 (col. 6, ll. 22-27).
3. As depicted in Figure 1D, Gupta ‘079 further discloses a
plurality of relationships between data objects in the User Meta-database
170 (col. 6, ll. 28-29), which is described as being unique to each user and
comprises a first property, “first-name,” and a second property, “last-name”
(col. 6, ll. 42-44). Gupta ‘079 further discloses that relationship 90 of the
plurality of relationships associates a User ID 92 with a form ID 94, and a
plurality of property-value tuples 96, 98 and 99 (col. 6, ll. 52-54).
4. Gupta ‘079 describes automatically filling forms associated
with a vendor’s site corresponding to product selections made by a user with
the information stored in User Meta-database 170 and User Selection
database 180, such as the name, credit card number, and address of a user,
using relationships 60, 70, 80 and 90 depicted in FIG. 1D (col. 8, ll. 15-20).
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Application 09/991,752

5. Alternatively, Gupta ‘079 discloses using a wrapper, a program
which fills in and submits forms in order to accumulate information from
web sites and to complete a purchase transaction using the data obtained
from the User Meta-database 170 and User Selection database 180 (col. 8, ll.
56-61).
6. Gupta’s wrapper program is constructed for each vendor to
capture the logic for the forms that need to be filled to consummate a
purchase while a second wrapper program is constructed for each site to
perform information -gathering (col. 9, ll. 1-5). Additionally, the
transaction-wrapper is disclosed that exercises different parts and different
functionality of the site than the information-gathering wrapper. Any site
can have multiple wrappers built for it, each of which gets different
information or performs a different function (col. 9, ll. 5-9).
7. Gupta’s wrapper is further described in the other applied
reference, Gupta ‘258, which is also incorporated by reference in Gupta ‘079
(col. 9, ll. 9-15).
8. Gupta ‘258 discloses a wrapper to extract information and to
provide structured information in the form of structured high-level user
queries which are processed across the disparate semistructured resources
using a plurality of wrappers each dedicated to a particular resource
(Abstract).
9. Gupta ‘258 further defines a wrapper (or site program) as a
software layer that provides a relational database interface to information on
a site (col. 3, ll. 33-34).
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Application 09/991,752

10. As depicted in Figure 11 of Gupta ‘258, a user 558 queries a
dynamic agent 560, which accesses information from the information
sources and stores or caches the resulting data in a relational database 562.
The relational database may also contain other relational data in conjunction
with the relational data from the information sources. (col. 8, l. 25 through
col. 9, l. 4).
11. Gupta ‘258 discloses that when the dynamic agent receives a
query from a user, the agent determines whether there is sufficient data
already in the relational database to satisfy the query (col. 9, ll. 5-7). If
additional data or information is needed, the agent issues a query to the
mapper, which in turn issues queries to the appropriate information sources
through the wrappers (col. 9, ll. 9-12).

PRINCIPLES OF LAW
To reach a conclusion of obviousness under § 103, the Examiner bears
the burden of producing factual basis supported by teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration. Our reviewing court requires this evidence in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984).
Furthermore, the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006), In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
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Application 09/991,752

1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981).
“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, 82 USPQ2d 1385, 1391 (2007).
“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,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (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, 82 USPQ2d at 1397.
ANALYSIS
The Examiner characterizes the User Meta-data in Gupta ‘079 as the
claimed storage medium at the first location, which includes user’s
information based on the product selection by the user (Answer 8). The
Examiner reads the claimed storage medium at a second location on the
vendor databases used by the wrapper which captures additional information
corresponding to the user selection for filling the order form (Answer 9).
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Application 09/991,752

Appellant argues that Gupta ‘079 uses the User Meta-data which is a
single source for storing and accessing the user information (Br. 6).
According to Appellant, Gupta ‘079 does not access a second location for
the purpose of identifying the user, as recited in claim 1 (id.). Appellant
further asserts that such recitation is absent in Gupta ‘258 since the terms
“user identity” and “determining an identity of a user” are absent in the
reference (Br. 7).
We agree with the Examiner that the wrappers look into multiple
secondary sources for information pertaining to the user in order to fill the
purchase order forms (FF 5-9). The wrappers extract information based on
the user’s order or selection, which in turn, relates to the user’s information
needed to fill the form (FF 1-3). In that regard, the relationships relied on
for extracting the user information include the user identity which, in turn,
determines what specific information about the user is needed (FF 4).
Therefore, contrary to Appellant’s assertion that a second location is not
searched for the purpose of determining a user’s identity or additional
information (Reply Br. 3), the information obtained by the wrapper from the
vendors’ sites relate to the user information and identifies the user from the
prior relationship with those venders (FF 8-10).
Although not explained in so many words, the Examiner’s position is
that the wrapper looks at other sites for the user identification information if
the first site or the User Meta-data fails to provide all the necessary
information for filling the order form. As such, determining the identity of
the user prior to extracting the user information is implied since the user
information is extracted only after identifying the user. The user may be
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Application 09/991,752

identified, as described by Gupta ‘079, based on the order while the wrapper
determines the identity of the user prior to extracting additional information
(FF 10). The wrapper further retrieves additional information pertaining to
the user by obtaining the information related to the user’s order such as the
vendor info, user identity, etc. (FF 11).
With respect to claim 12, Appellant provides similar arguments
discussed and addressed above (Br. 10). In particular, Appellant asserts that
determining the identity of a user is neither taught nor suggested by the prior
art (id.). As discussed above with respect to claim 1, the user data is
extracted only if the user is identified. Therefore, we agree with the
Examiner that the user information is obtained by the wrapper after
searching the User Meta-data and is based on identifying the user.

CONCLUSION OF LAW
Because Appellant has failed to point to any error in the Examiner’s
position, we sustain the § 103 rejection with respect to independent claims 1
and 12 as well as claims 2-11 and 13-20, which are argued either together
with claim 1 or merely based on the same reasons discussed in relation with
their base claims (Br. 5 & 8). Therefore, we sustain the 35 U.S.C. § 103
rejection of claims 1-20 over Gupta ‘079 and Gupta ‘258.

DECISION
The decision of the Examiner rejecting claims 1-20 is affirmed.

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Appeal 2007-2167
Application 09/991,752

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 1.136(a)(1)(iv).

AFFIRMED

tdl/gw

HEWLETT – PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
P.O. BOX 272400
FORT COLLINS, CO 80527-2400
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