Ex Parte Cameron et al

Board of Patent Appeals and Interferences

Jun 29, 2010

10094373 (B.P.A.I. Jun. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD NEILL CAMERON, LOIC JAOUEN FEINBIER,
MICHAEL CLAYTON SCHMALTZ,
and ALEXANDER PETER VAN DEN HONDEL
____________

Appeal 2009-004546
Application 10/094,373
Technology Center 2100
____________

Decided: June 29, 2010
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3, 5-28, 30, and 32-38. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

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STATEMENT OF THE CASE
Appellants invented a mobile decision support system in which a
client system may direct the configuration of “hotspot” information
representing an issue, problem, or event in a server database. Based on a
client request, the hotspot information is sent to a mobile device, and a user
can send responses to recipients selected via a “response template” sent as
part of the hotspot information. See generally Abstract; Spec. 3-4, 8; Fig. 1-
2. Claim 1 is illustrative with key disputed limitations emphasized:
1. A method of mobile decision making, the method comprising:
configuring hotspot information in a database, the hotspot information
representative of an issue, problem or event and comprising identification of
a specific user the hotspot information is for, a response template tailored
for use by the identified specific user to formulate a response to the hotspot
information, and data;
checking the database for hotspot information as a function of a
request generated by a mobile communication device, the request
comprising identification of the user the hotspot information is specified for;
transmitting the hotspot information over a network to the mobile
communication device that generated the request as a function of the user
identified in the request; and
receiving a response to the hotspot information from the mobile
communication device, wherein the response includes indication of a
recipient, other than the user, that the response is to be transmitted to, and
indication of a reply channel to transmit the response to the recipient, both of
which were provided in the response template and were selectable by the
user.

The Examiner relies on the following as evidence of unpatentability:
Van Allen US 2002/0002598 A1 Jan. 3, 2002
(filed Jan. 29, 1998)
Blair US 2002/0112114 A1 Aug. 15, 2002
(filed Feb. 13, 2001)
Hull US 6,487,457 B1 Nov. 26, 2002
(filed Feb. 11, 2000)
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Fascenda US 2003/0046291 A1 Mar. 6, 2003
(eff. filed Mar. 10, 2000)
Amit US 2004/0043770 A1 Mar. 4, 2004

THE REJECTIONS1
1. The Examiner rejected claims 1-3, 5-7, 9-26, 28, 30, 32, 33, 37, and
38 under 35 U.S.C. § 103(a) as unpatentable over Van Allen, Hull,
and Fascenda. Ans. 3-20.2
2. The Examiner rejected claims 8 and 34 under 35 U.S.C. § 103(a) as
unpatentable over Van Allen, Hull, Fascenda, and Blair. Ans. 20-21.
3. The Examiner rejected claims 27, 35, and 36 under 35 U.S.C. § 103(a)
as unpatentable over Van Allen, Hull, Fascenda, and Amit. Ans.
22-24.

1 Although the Examiner’s final rejection includes rejections under 35
U.S.C. § 112 (Fin. Rej. 2-3), they are not repeated in the Examiner’s
Answer. See Ans. 3-24 (omitting § 112 rejections from the Grounds of
Rejection section). Accord Reply Br. 2 (noting this fact). We therefore
presume that the Examiner intended to withdraw these rejections and are
therefore not before us. See Manual of Patent Examining Procedure (MPEP)
§ 1207.02, 8th ed., Rev. 3, Aug. 2005 (“Grounds of rejection not specifically
withdrawn by the examiner and not set forth in the examiner’s answer are
usually treated by the Board as having been dropped . . . .”).
2 Throughout this opinion, we refer to (1) the Appeal Brief filed November
19, 2007; (2) the Examiner’s Answer mailed March 27, 2008; and (3) the
Reply Brief filed May 27, 2008.
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CONTENTIONS
Regarding independent claim 1, the Examiner finds that Van Allen
discloses a mobile decision-making method that configures hotspot
information comprising (1) identifying a specific user the hotspot
information is for; (2) a response template tailored for use by the identified
specific user to formulate a response to the hotspot information; and (3) data
as claimed. Ans. 3-4, 25. The Examiner adds that Van Allen’s mobile
communication device generates a request that identifies the user that the
hotspot information is specified for. Ans. 3-4; 25-26.
The Examiner also cites Hull for teaching transmitting the hotspot
information to the mobile device as a function of the user identified in the
request. Ans. 4. Moreover, the Examiner cites Fascenda for teaching
receiving a response to the hotspot information indicating (1) a recipient,
other than the user, that the response is to be transmitted to, and (2) a reply
channel to transmit the response, both of which were provided in the
response template and user-selectable. Ans. 4-5, 26.
Appellants argue that while Van Allen teaches scanning and decoding
an encoded physical medium (e.g., a barcode or document ID) to obtain
additional information about a scanned object, Van Allen does not teach or
suggest the recited hotspot information comprising (1) identifying a specific
user the hotspot information is for; (2) a response template tailored for use
by the identified specific user to formulate a response to the hotspot
information; and (3) data. App. Br. 10-11; Reply Br. 3. Appellants add that
Van Allen likewise fails to generate a request that identifies the user that the
hotspot information is specified for, as claimed. App. Br. 12; Reply Br. 4.
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Appellants further contend that Fascenda fails to receive a response to
the hotspot information indicating (1) a recipient, other than the user, that
the response is to be transmitted to, and (2) a reply channel to transmit the
response, both of which were provided in the response template and user-
selectable, as claimed. App. Br. 12-13; Reply Br. 5.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Van Allen, Hull, and Fascenda collectively would have taught or
suggested:
(1) configuring hotspot information comprising (a) identifying a
specific user that the hotspot information is for; (b) a response template
tailored for use by the identified specific user to formulate a response to the
hotspot information; and (c) data; and
(2) receiving a response to the hotspot information from a mobile
communication device indicating (a) a recipient, other than the user, that the
response is to be transmitted to, and (b) a reply channel to transmit the
response, both of which were provided in the response template and are
user-selectable?

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FINDINGS OF FACT (FF)
1. Van Allen’s computer interface 10 includes sensor 12 and encoded
physical medium 30. The medium includes (1) an encoded region 32 which
may use a barcode encoding scheme, and (2) a document identification (ID)
“hotspot”3 33 identifying the medium. Van Allen, ¶¶ 0028-29; Fig. 1.
2. The encoded physical medium may take any suitable form (e.g., a
page from a book or magazine, article of clothing, globe, product package,
etc.). Alternatively, the medium may be items selected from a user’s
surroundings, where a marker 34 can be intentionally applied to indicate that
content exists in region 32. Van Allen, ¶¶ 0030-31; Fig. 1.
3. A marker can be introduced into the encoded content indicating
that certain information is encoded in the hotspots. Van Allen, ¶ 0045.
4. Sensor 12 determines whether a marker is present in measured
information, and if so, (1) decodes that information, and (2) sends it to
computer system 40 for further processing. Van Allen, ¶¶ 0032-33; Fig. 1.
5. Sensor 12 can perform operations as a function of (1) the
interpreted information, and (2) the context in which it was measured. For
example, the sensor can determine if a predefined condition related to the
information has been satisfied (e.g., the user gathering a set number of clues
or data points). Van Allen, ¶ 0040.
6. Van Allen’s various embodiments include (1) a book 352 with
hotspots 358, 360, 362 having URLs encoded therein; (2) a globe 400 with
hotspots 406 having various types of encoded information, such as URLs or

3 Van Allen defines a “hotspot” (restated as a single word for brevity) as “a
particular region wherein content is encoded, and may include text and/or
graphics.” Van Allen, ¶ 0044. Van Allen further notes that the content of a
hotspot may include computer instructions, a URL, and other data. Id.
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document addresses (e.g., word processing or computer documents
(graphics, audio, video files, etc.)); and (3) an interface system 500 linking
hotspot IDs to URLs via web servers. Van Allen, ¶¶ 0052-61; Figs. 7-9.
7. The nature of content encoded in hotspots (1) is unconstrained; (2)
may be abstract or concrete; and (3) can vary. For example, hotspots can be
(1) “indirection” hotspots; (2) “direct content” hotspots; and (3) “document
ID” hotspots. Van Allen, ¶¶ 0067-68.
8. Fascenda notes that when users submit consecutive information
requests over a relatively short time period via a browser, the consecutive
requests can effectively cancel or negate a previous request. For example, if
a user clicks a first hypertext link, and then clicks a second link before a
jump to the first link, a jump to the first link fails. Therefore, initiating the
second link effectively negates initiating the first link. Fascenda, ¶ 0016.
9. Fascenda’s system uses transaction databases in a client-server
environment to receive and retain multiple server responses to consecutive
client requests regardless of their temporal relationship. To this end, a client
device 108 can (1) send an information request message 316 to server 114,
and (2) receive response message 318 and store information in that message
in client transaction database 312. Fascenda, Abstract; ¶¶ 0076-84; Fig. 3.
10. Fascenda’s client template database 310 includes multiple
templates 314 defining (1) the type, layout, and format of information
presented to the user on a display page, and (2) actions a user can take when
viewing an associated display page (e.g., the type and/or content of requests
a user can enter). Fascenda, ¶¶ 0083, 0091; Fig. 3.
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11. Server 114 includes a server template database 330 that maps
individual client device identifiers to the most current authorized template
versions. Fascenda, ¶ 0089; Fig. 3.
12. According to Appellants, “[t]he response template provides
selections for a user formulating a response to the hotspot information. The
response template may include a list for selection of recipients of the
response, a list of possible reply channels to transmit the response and
response information.” Spec. 8:22-25.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 1 which calls for, in pertinent
part, configuring hotspot information comprising (1) identifying a specific
user that the hotspot information is for, and (2) a response template tailored
for use by the identified specific user to formulate a response to the hotspot
information. Claim 1 also recites receiving a response to the hotspot
information from a mobile communication device indicating (1) a recipient,
other than the user, that the response is to be transmitted to, and (2) a reply
channel to transmit the response, both of which were provided in the
response template and are user-selectable.
First, the Examiner’s reliance on Van Allen for allegedly teaching
hotspot information that identifies a specific user that the hotspot
information is for (Ans. 25) is dubious at best. As Appellants indicate (App.
Br. 10-11; Reply Br. 3), Van Allen’s hotspots are associated with an
encoded physical medium whose information identifies the medium (i.e.,
book, magazine, article of clothing, globe, etc.)—not the user. FF 1-2, 6.
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Although Van Allen contemplates a wide variety of content encoded in
hotspots (FF 7), and that sensor operations can be performed based on
certain predefined conditions (e.g., whether the user gathers a certain
number of data points) (FF 5), the reference is far from clear whether this
information would provide a user identification function, let alone be
included along with the other recited hotspot information.
In any event, even if we assume, without deciding, that the fact that
the encoded medium can be items selected from a user’s surroundings (FF 2)
somehow identifies the user via the hotspot as the Examiner seems to
suggest (Ans. 25), we still find the Examiner’s rejection problematic,
particularly regarding the recited response template functionality.
Appellants’ specification indicates that “[t]he response template
provides selections for a user formulating a response to the hotspot
information . . . [and] may include a list for selection of recipients of the
response, a list of possible reply channels to transmit the response and
response information.” FF 12 (emphases added). The clear import of this
discussion is that the recited “response template” is intended to provide a
way for the user to select various options in formulating a response (e.g., via
a list of available options), namely selecting (1) a recipient other than the
user, and (2) a reply channel via the template.
The cited prior art, however, suggests nothing of the sort. First, the
Examiner is hardly clear on what aspect of Van Allen’s system constitutes a
“response template” (see Ans. 3-4, 25), nor can we find anything in Van
Allen that even remotely resembles such a feature. Rather, Van Allen’s
hotspots merely comprise information that pertains to the medium, namely
URLs, document addresses, etc. that is decoded and sent to a computer for
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processing. FF 1, 4, 6-7. To the extent that the Examiner relies on the
resulting content acquired via selecting the encoded information in Van
Allen’s hotspots (e.g., information acquired from the computer responsive to
selecting a URL, etc.) (see id.) as corresponding to the “response template”
is simply unclear on this record and, in any event, problematic for the
reasons indicated previously.
Nor does Fascenda cure these deficiencies. While Fascenda’s system
uses (1) a server to satisfy client requests for information (FF 9), and (2)
templates at the client and server, respectively (FF 10-11), these templates
do not reasonably teach or suggest the recited response template
functionality, let alone that such a response template was included in the
hotspot information as claimed.
Rather, the client templates merely define the (1) type, layout, and
format of information presented to the user on a display page, and (2)
actions a user can take when viewing an associated display page (e.g., the
type and/or content of requests a user can enter). FF 10. This customizable
presentation, however, does not reasonably suggest providing a way for the
user to select various options in formulating a response via a template, let
alone select a recipient and a reply channel via such a template as claimed.
See id. Nor do Fascenda’s server templates suggest a response template, for
they merely map individual client device identifiers to the most current
authorized template versions. FF 11.
The Examiner’s position that such a selection capability associated
with a response is somehow suggested by the user’s consecutively clicking
twice on different links in Fascenda (Ans. 26) is likewise untenable. At best,
Fascenda’s discussion in this regard in the patent’s Background section
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merely highlights the drawbacks of users effectively negating requests by
consecutively clicking different links too quickly before jumping to the first
link. FF 8. Even assuming, without deciding, that such an act were
deliberate and therefore could somehow be considered a “selection” as the
Examiner seems to suggest (Ans. 26), we still fail to see how such a
“selection” would involve options provided in a response template, let alone
that these selections would include (1) a recipient other than the user, and (2)
a reply channel as claimed. Moreover, Hull does not cure the deficiencies of
Van Allen and Fascenda for the reasons indicated by Appellants (App. Br.
11, 15). Nor has the Examiner shown that the other cited references in the
other obviousness rejections (Ans. 20-24) cure these deficiencies.
Therefore, we find that, even if combinable, the cited prior art does
not teach or suggest the limitations of claim 1. Since this issue is dispositive
regarding our reversal of claim 1, we need not address Appellants’ other
arguments regarding the references’ combinability (App. Br. 18-23).
We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 10, 19, and 28 which recite
commensurate limitations;4 and (3) the dependent claims for similar reasons.

4 Although claim 10 does not recite a response template, we nevertheless
reverse this claim for similar reasons as claim 1 since claim 10 calls for the
hotspot information to comprise, among other things, a (1) response
recipient selection list; (2) a reply channel selection list; and (3) a response
information list. As we indicated with respect to claim 1, the cited prior art
fails to teach or suggest these features akin to a response template (see FF
12), let alone configuring a response via selection from this information.
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CONCLUSION
The Examiner erred in rejecting claims 1-3, 5-28, 30, and 32-38 under
§ 103.

ORDER
The Examiner’s decision rejecting claims 1-3, 5-28, 30, and 32-38 is
reversed.

REVERSED

pgc

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