Ex Parte Chalon

Board of Patent Appeals and Interferences

Nov 6, 2009

10165865 (B.P.A.I. Nov. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DENIS CHALON 8
___________ 9
10
Appeal 2009-005318 11
Application 10/165,865 12
Technology Center 3600 13
___________ 14
15
Decided: * 16
___________ 17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE 1
Denis Chalon (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a non-final rejection of claims 1 and 3-9, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a method of maintaining a user profile and a 10
module operable to maintain a user profile in accordance with an 11
information request (Specification 1:5-8). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 1, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15
1. A method of maintaining a user profile, comprising: 16
a) searching user requested information for a profile tag; 17

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 1, 2008) and the Examiner’s Answer (“Ans.,” mailed June
19, 2008), and Non-Final Rejection (“Non-Final Rej.,” mailed November 1,
2007).
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b) reading the user profile in accordance with the profile tag to 1
determine the presence of user preference information; 2
c) determining that user preference information is not present in 3
the user profile; 4
d) generating a profile enquiry for the user in accordance with 5
profile enquiry information provided in the profile tag; 6
e) receiving a response from the user to the profile enquiry; and 7
updating the user profile in accordance with the user response. 8
9
THE REJECTIONS 10
The Examiner relies upon the following prior art: 11
Dragulev et al. US 2001/0037407 A1 Nov. 1, 2001
12
Claims 1 and 3-7 are rejected under 35 U.S.C. § 101 for failing to claim 13
statutory subject matter. 14
Claims 1 and 3-9 are rejected under 35 U.S.C. § 112, second paragraph, 15
as being indefinite for failing to particularly point out and distinctly claim 16
the subject matter which applicant regards as the invention. 17
Claims 1 and 3-9 are rejected under 35 U.S.C. § 102(e) as anticipated by 18
Dragulev or under 35 U.S.C. § 103(a) as unpatentable over Dragulev. 19
20
21
22
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ISSUES 1
The issues pertinent to this appeal are 2
• Whether the Appellant has sustained the burden of showing that the 3
Examiner erred in rejecting claims 1, 4, 6, 7, and 9-12 stand rejected 4
under 35 U.S.C. § 101 for failing to claim patentable subject matter. 5
o This pertinent issue turns on whether the Appellant has waived 6
his arguments towards this rejection. 7
• Whether the Appellant has sustained the burden of showing that the 8
Examiner erred in rejecting claims 1 and 3-9 stand rejected under 35 9
U.S.C. § 112, second paragraph, as being indefinite for failing to 10
particularly point out and distinctly claim the subject matter which 11
applicant regards as the invention. 12
o This pertinent issue turns on whether the term “the user profile” 13
lacks an antecedent basis. 14
• Whether the Appellant has sustained the burden of showing that the 15
Examiner erred in rejecting claims 1 and 3-9 under 35 U.S.C. § 102(e) 16
as anticipated by Dragulev or 35 U.S.C. § 103(a) as unpatentable over 17
Dragulev. 18
o This pertinent issue turns on whether Dragulev fails to describe 19
or suggest the feature of generating a profile enquiry for the 20
user in accordance with profile enquiry information provided in 21
the profile tag. 22
23
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Dragulev 5
01. Dragulev is directed to a computer system and method for 6
managing user-specific data over multiple devices (Dragulev ¶ 7
0002). 8
02. A user supplies a user identifier (user ID) and a password to a 9
profile server (Dragulev ¶ 0094). After validating the user ID and 10
password, the profile server transmits user profile data associated 11
with the unique identifier to the profile client residing on the 12
user’s machine (Dragulev ¶ 0094). When a user then requests a 13
web page, the client profile intercepts the request and determines 14
whether user profile data is associated with the requested web 15
page (Dragulev ¶ 0095). If client profile information exists, the 16
client filter posts this information to the requested web page 17
(Dragulev ¶ 0095). 18
03. The profile data can include user bookmarks, personal address 19
books, user preference data, or user specific data, which may be 20
updated or modified by the user (Dragulev ¶ 0104). 21
Facts Related To The Level Of Skill In The Art 22
04. Neither the Examiner nor the Appellant has addressed the level 23
of ordinary skill in the pertinent arts customer relationship 24
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management and contact information management. We will 1
therefore consider the cited prior art as representative of the level 2
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 3
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings 4
on the level of skill in the art does not give rise to reversible error 5
‘where the prior art itself reflects an appropriate level and a need 6
for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 7
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 8
Facts Related To Secondary Considerations 9
05. There is no evidence on record of secondary considerations of 10
non-obviousness for our consideration. 11
PRINCIPLES OF LAW 12
101 - Bilski 13
The law in the area of patent-eligible subject matter for process claims 14
has recently been clarified by the Federal Circuit, In re Bilski, 545 F.3d 943 15
(Fed. Cir. 2008) (en banc), petition for cert. filed, 77 USLW 3442 (U.S. Jan. 16
28, 2009) (No. 08-964). 17
The en banc court in Bilski held that “the machine-or-transformation test, 18
properly applied, is the governing test for determining patent eligibility of a 19
process under § 101.” Id. at 956. The court in Bilski further held that “the 20
‘useful, concrete and tangible result’ inquiry is inadequate [to determine 21
whether a claim is patent-eligible under § 101.]” Id. at 959-60. 22
23
24
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Indefiniteness 1
The test for definiteness under 35 U.S.C. § 112, second paragraph, is 2
whether “those skilled in the art would understand what is claimed when the 3
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety 4
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations omitted). 5
6
Anticipation 7
"A claim is anticipated only if each and every element as set forth in the 8
claim is found, either expressly or inherently described, in a single prior art 9
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 10
631 (Fed. Cir. 1987). "When a claim covers several structures or 11
compositions, either generically or as alternatives, the claim is deemed 12
anticipated if any of the structures or compositions within the scope of the 13
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 14
Cir. 2001). "The identical invention must be shown in as complete detail as 15
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 16
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 17
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 18
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 19
Obviousness 20
A claimed invention is unpatentable if the differences between it and 21
the prior art are “such that the subject matter as a whole would have been 22
obvious at the time the invention was made to a person having ordinary skill 23
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 24
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 25
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In Graham, the Court held that that the obviousness analysis is 1
bottomed on several basic factual inquiries: “[(1)] the scope and content of 2
the prior art are to be determined; [(2)] differences between the prior art and 3
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 4
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 5
U.S. at 406. “The combination of familiar elements according to known 6
methods is likely to be obvious when it does no more than yield predictable 7
results.” Id. at 416. 8
ANALYSIS 9
Claims 1 and 3-7 rejected under 35 U.S.C. § 101 for failing to claim 10
patentable subject matter 11
This rejection was raised for the first time in the Answer. The Appellant 12
has not argued this rejection in a Reply Brief. We take this as an indication 13
that the Appellant has waived arguments as to this rejection and as such we 14
summarily sustain the Examiner in rejecting claims 1 and 3-7 under 35 15
U.S.C. § 101 for failing to claim patentable subject matter. 16
17
Claims 1 and 3-9 rejected under 35 U.S.C. § 112, second paragraph, as 18
being indefinite for failing to particularly point out and distinctly claim the 19
subject matter which applicant regards as the invention 20
The Examiner found that there is insufficient antecedent basis for the 21
limitation “the user profile in accordance with the profile tag” as recited in 22
limitation (b) of claim 1 (Ans. 3). The Examiner found that a recitation of “a 23
user profile” is found in the preamble but is broad (Ans. 3). The Examiner 24
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further suggests a step of associating a user profile with the profile tag (Ans. 1
3) to remedy this allegedly insufficient antecedent basis (Ans. 3). 2
The Appellant contends that the recitation of “a user profile” in the 3
preamble serves as a proper antecedent basis for its recitation in limitation 4
(b) and the Examiner’s finding that this recitation in the preamble is broad is 5
irrelevant (App. Br. 3). 6
We agree with the Appellant. The recitation of “a user profile” in the 7
preamble is sufficient to provide an antecedent basis for the recitation of 8
“the user profile” in limitation (b). The recitation of “a user profile” in the 9
preamble renders the subsequent recitation of “the user profile” clear and 10
definite. As such, the Appellant has sustained the burden of showing that 11
the Examiner erred in rejecting claims 1 and 3-9 under 35 U.S.C. § 112, 12
second paragraph, as being indefinite for failing to particularly point out and 13
distinctly claim the subject matter which applicant regards as the invention. 14
15
Claims 1 and 3-9 rejected under 35 U.S.C. § 102(e) as anticipated by 16
Dragulev or under 35 U.S.C. § 103(a) as unpatentable over Dragulev 17
The Appellant contends that Dragulev fails to describe or suggest the 18
feature of generating a profile enquiry for the user in accordance with profile 19
enquiry information provided in the profile tag, as required by limitation (d) 20
of claim 1 (App. Br. 4-5). The Appellant particularly argues that a user is 21
specifically asked for preference information when the preference 22
information is missing (App. Br. 4). The Appellant also contends that there 23
is nothing in Dragulev that directly interacts with a user to obtain 24
information (App. Br. 4-5). 25
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We disagree with the Appellant. Limitation (d) requires prompting the 1
user for information to be stored in the user’s profile data. Limitation (d) 2
does not require that the information that a user is prompted for is missing 3
preference information. Limitation (d) is completely silent on preference 4
information. As such, the Appellant’s argument that Dragulev fails to 5
specifically ask a user for missing preference information is not found 6
persuasive. 7
Dragulev describes that a user inputs identifying information in order to 8
retrieve profile information (FF 02). That is, a user is prompted to submit a 9
user ID and password information and the system uses this information to 10
identify other profile data associated to the submitted user ID. This 11
prompting is directly interacting with a user. As such, Dragulev describes 12
limitation (d). 13
Furthermore, Dragulev describes that the profile data includes 14
information that a user can update or modify (FF 03). This suggests that a 15
user is queried for profile information to be added to the user profile or 16
updated in the user profile. The information submitted by the user will be 17
associated with the user ID provided by the user. That is, a user is prompted 18
to enter or update his profile information and enabling a user to enter or 19
update profile information is directly interacting with a user. As such, 20
Dragulev also suggests limitation (d). 21
The Appellant has not sustained the burden of showing that the 22
Examiner erred in rejecting claims 1 and 3-9 under 35 U.S.C. § 102(e) as 23
anticipated by Dragulev or 35 U.S.C. § 103(a) as unpatentable over 24
Dragulev. 25
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1
CONCLUSIONS OF LAW 2
The Appellant has not sustained the burden of showing that the 3
Examiner erred in rejecting claims 1 and 3-7 under 35 U.S.C. § 101 as 4
failing to claim patentable subject matter. 5
The Appellant has sustained the burden of showing that the Examiner 6
erred in rejecting claims 1 and 3-9 under 35 U.S.C. § 112, second paragraph, 7
as being indefinite for failing to particularly point out and distinctly claim 8
the subject matter which applicant regards as the invention. 9
The Appellant has not sustained the burden of showing that the 10
Examiner erred in rejecting claims 1 and 3-9 under 35 U.S.C. § 102(e) as 11
anticipated by Dragulev or 35 U.S.C. § 103(a) as unpatentable over 12
Dragulev. 13
14
DECISION 15
To summarize, our decision is as follows. 16
• The rejection of claims 1 and 3-7 under 35 U.S.C. § 101 as failing to 17
claim patentable subject matter is sustained. 18
• The rejection of claims 1 and 3-9 under 35 U.S.C. 112, second 19
paragraph, as being indefinite for failing to particularly point out and 20
distinctly claim the subject matter which applicant regards as the 21
invention is not sustained. 22
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• The rejection of claims 1 and 3-9 under 35 U.S.C. 102(e) as 1
anticipated by Dragulev or under 35 U.S.C. § 103(a) as unpatentable 2
over Dragulev is sustained. 3
No time period for taking any subsequent action in connection with this 4
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007). 5
6
AFFIRMED 7
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