Ex Parte Cheah

Patent Trial and Appeal Board

Feb 21, 2017

12258299 (P.T.A.B. Feb. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/258,299 10/24/2008 Chris Cheah 079894.0513 8758
91230 7590
Baker Botts L.L.P.
2001 Ross Avenue. 6th Floor
Dallas, TX 75201
EXAMINER
STITT, ERIK V
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptomaill @bakerbotts.com
ptomail2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS CHEAH
Appeal 2016-006539
Application 12/258,299
Technology Center 2100
Before ERIC S. FRAHM, KRISTEN L. DROESCH, and
JOHN D. HAMANN, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006539
Application 12/258,299
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—10, 12—16, and 21—25. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 11 and 17—20 were canceled. Appellant’s invention is a
network enabled information and management distribution method and
system that automatically distributes and updates contact information using a
customized layout (claims 1, 10, and 21; || 3, 8, 9; Abs.).
We affirm the obviousness rejection of claims 1—10, 12—16, 21, and
23—25, and reverse the obviousness rejection of claim 22.
Exemplary Claims
Exemplary claims 1 and 22 under appeal, with emphases added, read
as follows:
1. A method comprising:
by a computer system, maintaining in a database a
plurality of user profiles of a plurality of users, each user profile
associated with content information provided by a respective
user, the content information including profile information
about the user;
by the computer system, customizing a layout of a first
user profile in accordance with commands received from a first
user associated with the first user profile;
by the computer system, receiving a request from a
requesting user to view the first user profile of the first user;
by the computer system, identifying, from the request,
the first user;
by the computer system, providing for display to the first
user, via a network, an authorization request that presents one
or more options for the first user to respond to the request from
the requesting user to view the first user profile of the first user;
by the computer system, receiving an authorization
response from the first user, via the network and in response to
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the authorization request, the authorization response
being generated at least in part by the first user interacting with
the authorization request;
by the computer system, providing for display to the
requesting user, prior to the first user interacting with the
authorization request, a status of the requesting user’s
request to view the first user profile of the first user, and
by the computer system, in response to the authorization
response, exchanging at least a portion of the first profile
between the requesting user and the first user from the
database via the network, such that the first user profile of the
first user, when displayed to the requesting user, is displayed in
accordance with the customized layout as specified by the first
user.
22. The system of claim 21, the one or more processors
further operable when executing the instructions to:
in response to the authorization response, permit the first
user to access a user profile of the requesting user.
Independent claims 10 and 21 are commensurate in scope with
independent claim 1, and recite similar features pertaining to a method and
system for automatically distributing and updating contact information using
a customized layout.
Examiner’s Rejections
(1) The Examiner rejected claims 1—10, 12—16, and 25 as being
unpatentable under 35 U.S.C. § 103(a) over Robertson (US 6,269,369 Bl;
issued July 31, 2001), Farros (US 5,930,810; issued July 27, 1999), and
Cogger (US 6,859,783 B2; issued Feb. 22, 2005).1 Final Act. ^U12 and 16.
1 Although the Examiner leaves out claims 6 and 7 in the heading of the
statement of the rejection on page 4 of the Final Rejection (see Final Act. 4),
we consider claims 6 and 7 to stand rejected since claims 6 and 7 are
discussed on the merits on pages 8—9 of the Final Rejection (Final Act. 8—9).
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(2) The Examiner rejected claims 21—24 as being unpatentable under
35 U.S.C. § 103(a) over Robertson and Farros. Final Act. 13—15.
Issues on Appeal
Appellant (i) presents arguments to claims 1—10, 12—16, 21, and 23—
25 as a group and argues claim 1 as representative of the group (App. Br. 8—
15; Reply Br. 2—9); and (ii) argues dependent claim 22 separately (App. Br.
15—16; Reply Br. 10). Accordingly, we select (i) claim 1 as representative
of the group of claims consisting of claims 1—10, 12—16, and 25; and
(ii) claim 21 as representative of the group of claims consisting of claims 21,
23, and 24, and we will address representative independent claims 1 and 21
and dependent claim 22 in our analysis herein. Because (i) claims 1 and 21
both recite the same salient features pertaining to a method and system for
automatically distributing and updating contact information using a
customized layout; and (ii) Appellant argues claim 21 on the same basis as
claim 1, we decide the outcome of claim 21 on the same basis as claim 1.
Based on Appellant’s arguments in the Appeal Brief (App. Br. 8—17)
and the Reply Brief (Reply Br. 2—11), the following two issues are presented
on appeal:
(1) Did the Examiner err in rejecting claims 1—10, 12—16, 21, and 23—
25 as being obvious because Robertson, Farros, and Cogger are not properly
combinable and their combination fails to teach or suggest the method for
automatically distributing and updating contact information using a
customized layout, as set forth in representative claims 1 and 21?
In addition, Appellant recognizes that claims 6 and 7 are finally rejected in
both briefs (see App. Br. 8, top of page; Reply Br. 1).
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(2) Did the Examiner err in determining that Robertson, and as a
result the combination of Robertson and Farros, teaches or suggests the
system is operable to, “in response to the authorization response, permit the
first user to access a user profile of the requesting user,” as set forth in
dependent claim 22?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 4—16) in light
of Appellant’s contentions in the Appeal Brief (App. Br. 8—17) and Reply
Brief (Reply Br. 2—11) that the Examiner has erred, in light of the
Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 2—
7). We disagree with Appellant’s contentions as to representative claim 1,
and we agree with Appellant’s arguments and conclusions with regard to
dependent claim 22 separately argued.
With regard to representative claims 1 and 21, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 4—7 and 13—14), and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (see Ans. 2—6). We concur with the conclusions
reached by the Examiner as to representative claims 1 and 21, and highlight
and address specific findings and arguments for emphasis as follows.
Representative Claims 1 and 21
With regard to representative claims 1 and 21, we agree with the
Examiner’s findings and conclusions pertaining to the teachings and
suggestions of Robertson, Farros, and Cogger, as well as the obviousness of
their combination (see Final Act. 4—7 and 13—14; Ans. 2—5). We agree with
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the Examiner that Robertson teaches changing a layout presented to the
requesting user by adding/removing user data based on permission settings
(Ans. 3), and Farros teaches customizing layouts of user data electronically
(Ans. 3—4). We also agree with the Examiner that Cogger teaches informing
a user of a request status using a Web enabled infrastructure accessible by a
remote customer workstation (Ans. 4—5).
Regarding Appellant’s contentions (App. Br. 13—14; Reply Br. 8) that
Farros in non-analogous art, the criteria for determining whether prior art is
analogous may be summarized as “(1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992).
A reference may be considered analogous art if it is “reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation and internal
quotation marks omitted). The standard is met if the reference “is one
which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” Id.
(citation and internal quotation marks omitted).
Farros deals with the electronic transmission of business cards (i.e.,
user profiles) between two parties (e.g., a user and a creator). Fig. 5 and
accompanying text found at col. 7,1. 40-col. 8,1. 7; see also col. 1,11. 22—23
and col. 2,11. 15—33. In this light, we are not persuaded by Appellant’s
arguments (App. Br. 13—14; Reply Br. 8) that Farros is (i) not related to any
portion of Appellant’s problem of distributing information between users on
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a network, and (ii) instead concerned solely with printed products and the
media available to print those products.
We agree with the Examiner (Ans. 5) that Farros is concerned with
the same problems as Appellant: (i) determining the layout for a user’s
personal data (i.e., customized layouts); and (ii) providing customized
layouts using a computer system having a graphical user interface for
operating on a user profile (i.e., Farros’ business card contact information).
We also find Farros to be in the same field of endeavor, namely that of
managing and distributing profile information electronically. In view of the
foregoing, we agree with the Examiner (Final Act. 5—7 and 13—14; Ans. 5—6)
that (i) Farros is analogous art to Appellant’s claimed subject matter; and
(ii) Robertson, Farros, and Cogger are properly combinable.
Accordingly, we sustain the obviousness rejections of representative
claims 1 and 21, as well as claims 2—10, 12—16, and 23—25 respectively
grouped therewith.
Claim 22
Appellant argues (App. Br. 15—16; Reply Br. 10) that Robertson
(col. 9,11. 10-15) does not disclose a system operable to, “in response to the
authorization response, permit the first user to access a user profile of the
requesting user,” as recited in claim 22. We agree. Although Robertson’s
column 9, lines 10—15 discloses creating a listing for a member A in a
virtual address book, this portion of Robertson does not disclose permitting
access to a user profile of a requesting user in response to an authorization
response as recited in claim 22.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of dependent claim 22.
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CONCLUSIONS
(1) The Examiner has not erred in determining that the combination of
Robertson, Farros, and Cogger are properly combinable and their
combination teaches or suggests the methods and system for automatically
distributing and updating contact information using a customized layout set
forth in representative claims 1 and 21, and as similarly set forth in claims
2—10, 12—16, and 23—25 respectively grouped therewith.
(2) The Examiner erred in determining that Robertson, and as a result
the combination of Robertson and Farros, teaches or suggests the system
operable to “in response to the authorization response, permit the first user to
access a user profile of the requesting user,” as set forth in dependent claim
22.
DECISION
The Examiner’s rejections of (i) claims 1—10, 12—16, 21, and 23—25
under 35 U.S.C. § 103(a) are affirmed; and (ii) claim 22 under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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