Ex Parte Detweiler et al

Board of Patent Appeals and Interferences

Sep 17, 2010

10455171 (B.P.A.I. Sep. 17, 2010)

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.
10/455,171 06/05/2003 Keely RaNae Detweiler AUS920020665US1 3769
47959 7590 09/20/2010
IBM AUSTIN (ANTHONY ENGLAND)
C/O LAW OFFICE OF ANTHONY ENGLAND
PO BOX 5307
AUSTIN, TX 78763-5307
EXAMINER
BETIT, JACOB F
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
09/20/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEELY RANAE DETWEILER, SAMUEL ROY DETWEILER,
and HELEN S. HALL
____________________

Appeal 2009-005233
Application 10/455,1711
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed June 5, 2003. The real party in interest is International
Business Machines Corp. (App. Br. 2.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1, 3-8, 10-
15, and 17-24 under authority of 35 U.S.C. § 134(a).3 Claims 2, 9, and 16
have been canceled. The Board of Patent Appeals and Interferences (BPAI)
has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal relates to a method for providing
special needs services information to a customer. An enterprise receives
information identifying the customer and the special needs of the customer,
for example, from a database, and sends the customer an indication of a set
of special needs related services, provided from an enterprise database, that
are available from the enterprise for the customer. (Spec. 2, ll. 8-23.)4
Representative Claim
Independent claims 1 further illustrates the invention. It reads as
follows:
1. A method for providing, by an enterprise, special
needs services information to a customer, the method
comprising the steps of:

3 Appellants’ Notice of Appeal dated July 25, 2006, states that “Applicant
hereby appeals to the Board of Patent Appeals and Interferences from the
last decision of the examiner.” Appellants have not subsequently withdrawn
any of their pending claims. Accordingly, all of Appellants’ pending claims
1, 3-8, 10-15, and 17-24 are on appeal.
4 We refer to Appellants’ Specification (“Spec.”); Third Amended Appeal
Brief (“App. Br.”) filed July 27, 2007; and Reply Brief (“Reply Br.”) filed
June 16, 2008. We also refer to the Examiner’s Answer (“Ans.”) mailed
April 15, 2008.
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receiving, by a computer system of the enterprise, an
identification of the customer;
accessing a certain universal database by the enterprise's
computer system, wherein the certain universal database
includes information identifying a special need of the customer,
the database information for the customer being selectable
responsive to the customer's identification;
accessing an enterprise database of the enterprise,
wherein the enterprise database includes information
identifying special needs services available from the enterprise;
and
sending, by the computer system of the enterprise, an
indication to the customer of a set of special needs services
available from the enterprise for the customer, wherein the set
of services is determined by the enterprise database responsive
to the customer’s special need information from the universal
database, wherein the customer’s identification is received by
the enterprise’s computer system from a computer system of an
agent;
performing, by the agent’s computer system, the steps of:
i) receiving the customer identification and a
location indicator for the customer;
ii) sending the customer's location indicator to an
enterprise registry;
iii) receiving, from the registry, information for
accessing the enterprise, wherein the registry determines the
access information responsive to the customer location
indicator; and
iv) sending the customer’s identification to the
enterprise’s computer system responsive to the enterprise
access information received by the agent’s computer system
from the registry; and
performing, by a wireless device of the customer, the
steps of:
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i) providing, responsive to the customer’s physical
location of the customer in communication with at least one
apparatus external to the wireless device, the location indicator;
and
ii) sending the location indicator to the agent’s
computer system.

Reference
The Examiner relies on the following reference as evidence of
unpatentability:
Fano US 6,957,393 B2 Oct. 18, 2005
(filed Mar. 19, 2002)

Rejections on Appeal
The Examiner rejects claim 21 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.5

5 See supra FN 3. Appellants state in their Fourth Amended Appeal Brief
dated December 17, 2007 (page 2) that “Appellant is not herein appealing
any claims other than 1, 8, and 15 . . . . [and] claims 3-7, 10-14, and 17-24
are not involved in the appeal, and Examiner's rejections under 35 U.S.C.
103(a) and 112, second paragraph are not involved in the appeal.” Similarly,
in Appellants’ Third Amended Appeal Brief dated July 27, 2007 (page 2),
Appellants state that:
The claims appealed herein, and for which arguments are herein
presented, are claims 1, 8, and 15. (Arguments are not herein
presented regarding claims 3-7, 10-14, and 17-24. However,
Appellant contends, of course, that these claims are allowable
since they depend on claims for which arguments are herein
presented and which Appellant contends are allowable.)
Appellants make similar statements in their Amended Appeal Brief dated
November 30, 2006 (page 3), and Appeal Brief dated September 25, 2006
(page 2). Although it is readily apparent from these statements that
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The Examiner rejects claims 1, 3-6, 8, 10-13, 15, 17-20, and 22-24
under 35 U.S.C. § 102(e) as being anticipated by Fano.
The Examiner rejects claims 7, 14, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Fano and Official Notice.6

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding the Fano reference discloses the
disputed features of Appellants claim 1? The issue turns on whether Fano
describes:
(1) “receiving, from the registry, information for accessing the
enterprise, wherein the registry determines the access information responsive
to the customer location indicator” as recited in Appellants’ claim 1; and
(2) “sending, by the computer system of the enterprise, an indication
to the customer of a set of special needs services available from the

Appellants only wish to appeal claims 1, 8 and 15, we find that all of
Appellants’ pending claims – claims 1, 3-8, 10-15, and 17-24 – have been
appealed. Appellants’ Notice of Appeal (see FN 3) simply states that
Appellants appeal “the last decision of the examiner,” which involves all the
pending claims. Further, Appellants have not withdrawn their other pending
claims (claims 3-7, 10-14, and 17-24), and aver that these claims are
patentable. Accordingly, we find that Appellants have waived their
arguments with respect to the Examiners’ § 112, second paragraph,
rejection. We, therefore, summarily affirm this rejection pro forma.
6 See supra FN 5. We find that Appellants have waived their arguments
with respect to the Examiners’ § 103 rejection for the reasons set forth in FN
5. We, therefore, summarily affirm this rejection pro forma.
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enterprise for the customer, wherein the set of services is determined by the
enterprise database responsive to the customer’s special need information
from the universal database, wherein the customer’s identification is
received by the enterprise’s computer system from a computer system of an
agent” as recited in Appellants’ claim 1.

FINDINGS OF FACT (FF)
Fano Reference
1. Fano describes a mobile valet system for the enhanced delivery
of services to a mobile device and/or location service channels (e.g., kiosks
or displays) from local and/or remote service providers. The service
providers access a user profile and utilize a user location to provide context
based services. (Abst.; col. 1, l. 64 to col. 2, l. 65.) In a first embodiment,
the mobile device includes a storage medium that contains a mobile valet
application and a user profile. (Col. 2, ll. 36-50; col. 21, ll. 22-28.) The
mobile device communicates with a server (local server or remote server)
using for example a signal transmitted through the Internet, the server
generates location information that the mobile device utilizes to generate a
location-based menu describing location based services. (Col. 14, l. 60 to
col. 15, l. 50; col. 17, ll. 3-13; col. 17, l. 53 to col. 18, l. 58; Fig. 1.)
2. In a second embodiment, Fano’s mobile device communicates
with an aggregator (aggregation server) and a user database containing a
user profile through a network such as the Internet. Alternatively, the user
database/profile may be stored in the mobile device. Different remote
service providers and local service providers at different locations through
the network also communicate with the aggregator. Each of the locations in
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communication with the aggregator also contains local service channels
connected to the network. (Col. 21, ll. 16-63; Fig 13.) The remote service
providers access information in the user’s profile and contextual information
about the user to determine appropriate services to provide to the user
though the mobile device and/or through a location service channel
proximate to the user. (Col. 2, ll. 36-65; col. 21, l. 59 to col. 22, l. 26.)
3. Fano describes its mobile device including a locating device
that determines a user’s location, for example, a global positioning satellite
(GPS) system device. The locating device provides the user’s location to the
mobile valet application, which requests information (location information)
from the server and generates a location-based menu using the information
from the server. (Col. 16, ll. 3-22; col. 17, ll. 53-60; col. 18, ll. 6-21.)
4. Fano describes that the mobile device users, remote service
providers, local service providers, locations and the service channels therein
communicate with the aggregation server, which maintains a registry
database of mobile device users, remote service providers, local service
providers, locations and their service channels. The registry includes
information on the locations and the location service channels, as well as
preferences and/or rules provided by the local service providers, remote
service providers, and/or users. The aggregation server manages access to
the location service channels, for example, using a unique IP address for
each location service channel, and routes services provided from the remote
service providers to an appropriate selected location service channel for the
user in accordance with the registry information. (Col. 22, ll. 6-54.)
5. Fano describes that a service provider accesses information in
the user’s profile, and provides information to a mobile device user based on
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the profile information. In a first embodiment, a local server (service
provider) identifies location service channels proximate to the user’s
location and provides information of interest to the user to the user’s mobile
device and location service channels (e.g., a display) based on the user’s
request and/or the user’s profile information. (Col. 21, ll. 3-15.) In a second
embodiment, remote service providers access information in the user’s
profile and contextual information about the user to determine appropriate
services to provide to the user though the mobile device and/or through a
location service channel proximate to the user. (Col. 2, ll. 36-65; col. 21, ll.
16-28; col. 21, l. 63 to col. 22, l. 60.) For example, a user searching for a
particular product (brand) visits a store using Fano’s system. The user’s
mobile device conveys information about the user from the user’s profile to
service providers for enhancing the delivery of services. Examples of the
information conveyed include the user’s location, the user’s preferences
such as a preferred brand or specific product, or a “to do list” indicating the
need to purchase certain supplies. A service provider (or multiple service
providers) provides information on the desired product, such as a price and
feature comparison with similar products, to the user on the user’s mobile
device and delivers additional services, for example, displaying the supplies
from the “to do list” on a store kiosk. (Col. 2, ll. 28-50; col. 4, l. 12 to col. 6,
l. 5.) In another example, an interest rate quoting service (a remote service
provider) presents a customer visiting a bank branch (local service provider
at a location having location service channels) with competitive loan interest
rate quotations through the user’s mobile device and/or a kiosk in the bank
branch (location service channel). (Col. 21, l. 40 to col. 22, l. 26.)

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ANALYSIS
The Appellants have elected to argue claims 1, 8, and 15 together as a
group (App. Br. 2, 11, 14; FN 3 & 5). Therefore, we select independent
claim 1 as the representative claim for this group, and we will address
Appellants’ arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii).
See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of anticipation in the
Examiner’s Answer with respect to representative claim 1. (Ans. 3-5, 7-14.)
Therefore, we look to the Appellants’ Briefs to show error in the proffered
reasoned conclusion. Id.
Receiving Enterprise Access Information from the Registry
Appellants contend that: “[t]he ground of rejection is not proper
because Fano does not teach or suggest ‘the agent’s computer system . . . iii)
receiving, from the registry, information for accessing the enterprise,
wherein the registry determines the access information responsive to the
customer location indicator,’ as claimed” (App. Br. 11 (bolding omitted),
quoting claim 1); “Fano simply does not specifically address the same issues
set out in the claims of the present application” (App. Br. 12); and “Fano
particularly does not teach the claimed aspect of agent 120 returning facility
access information 130AC responsive to requester location information
115LN” (App. Br. 12). The Examiner finds that the Fano reference
discloses the disputed feature of the agent receiving, from the registry,
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information for accessing the enterprise that is responsive to the customer’s
location. Specifically, the Examiner finds that Fano discloses: an agent
(aggregation server); a registry (registry database); an enterprise (locations
and their location service channels); determining a customer’s location; and
the registry providing information to the aggregation server concerning a
location and its location service channels, which are proximate to a user’s
location, so that the aggregation server may route services and information
to the location service channel(s) for the user using the location service
channel’s unique IP address. (Ans. 4-5, 7-8.)
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 1. After reviewing the record
on appeal, we agree with the Examiner that the Fano reference discloses the
disputed feature of Appellants’ claim 1. We find Fano discloses an
aggregation server in communication with, and which forwards information
and routes services among, a user’s mobile device, databases, service
providers, and locations and their location service channels. (FF 1-2, 4.)
Fano also discloses determining a customer’s location, and providing
services to a location service channel proximate to the user. (FF 2-5.) Fano
further discloses a registry database. (FF 4.) Fano’s registry provides
information to the aggregation server about a location and its respective
location service channels. The aggregation server then routes services and
information to the appropriate location service channel, proximate to the
user, using the location service channel’s unique IP address. (FF 4.)
Accordingly, we broadly but reasonably construe an aggregation server to be
an agent. We also broadly but reasonably construe the service providers
(local and remote), and the locations and their respective location service
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channels to be enterprises. Thus, we find that Fano discloses an agent
receiving, from the registry, information for accessing the enterprise that is
responsive to the customer’s location.
We find Appellants’ contrary arguments unpersuasive. Appellants
mischaracterize the Examiner’s findings and the Fano reference, and present
arguments that are not commensurate with the scope of Appellants’ claim.
Appellants initially assert that the Examiner has “superficially mapped”
“major elements of claim 1 . . . to the elements in FIG. 13.” (App. Br. 13.)
We find supra, that the Examiner has provided detailed findings with respect
to the Fano reference and its correspondence with the disputed feature.
Appellants also assert that:
While Fano involves communication in a context somewhat
similar to that of the present application, . . . Fano simply does
not specifically address the same issues set out in the claims of
the present application . . . . [and] particularly does not teach the
claimed aspect of agent 120 returning facility access
information 130AC responsive to requester location
information 115LN.
(App. Br. 12.) We note, however, that the disputed feature recites
“receiving, from the registry, information for accessing the enterprise,
wherein the registry determines the access information responsive to the
customer location indicator,” not an agent returning facility access
information responsive to requester location information. The limitation
merely requires that an agent receives information related to accessing the
enterprise, which corresponds (is responsive to) the customer’s location. As
we find supra, Fano’s aggregator (aggregation server), which is an agent,
receives information for accessing location service channels, which are part
of an enterprise, from a registry. The location service channels correspond
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to the user’s location – the aggregator utilizes information in the registry to
determine the appropriate location service channel proximate to a user’s
location and routes information and services to the location service channel.
Thus, Fano discloses the disputed limitation.
Sending an Indication of Services to the Customer
Appellants contend that:
[t]he ground of rejection is not proper because Fano does not
teach or suggest ‘sending, by the computer system of the
enterprise, an indication to the customer of a set of special
needs services available from the enterprise for the customer,
wherein the set of services is determined by the enterprise
database responsive to the customer’s special need information
from the universal database, wherein the customer’s
identification is received by the enterprise’s computer system
from a computer system of an agent,’ as claimed.
(App. Br. 13 (bolding omitted), quoting claim 1.) Specifically, Appellants
assert that Fano describes local service providers providing rules related to
service channel usage, and that the Examiner interprets “providing of service
channel use rules in Fano to providing information 145SV about services in
the present application” (App. Br. 13), and that “[t]his is not the same as
sending information to customer 218.” (App. Br. 13-14). Appellants also
assert that the Examiner misapplies Fano because the Examiner seems to
interpret the reference in a manner not taught by the reference. Particularly,
that Fano describes the “aggregation server 226 as an agent of remote
service providers 220, 222 and 224 . . . . [but] [t]his is not the same as being
an agent of local service providers 206 or 212, nor an agent of the customer
218.” (App. Br. 14.) And, the Examiner misinterprets Fano’s location
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service providers as an enterprise, and Fano’s aggregation server as an agent
of the local service providers. (App. Br. 14-15.)
The Examiner finds that the Fano reference discloses the disputed
feature – specifically, that Fano discloses: an agent (aggregation server); a
universal database (user profile database); enterprises (local servers, remote
servers, local service providers, locations and their location service channels,
and remote service providers); determining services available from an
enterprise based on user information; and sending information concerning
the services to user. (Ans. 3-5, 7-9.)
Based on the record before us, we agree with the Examiner that the
Fano reference discloses the disputed feature, and we find no error in the
Examiner’s anticipation rejection of representative claim 1. We begin our
analysis by construing Appellants’ disputed claim limitation.
We give claim terminology the “broadest reasonable interpretation
consistent with the [S]pecification” in accordance with our mandate that
“claim language should be read in light of the [S]pecification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Appellants
do not provide explicit definitions for any of the claim terminology (supra)
in their Specification. We also note that the recitation of “special needs
services” constitutes non-functional descriptive material. Appellants’
recited “special needs services” correspond to an undefined subset of
possible services available to a customer, but Appellants do not functionally
relate the services to the claim limitations. Merely labelling a service as
“special needs,” as opposed to some other unique identifier, does not further
limit the claimed invention either functionally or structurally. Such non-
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functional descriptive material does not patentably distinguish claims over
the prior art that otherwise renders the claims unpatentable. In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004).
Accordingly, we broadly but reasonably construe the disputed
limitation to mean a computer system of a business or an organization
(enterprise) sending data to the customer that indicates (provides an
indication of) the services available from the enterprise determined to be of
particular interest to a customer, wherein the services are determined to be of
particular interest to a customer by an enterprise utilizing a database (the
enterprise’s database) to be responsive to the customer’s information from
another database (customer information database – the universal database),
which is responsive to the customer’s identification received from an agent.
We also construe (supra) Fano’s aggregation server to be an agent. We
further construe (supra) Fano’s remote service providers, local service
providers, locations and their respective location service channels to be
enterprises – i.e., businesses, organizations, or activities.
We find Fano discloses service providers accessing a user’s profile
and utilizing information in the profile (such as a “to do list”) and a user’s
location to provide context based services to the user. In particular, Fano
discloses that the remote service providers determine the services to be
presented to a user, for example, interest rate quotations, based on
information obtained from accessing information in a user’s profile in a user
database. The remote service providers then send the service information to
the user’s mobile device and/or a location service channel proximate to the
user. (FF 2, 5.) As we explained supra, in one embodiment, Fano discloses
an aggregation server that exchanges information and routes services among,
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a user’s mobile device, a user database containing a user profile, remote
service providers, and location service channels. The aggregation server
manages access to the system components, for example, to the location
service channels and the user database and routes services provided from the
remote service providers to the user’s mobile device and an appropriate
location service channel for the user. (FF 1-2, 4, 5.) Thus, we find that Fano
discloses Appellants’ disputed limitation. Fano explicitly describes a remote
service provider (enterprise) computer system sending indications of
services available from the remote service provider (for example, interest
rate quotations) to customers. The remote service provider determines the
services of particular interest to a customer (in this case the interest rate
quotations) utilizing the customer’s personal information, obtained from a
customer information database, based on the customer’s identification,
which the remote service provider receives from the aggregation server
(agent).
We find Appellants’ contrary arguments unpersuasive. Appellants’
various arguments (App. Br. 13-15) misinterpret the Examiner’s findings
and the Fano reference. The Examiner finds (supra) that Fano discloses a
number of enterprises – local servers, remote servers, local service
providers, locations and their location service channels, and remote service
providers – and that an aggregation server (agent) routes services that are
responsive to a user’s location, identity, and corresponding personal
information to a user’s mobile device and/or a location service channel
proximate to the user. Similarly, we find that Fano discloses at least a
remote service provider determining the services of interest to a customer
using the customer’s information, which it obtains from a database based on
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the customer’s identification which is received from the aggregation server.
Thus, Fano discloses the disputed limitation.
Appellants do not separately argue claims 3-8, 10-15, and 17-24, or
the Examiner’s obviousness rejection. (See supra FN 5, & 6.) Accordingly,
we find the Fano reference anticipates claims 3-6, 8, 10-13, 15, 17-20, and
22-24 for the reasons set forth with respect to representative claim 1. It
follows that Appellants do not persuade us of error in the Examiner’s
anticipation rejection of claims 1, 3-6, 8, 10-13, 15, 17-20, and 22-24. We
also summarily affirm the Examiner’s obviousness rejection of claims 7, 14,
and 21. (See supra FN 5 & 6.) We, therefore, affirm the Examiner’s
rejection of claims 1, 3-8, 10-15, and 17-24.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claim
21 under 35 U.S.C. § 112, second paragraph.
Appellants have not shown that the Examiner erred in rejecting claims
1, 3-6, 8, 10-13, 15, 17-20, and 22-24 under 35 U.S.C. § 102(e).
Appellants have not shown that the Examiner erred in rejecting claims
7, 14, and 21 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claim 21 under 35 U.S.C.
§ 112, second paragraph.
We affirm the Examiner’s rejection of claims 1, 3-6, 8, 10-13, 15, 17-
20, and 22-24 under 35 U.S.C. § 102(e).
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We affirm the Examiner’s rejection of claims 7, 14, and 21 under 35
U.S.C. § 103(a).

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

erc

IBM Austin (Anthony England)
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