Ex Parte Exton et al

Board of Patent Appeals and Interferences

Nov 13, 2008

10273736 (B.P.A.I. Nov. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GLENN ANDREW EXTON, ASHLEY COOK,
DANIEL SLUSAREK, EMMANUEL KARAMINAS,
STEVEN WILLIAM PICKSTONE, STUART MCDONALD,
and JEAN HERMAN EMMANUEL

Appeal 2008-1821
Application 10/273,7361
Technology Center 2100
____________________

Decided: November 13, 2008
____________________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and CAROLYN
D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on October 18, 2002. The real party in interest is Hewlett Packard
Development Co, L.P.
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I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 8. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

Appellants’ Invention
Appellants invented a method and system for customizing the
computing environment of a user computer according to predefined
functional profiles of the user. (Spec. 1.) As depicted in Figure 3, each
stored functional profile of the user includes a layout appearance and at least
an icon associated with an application. Upon selecting a desired user
functional profile in the computing device, a desired application within the
selected profile can be activated. (Id. 8-10).

Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of enhancing the functionality of a computing device, the
method comprising:

(a) defining a plurality of functional profiles for a user in the
computing device, each functional profile having:

(i) a layout appearance; and

(ii) one or more indicators associated with applications;
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(b) storing the functional profiles;

(c) activating one of the functional profiles of the user in the
computing device using either:

(i) a functional profile selector; or

(ii) external triggering communications;

and

(d) activating an application by selecting one of the indicators from
those displayed in the layout appearance for the activated functional profile.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Coiera US 5,949,866 Sep. 7, 1999
Obradovich US 2002/0013815 A1 Jan. 31, 2002
Hartman US 2003/0140120 A1 Jul. 24, 2003
(filed Dec. 1, 2000)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1 through 8 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Coiera.
2. Claims 1 through 3 and 5 through 8 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Obradovich.
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3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Obradovich and Hartman
Appellants’ Contentions
1. Appellants argue that Coiera does not teach the limitations of
(1) defining a plurality of functional profiles for a user in a computing
device, and (2) activating one of the functional profiles in the computing
device, as recited in independent claim 1. (App. Br. 5-7, Reply Br. 4-6.)
Particularly, Appellants argue that Coiera discloses a plurality of functional
profiles, role identifiers, and associated layouts for team specialists
(subscribers). However, Appellants argue that these pre-defined functional
roles and layout appearances are not associated with the user (the nurse).
Therefore, Appellants submit that Coiera does not teach the cited limitations.
(Id.)
2. Appellants argue that Obradovich does not teach the limitations
of (1) defining a plurality of functional profiles for a user in a computing
device, each profile having a layout appearance and an indicator associated
with applications, and (2) activating one of the functional profiles in the
computing device, as recited in independent claim 1. (App. Br. 8-12, Reply
Br. 6-9.) Particularly, Appellants argue that Obradovich discloses defining
on a server a plurality of categories of information for a user, and
subsequently allowing the user to download any of the categories on a
portable computing device (PCD). However, Appellants argue that these
downloaded categories do not have any indicators, and they are not activated
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on the same computer (i.e., the server). Therefore, Appellants submit that
Obradovich does not teach the cited limitations. (Id.)

Examiner’s Findings
1. The Examiner finds that Coiera’s disclosure of defining
functional roles and associated role identifiers for the team members to
allow a nurse using a terminal to quickly summon specialists in a desired
team teaches the claimed limitations. (Ans. 9-10.) Therefore, the Examiner
concludes that Coiera anticipates independent claim 1. (Id.)
2. The Examiner finds that Obradovich’s disclosure of defining on
a server a plurality of functional profiles for a user that are downloaded onto
the user’s PCD upon request teaches the claimed limitations. (Ans. 11.)
Therefore, the Examiner concludes that Obradovich anticipates independent
claim 1. (Id.)

II. Issues
1. The first issue before us is whether Appellants have shown that
the Examiner erred in finding that Coiera’s disclosure teaches defining a
plurality of functional profiles for a user in a computing device, and
activating one of the functional profiles in the computing device, as recited
in independent claim 1. We answer this inquiry in the negative.
2. The second issue before us is whether Appellants have shown
that the Examiner erred in finding that Obradovich’s disclosure teaches
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defining in a computer a user profile having a layout appearance and an
indicator associated with an application, and activating one of the functional
profiles in the same computer, as recited in independent claim 1. We answer
this inquiry in the negative.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Coiera
1. A depicted in Figure 1, Coiera discloses a client-server
communication system for allowing a user (e.g., a nurse) to quickly summon
a predefined category (e.g., cardiac, maternity) for a team in response to a
related emergency. (Col. 3, ll. 1-5.)
2. As shown in Figure 3, Coiera discloses a database (3) in the
server (1) for defining and storing the categories for the team including a
respective identifier (26) for each category. Further, each defined team
category includes a number of specialists (22) performing each a specified
role identified by a role identifier (21). (Col. 5, ll. 29-42.)
3. Coiera discloses that the nurse and each team member carries
with them a terminal (10) to communicate with one another. Upon the nurse
inputting a team category identifier in the terminal, the server retrieves the
record corresponding to the entered team category ID to summon the team
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members listed therein by sending a message to their respective terminals.
(Col. 3, ll. 6-21, col. 5, ll. 49-66.)
4. Alternatively, the nurse can summon any of the specialists
within a pre-defined team category depending upon predefined instructions.
(Col. 6, l. 48- col. 7, l. 17.)

Obradovich
5. As shown in Figures 1 and 2, Obradovich discloses a client-
server system wherein the server is employed to collect and organize
information for mobile device users according to their respective user
profiles. (Abstract.)
6. Upon receiving information for a user profile, the server sends a
message to the personal communication device (PCD) of the user to thereby
notify the user of the received information items. In response, the user may
request to download certain information items from the server. (P. 3, para.
[0041].)
7. As shown in Figure 12, the PCD includes an event manager to
help organize items downloaded from the server in categories selectable
through drop down menus (800). The information categories relate to the
user profile information downloaded from the server. Each category
displayed in the PCD offers further selections in subcategories. (P. 7, para.
[0076].)

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IV. PRINCIPLES OF LAW
ANTICIPATION
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

V. ANALYSIS
35 U.S.C. § 102
1. Coiera
As set forth in the Findings of Fact section, Coiera discloses pre-
defining and storing at a server team different categories (e.g., cardiac,
maternity) that can be summoned by a nurse upon inputting the identifier for
a desired team category in a portable terminal. Particularly, upon the
identifier of the selected team category being input in the nurse’s terminal,
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the server retrieves the layout and team members associated with the
selected category, and downloads them in the terminal for further action.
(FF. 1-3.) Coiera also discloses that the nurse can particularly summon a
specialist from a selected team category upon further selecting a
corresponding identifier or layout pertaining to the specialist. (FF. 4.) We
find that, in the limited case where a team is viewed as the user, Coiera’s
disclosure reasonably teaches the claimed limitations. Particularly, by
defining different categories for the team in the server, Coiera reasonably
teaches defining a plurality of functional profiles (categories) for a user
(team) in a computing device (server). Similarly, by retrieving from the
same server the layout and members associated with a selected category,
Coiera teaches activating one of the functional profiles (categories) of the
user (team) in the same computing device (server). It follows that
Appellants have not shown that the Examiner erred in finding that Coiera
anticipates claim 1.
Appellants did not provide separate arguments with respect to the
rejection of claims 1 through 8. Therefore, we select independent claim 1 as
being representative of the cited claims. Consequently, claims 2 through 8
fall together with representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

2. Obradovich
As set forth in the Findings of Fact section, Obradovich discloses pre-
defining and storing at a server different profile categories (e.g., personal,
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business, vacation) for a user. (FF. 5-6.) Upon the user selecting a profile
category in his/her PCD, the server retrieves the layout and subcategories
associated with the selected category, and downloads them in the user’s
PCD for further action. (FF. 7.) We find that Obradovich’s disclosure
reasonably teaches the claimed limitations. Particularly, by defining in the
server different profile categories for the user, each category being
independently selectable and having subcategories associated therewith,
Obradovich reasonably teaches defining in the computing device a
functional profile having a layout and an associated indicator to permit the
user to independently select a category. We also find that, by retrieving
from the same server the layout and subcategories associated with a selected
profile, Obradovich teaches activating one of the user profiles in the same
computing device (server). It follows that Appellants have not shown that
the Examiner erred in finding that Obradovich anticipates claim 1.
Appellants did not provide separate arguments with respect to the
rejection of claims 1 through 3 and 5 through 8. Therefore, we select
independent claim 1 as being representative of the cited claims.
Consequently, claims 2, 3, and 5 through 8 fall together with representative
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

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35 U.S.C. § 103
Claim 4
Appellants argue that dependent claim 4 recites the limitations of
claim 1, and that Hartman does not remedy the deficiencies of Obradovich,
as argued above. (App. Br. 13, Reply Br. 9.) Therefore, Appellants submit
that the combination of Obradovich and Hartman does not render claim 4
unpatentable. (App. Br. 11-12.) As discussed above, we have found no
such deficiencies in the Obradovich reference for Hartman to cure. It
follows that Appellants have not shown that the Examiner erred in
concluding that the combination of Obradovich and Hartman renders claim 4
unpatentable.

VI. CONCLUSIONS OF LAW
A. Appellants have not shown that the Examiner erred in finding that:
1. Coiera anticipates claims 1 through 8 under 35 U.S.C. § 102(b).
2. Obradovich anticipates claims 1 through 3 and 5 through 8
under 35 U.S.C. § 102(e).
B. Appellants have not shown that the Examiner erred in concluding that
the combination of Obradovich and Hartman renders claim 4 unpatentable
under 35 U.S.C. § 103(a).

VII. DECISION
We affirm the Examiner’s decision rejecting claims 1 through 8.
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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

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