Ex Parte Giljum et al

Board of Patent Appeals and Interferences

Mar 7, 2008

09540977 (B.P.A.I. Mar. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT GILJUM, JOHN THORPE, JEANNE KRAMER,
NILAY BANKER, and VANDANA DEEP
__________

Appeal 2007-3359
Application 09/540,977
Technology Center 2100
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Decided: March 7, 2008
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Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 21-32. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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THE INVENTION
The disclosed invention relates generally to the field of web sites, and
more particularly toward designing, creating, and maintaining web sites
(Spec. 1). In accordance with one embodiment of Appellants’ invention,
a web site system permits a site administrator to construct the
overall structure, design and style of the web site. Appellants’ web site
system permits content for the web site to originate from multiple content
contributors. Control of the content is distributed among folder
owners. Thus, Appellants’ system permits assignment of content control to
those persons who are familiar with the content. The content or folder
owners maintain control over the web site users that view the web site
content (Spec. 3).
Independent claim 21 is illustrative:
21. A machine-implemented method of managing content at
a web site, the method comprising:

receiving a first request from a user to create a particular
content item in a particular folder associated with the web site;

in response to the first request, inspecting permission
data to determine that said user has create-with-approval
privileges relative to said particular folder;

in response to determining that said user has create-with-
approval privileges relative to said particular folder, adding said
particular content item to said particular folder in a not-
publicly-visible state;

in response to receiving input that grants approval for the
particular item to be created in the particular folder, changing
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the state of the particular content item to a publicly-visible
state;

receiving a second request;

in response to the second request, determining a current
state of the particular content item;

if the current state of the particular content item is the
publicly-visible state, then responding to the second request by
providing a web page that includes said particular content item;
and

if the current state of the particular content item is in the
not-publicly-visible state, then responding to the second request
by providing a web page that does not include said particular
content item.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejection:
Salas US 6,233,600 B1 May 15, 2001
(filed Jul. 15, 1997)
Goedken US 2002/0133494 A1 Sep. 19, 2002
(filed Apr. 8, 1999)

THE REJECTION
Claims 21-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Salas in view of Goedken.

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PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007).
ISSUE(S)
We decide the question of whether Appellants have shown the
Examiner erred in holding that the combination of Salas and Goedken
renders obvious the claimed subject matter. More particularly, we have
determined that the following issue is dispositive in this appeal:
Whether Appellants have shown the Examiner erred in finding that
the combination of Salas and Goedken teaches and/or suggests the following
limitations:
in response to determining that said user has create-with-
approval privileges relative to said particular folder, adding said
particular content item to said particular folder in a not-
publicly-visible state;
(see Independent claims 1, 27).

Independent Claims 21 and 27
We consider the Examiner’s rejection of independent claims 21 and
27 as being unpatentable over Salas in view of Goedken.
Although Appellants have argued additional limitations in the Brief,
we conclude that we need only reach the single issue set forth above to
decide this appeal.

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ANALYSIS
Claim Construction
We begin our analysis by construing the scope of the claimed “create-
with-approval privileges.” (See independent claims 1 and 27). Absent an
express intent to impart a novel meaning to a claim term, the words take on
the ordinary and customary meanings attributed to them by those of ordinary
skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d
1294, 1298 (Fed. Cir. 2003). The presumption will be overcome where the
patentee, acting as his own lexicographer, has set forth a definition for the
term different from its ordinary and customary meaning or where the
patentee has disavowed or disclaimed scope of coverage, by using words or
expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope. Brookhill-Wilk, 334 F.3d at 1299. Our reviewing
court has determined that “the specification is ‘the single best guide to the
meaning of a disputed term,’ and that the specification ‘acts as a dictionary
when it expressly defines terms used in the claims or when it defines terms
by implication.” Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir.
2005) (en banc) (internal citation omitted).
From the record before us, it is our view that the claimed “create-
with-approval privileges” has no established ordinary and customary
meaning in the art. We note that it is the Appellants’ burden to precisely
define the invention, not the PTO’s. See In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997). Although a patent applicant is entitled to be his or her own
lexicographer of patent claim terms, in ex parte prosecution it must be
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant
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must do so by placing such definitions in the Specification with sufficient
clarity to provide a person of ordinary skill in the art with clear and precise
notice of the meaning that is to be construed. See also In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994).
Here, we find Appellants have provided a definition in the
Specification for the claimed “create-with-approval privileges” that has
sufficient clarity to provide a person of ordinary skill in the art with clear
and precise notice of the meaning that is to be construed, as follows:
a “create with approval” privilege permits an end-user to add
new items to the folder. Items that are added using the "create
with approval" privilege must be approved by the folder
owner before displayed publicly.
(Spec. 43, ll. 6-9).

Appellants also disclose an example that illustrates how a create-with-
approval privilege is used, as follows:
An individual with “create with approval” privileges may only
add items to the folder. Under this scenario, the item does not
become visible to other users until the folder owner approves
the item. This feature enables the folder owner to maintain
control of the folder's content.
(Spec. 44, ll. 6-10).
In the record, the Examiner acknowledges that “Salas does not
explicitly disclose owner approval or selective visibility or the create-with-
approval privilege.” (Ans. 3). The Examiner looks to the secondary
Goedken reference for these limitations that are not taught by the primary
Salas reference. The Examiner finds that Goedken teaches “a database
system where additions (messages) to the system are not visible until
approved by an administrator (para 74).” (Ans. 3).
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We conclude that the language of the claims requires more than
merely making additions visible after approval by an administrator. In
particular, we conclude that the language of each instant independent claim
allows a user to unilaterally make content additions in a not-publicly-visible
state according to a preexisting user privilege, and not according to case-by-
case review and approval by an administrator, as taught by Goedken.
We reproduce paragraph [0074] of Goedken below:
[0074] In some applications it may be desirable to place
controls on who can change the category/custodian database
104. Specifically, in a perfect world, all possible transmitters of
status change messages and/or category change messages
would have pure and good intentions. However, in the world as
it presently exists, there are vandals and other persons of ill
intentions who might try to interfere with the operation of the
apparatus 10 by disrupting the database 104. To avoid such
efforts, it might be desirable to adapt the category manager 106
to only accept status change messages and/or category change
messages that have been screened. In such circumstances, the
category manager 106 would reroute any unscreened status
change and/or category change messages (possibly identified,
for example, by a failure to include a predetermined digital
signature) to an administrator for examination and approval or
disapproval [emphasis added].

After considering the evidence before us, we agree with Appellants
that Goedken fails to remedy the deficiencies of Salas. We note that
Goedken’s paragraph [0074] teaches an embodiment where category
manager 106 reroutes unscreened status change and/or category change
messages to an administrator for examination and approval or disapproval.
Paragraph [0072] of Goedken further teaches that “[t]he category manager
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106 is responsive to status change messages and category change messages
to update the category/custodian database 104.” (See also Goedken, Fig. 9).
Thus, Goedken teaches that category manager 106 updates records in
database 104 after database change messages have been screened and
approved by an administrator (see Goedken ¶¶[0072], [0074]).
We note that the language of each instant independent claim expressly
requires a determination as to whether a user “has create-with-approval
privileges relative to said particular folder.” In contrast, Goedken does not
teach any preexisting user privilege relative to a folder (¶¶[0072], [0074]).
In Goedken’s system the category/custodian database 104 (Fig. 9) is not
updated to reflect any unscreened status change and/or category change
message (i.e., added content) until after an administrator examines and
approves the change (¶[0074]). As taught by Goedken, the changes to
database 104 (Fig. 9) are only implemented and made publicly visible after
the administrator approves the changes (id.).
Because there is no provision in Goedken to allow a user to make
not-publicly-visible changes (i.e., content additions) to database 104 (with or
without administrator approval), we find that Goedken does not fairly teach
nor suggest the language of each instant independent claim that expressly
allows the user to add a particular content item to a particular folder in a not-
publicly-visible state, so long as the user possesses “create-with-approval
privileges” (see claims 21 and 27). Therefore, we agree with Appellants that
the Examiner’s proffered combination of Salas and Goedken does not teach
nor fairly suggest at least the following limitations of each instant
independent claim:
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in response to determining that said user has create-with-
approval privileges relative to said particular folder, adding said
particular content item to said particular folder in a not-
publicly-visible state;
(see Independent claims 1, 27).

Because Appellants have met their burden of showing error in the
Examiner’s prima facie case of obviousness, we reverse the Examiner’s
rejection of independent claims 21 and 27 as being unpatentable over Salas
in view of Goedken. Likewise, we reverse the Examiner’s rejection of
dependent claims 22-26 and 28-32 which depend from independent claims
21 and 27, respectively.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude
Appellants have met their burden of showing that the Examiner erred in
rejecting claims 21-32 under 35 U.S.C. § 103(a) for obviousness.

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DECISION
We reverse the Examiner’s decision rejecting claims 21-32.

REVERSED

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