Ex Parte Iino et al

Board of Patent Appeals and Interferences

Jul 29, 2010

10653094 (B.P.A.I. Jul. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte YOKO IINO and MASAYUKI TAKAHASHI
_____________

Appeal 2009-011680
Application 10/653,094
Technology Center 2400
______________

Before ROBERT E. NAPPI, JOHN C. MARTIN, and MARC S. HOFF,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 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
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-10, which are all of the pending claims.
Oral argument was heard on May 11, 2010.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

A. Appellants’ invention
Appellants’ invention relates to an information providing system, such
as an Instant Messaging (IM) system, and more particularly to an
information providing system that permits a large amount of personal
information to be safely provided. Specification [0002], [0017], [0025].2
Figure 2 is reproduced below.

2 Because the Application as filed does not contain line or paragraph
numbers, references herein to the Specification are to paragraph numbers in
corresponding Patent Application Publication 2004/0117228 A1.
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Figure 2 is a block diagram showing the configuration of an IM
system in accordance with the invention (id. at [0026]). Terminals 15a to
15n are used to exchange information through the network 14 (id. at [0055]).
The IM server 12 updates buddy lists, which are stored in the information
storage device 11, in accordance with messages of “approach,”
“acceptance,” and “refusal” transmitted by terminals 15a to 15n (id.). The
registration Web server 13 allows the information storage device 11 to store,
in advance, personal information of the users of terminals 15a to 15n in
accordance with commands of the users (id.). Delivery of personal data to a
requester is controlled by personal information controller 22 in IM server 12
(id. at [0059]).
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Figure 4 is reproduced below.

Figure 4 illustrates an operation for establishing an exchange
relationship between the terminals shown in Figure 2 (id. at [0028]). When
the user of terminal 15a wants to establish an exchange relationship with the
user of terminal 15b, terminal 15a transmits (step S1) an “approach” (i.e., a
request for approval of an exchange relationship) to buddy controller 21 in
IM server 12 (id. at [0066]). Buddy controller 21 receives the “approach”
(step S21) and then (step S22) transmits the “approach” to the terminal 15b,
where is it received (step S41) (id.). The buddy controller (step S23)
updates the buddy list 60 for terminal 15a in the buddy list holder 41 and
(step S2) sends a notification of the update to terminal 15a (id. at [0067]).
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If terminal 15b accepts the “approach,” it notifies terminal 15a via
server 12 of the acceptance (steps S42, S24, S25, and S3) (id. at [0069]).3
The buddy controller (step S26) updates the buddy list 60 for terminal 15a
and (step S4) sends a notification of the update to terminal 15a (id. at
[0070]). The buddy controller (step S27) also updates the buddy list 60 of
the terminal 15b that is held in the buddy list holder 41 and (step S43) sends
a notification of the update to terminal 15b (id.).
After terminal 15b has “accepted” the “approach” from terminal 15a,
terminal 15b transmits a request to “approach” terminal 15a to the buddy
controller 21 (steps S44, S28) (id. at [0073]), which relays the “approach” to
terminal 15a (steps S29, S5). Acceptance of the “approach” by terminal 15a
begins in step S6 (id. at [0076]) and includes steps S31, S32, and S46 (id.).
The above steps result in establishment of an exchange relationship
(id. at [0080]). When a requested exchange relationship is not established
(i.e., when terminal 15a or terminal 15b does not accept the “approach”), the
buddy list 60 is updated so as to indicate that an exchange relationship has
not been established (id.).
The manner in which the displayed information is determined will
now be addressed. Figure 13 is reproduced below.

3 Alternatively, terminal 15b may respond by refusing the “approach” (id. at
[0081]).
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Figure 13 is a flowchart of the process of transmitting personal
information by the personal information controller shown in Figure 2 (id. at
[0037]). If it is determined (step S56) that the IDs of the requesting and
requested terminals are the same (i.e., the user of the requesting terminal
wants to obtain his/her own personal information), personal information
controller 22 sets the disclosure level to “PRIVATE,” which permits
browsing of all of the personal information (id. at [0090]) and thus is the
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highest disclosure level. If the IDs do not match, the disclosure level is
determined in step S58, represented by Figure 14, reproduced below.

Figure 14 is a flowchart of the process represented by S58 in Figure
13 (id. at [0038]). In step S81, personal information controller 22 initially
sets the disclosure level of the requesting terminal to “PUBLIC” (id. at
[0092]), which is the lowest disclosure level. If it is determined (step S84)
that an exchange relationship already exists between the requesting terminal
and the requested terminal, or if it is determined that the requested terminal
is currently “approaching” the requesting terminal (step S85), personal
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information controller 22 (step S86) sets the disclosure level of the
requesting terminal to “ROSTER” (id. at [0096]), which is an intermediate
disclosure level between “PUBLIC” and “PRIVATE.” If neither of these
two conditions exists, the disclosure level remains at “PUBLIC” (id. at
[0097]).

B. The claims
The independent claims before us are claims 1 and 5-7. Claim 1,
which is representative, reads as follows, with the principal limitation at
issue being reproduced with italics:
1. An information providing apparatus for providing
information of a registered first user to a second user, the
apparatus comprising:
receiving means for receiving a request for obtaining the
information of the first user, the request being transmitted from
an information processor of the second user;
storage means for storing relationship information which
defines a relationship between the first user and the second
user;
setting means for setting a disclosure level as an access
level to the information of the first user of the second user, who
has transmitted the request received by the receiving means, to
any of a first level for permitting access to all items of the
information, a second level for permitting access to fewer items
of the information than in the first level, and a third level for
permitting access to fewer items of the information than in the
second level, based on the relationship information stored in the
storage means, said setting means setting the disclosure level to
the second level when the first user sends a request for
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establishment of a predefined specific relationship to the
second user;
selecting means for selecting items to be disclosed to the
second user from the information of the registered first user
based on the disclosure level of the second user set by the
setting means; and
transmitting means for transmitting the items selected by
the selecting means to the information processor of the second
user.
Claims App. (Br. VIII-i).

C. The references
The Examiner relies on the following references:
Douvikas et al. (“Douvikas”) US 6,889,213 B1 May 3, 2005
Shoemaker et al. (“Shoemaker ‘767”) US 2005/0182767 A1 Aug. 18, 2005
Shoemaker ‘767 corresponds to Application 10/651,733, which was
filed on August 29, 2003, and claims the benefit of Shoemaker et al. U.S.
Application 60/407,553, filed August 30, 2002 (hereinafter “Provisional
Application”).

D. The rejection
In the non-final Office action mailed October 10, 2007 (at page 2), the
Examiner rejected claims 1-10 under 35 U.S.C. § 103(a) for obviousness
over Douvikas in view of Shoemaker ‘767. Appellants responded with a
January 25, 2008, Request for Reconsideration accompanied by papers
seeking to perfect Appellants’ claim to priority based on Japan Application
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No. 2002-259639, filed September 5, 2002, which predates the August 29,
2003, filing date of Shoemaker ‘767. The Examiner has not challenged this
priority claim and now relies on the Provisional Application as support for
the rejection. See, e.g., Final Action 3, para. 4. We therefore understand the
rejection to be based on Shoemaker ‘767 to the extent the subject matter
relied on by the Examiner has written description support in the Provisional
Application, as provided in MPEP § 2136.03 (III) (8th ed., rev. 7, July
2008).

THE ISSUE
The issue raised by Appellants’ arguments4 is whether the Examiner
erred in finding that Shoemaker’s Provisional Application discloses that “the
first user sends a request for establishment of a predefined specific
relationship to the second user,” as recited in claim 1.

ANALYSIS
Douvikas’s invention is an electronic business card (EBC) access and
organization system that operates from a Web-based computer system

4 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“If an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”). Designated
as precedential at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/index.jsp.

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having a database and software for managing access, data privacy, and
dynamic updates. Douvikas, col. 2, ll. 19-23.
Douvikas’s Figure 7A is reproduced below.

Figure 7A is a screen shot of an embodiment of a “New User” data
entry display (id. at col. 3, ll. 22-23). In this embodiment, three privacy
levels are possible: Private, denoted by the locked padlock icon 722; Semi-
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Private, denoted by the partially-locked icon 724; and Public, denoted by the
open lock icon 726 (id. at col. 6, ll. 14-19). The three levels provide the
different levels of access:
Level 1—Public. Information at this level will be displayed
to anyone who looks up your card. This could be anyone viewing
cards from the World Wide Web, whether you know them or not.
Level 2—Semi-Private. Information at this level will [be]
displayed only to other ecardfile Members who are in your
personal ecardfile and who have been designated to receive your
semi-private information.
Level 3—Private. Information at this level will [be]
displayed only to other ecardfile Members who are in your
personal ecardfile and who have been designated to receive your
private information.
Id. at col. 9, ll. 26-36.
The Examiner reads the claimed “first level for permitting access to
all items of the information” on Level 3 (Private), reads the claimed “second
level for permitting access to fewer items of the information than in the first
level” on Level 2 (Semi-Private), and reads the claimed “third level for
permitting access to fewer items of the information than in the second level”
on Level 1 (Public). Final Action 3, para. 3.
The Examiner (id. at 3, para. 4) finds that Douvikas does not
“disclose[] expressly” a first user sending a request for establishment of a
predefined specific relationship to a second user, as required by claim 1,
which recites “setting means setting the disclosure level to the second level
when the first user sends a request for establishment of a predefined specific
relationship to the second user.”
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In order to remedy these deficiencies in Douvikas, the Examiner in the
Final Action relies on Figures 6C and 6D of Shoemaker ‘7675 and on page 8,
lines 30-35 of the Provisional Application. See Final Action 3, para. 4
(“Shoemaker teaches sending of requests to change the access level of the
contact (see figure[s] 6C and 6D, and mutual request for reciprocal access to
each other’s data on page 8 line[s] 30-35 in the Provisional).” (emphasis
omitted)). These cited lines (reproduced infra) are part of the description of
Figure 7 of the Provisional Application that runs from page 8, line 23, to
page 9, line 4. At page 2 of the August 20, 2008, Advisory Action, and page
6 of the Answer, the Examiner specifically relies on requests 72 and 78 in
Figure 7.
Figures 6C and 6D of Shoemaker ‘767 are reproduced below.

5 These figures do not appear in the Provisional Application.
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Figures 6C and 6D are alternative embodiments of two authorization
request screens (Shoemaker ‘767 [0025], [0026]). Appellants (Br. 5) dispute
the Examiner’s above-quoted apparent finding that these authorization
requests have written description support in page 8, lines 30-35, of the
Provisional Application. The Examiner apparently agrees with Appellants,
as evidenced by the absence of any mention of Figure 6C or 6D in the
“Response to Argument” portion of the Answer (Answer 5-6).
Before addressing the Examiner’s reliance on requests 72 and 78 in
Figure 7 of the Provisional Application, we note that the Provisional
Application discloses a User assigning a particular privacy (i.e., access) level
(e.g., low, medium, or high) to each field of the User’s data (Provisional
Application 5:13-23) and also assigning a particular clearance level (e.g.,
low, medium, or high) to each Contact on the User’s Contact List (id. at
4:14-24). The clearance level is initially set when the User adds the Contact
to the Contact List (id. at 4:16) but can be changed later (id. at 7:11-12).
Figure 7 is reproduced below:
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Figure 7 is described in relevant part in the Provisional Application as
follows:
Figure 7 is a simplified flow chart illustrating an
embodiment that includes a plurality of Users utilizing the present
invention. . . . In this example, User 1 inputs User 1’s personal
data to the Database at step 64. User 1 also adds User 2 to User
1’s Contact List at step 66. In this embodiment, no information
can be exchanged between User 1 and User 2 at this point.
At step 68, User 2 inputs User 2’s personal data into the
system. Further, User 2 adds User 1 to User 2’s Contact List at
step 70. At this point in time, User 1 and User 2 have reciprocal
access to each other’s personal data. Once User 1 requests User
2’s personal data at step 72, the personal data will be retrieved
from the Database at step 74 and will be displayed to User 1 at
step 76. Somewhat similarly, once User 2 requests User 1’s data
at step 78, User 1’s personal data will be retrieved from the
Database at step 80 and displayed to User 2 at step 82. The extent
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of the data received by each User can vary depending upon the
clearance levels and the privacy level settings of each User.
Id. at 8:23–9:4.
The Examiner finds that the claim language “first user send[ing] a
request for establishment of a predefined specific relationship to the second
user” is broad enough to read on a request 72 sent by User 1, to the
Database, to receive data of User 2 from the Database:
Shoemaker’s provisional application discloses the action of User 1
to request User 2’s personal data at step 72 (see Shoemaker
provisional on page 8 line[s] 30-35). Shoemaker also discloses
the extent of the data received by each User [is] dependent on the
clearance level or the predefined relationship of each user (see
Provisional Application on page 9 line[s] 1-5 [sic; 1-4]. The act
of requesting user data between User 1 and User 2 generates a
request for establishing a predefined specific relationship as
disclosed by Shoemaker.
(Answer 6 (emphasis added)). We understand the Examiner’s position to be
that the claim phrase “to the second user” can reasonably be construed as
modifying the recited “predefined specific relationship” (i.e., to be part of
the phrase “predefined specific relationship to the second user”) rather than
as a requirement that the recited “request for establishment of a predefined
specific relationship” be sent from the first user to the second user. Using
this interpretation, the Examiner then apparently reads the “predefined
specific relationship to the second user” on the clearance level that User 2
has assigned to User 1. The Reply Brief does not address, let alone point out
any error in, this claim interpretation by the Examiner. Rather, Appellants
apparently assume, without explanation, that the phrase “to the second user”
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must identify the destination of the request. See Reply Br. 1 (“Figure 7 and
the related description clearly show that both steps 72 and 78 are sent by
each user to the contact information database only, not to each other.
Neither Figure 7 nor the written description in U.S. Provisional Application
No. 60/407,553 describe[s] that any message is sent between the two
users.”).
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s finding that Shoemaker’s Provisional Application
discloses that “the first user sends a request for establishment of a predefined
specific relationship to the second user,” as recited in claim 1.
Although Appellants additionally argue that “it is respectfully
submitted that Shoemaker does not teach or suggest ‘setting means setting
the disclosure level to the second level when the first user sends a request for
establishment of a predefined specific relationship to the second user’” (id.
at 2 (emphasis omitted)), this recited means is not separately argued. That
is, Appellants do not argue that the references fail to disclose or suggest this
claimed means even assuming the Examiner’s above-discussed claim
interpretation is correct.
For the above reasons, the rejection of claim 1 is affirmed. For the
same reasons, we are affirming the rejection of independent claims 5-7,
which employ language similar to that addressed above and regarding which
Appellants repeat their claim 1 arguments. We are also affirming the
rejection of dependent claims 2-4 and 8-10, which are not separately argued.
In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
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DECISION
The rejection of claims 1-10 under 35 U.S.C. § 103(a) for obviousness
over Douvikas in view of Shoemaker is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(v) (2009).

AFFIRMED

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