Ex Parte Kaye et al

Board of Patent Appeals and Interferences

Dec 16, 2009

10622332 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEVEN M. KAYE and MATTHEW L. PHILLIPS
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Appeal 2009-004164
Application 10/622,332
Technology Center 2100
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Decided: December 17, 2009
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Before JAMES D. THOMAS, JAY P. LUCAS, and JOHN A. JEFFERY,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12 and 14-20, Appellants having canceled claim 13.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2009-004164
Application 10/622,332

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Invention
[A] call for help is received at a remote service
bureau; a user profile is checked to find out things like user
disabilities; an equipment profile of the user is checked to
determine what different types and models of paper processing
equipment the user has; and then interactive assistance is
provided to the user from the remote service bureau such that
the interactive assistance is based at least partly upon the user
profile and the equipment profile.
(Abstract, ll. 3-9; Spec. 14; Figs. 1, 2.)

Representative Claim
1. A method of helping a person to use or prepare to use a paper processing
machine, comprising the steps of:
receiving a call for help from the person to a remote service bureau;
checking a user profile of the person;
checking an equipment profile of the person; and
receiving a video uplink from the person's location;
providing interactive assistance from the remote service bureau to the
person, in response to the call, and seeing a visual image from the person's
location, wherein the interactive assistance is based at least partly upon the
user profile, the visual image and the equipment profile.

Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
anticipation and unpatentability:
Matthews 2004/0139156 A1 Jul. 15, 2004
(effective filing date Dec. 21, 2002)
Boies 2002/0194011 A1 Dec. 19, 2002
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Claims 1, 3-7, 9, 11, 14-17 and 19 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Matthews. The Examiner relies upon this
reference in combination with Boies under 35 U.S.C. § 103 to reject
dependent claims 2, 8, 10, 12, 18, and 20.1
Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we consider
independent claim 1 as representative of the subject matter of independent
claims 1 and 11 on appeal. Additionally, no arguments were presented to us
as to any dependent claim within the first stated rejection under the 35
U.S.C. § 102. As to the rejection of various dependent claims under 35
U.S.C. § 103, Appellants consider the dependent claim 2 as representative of
the subject matter of dependent claims 2 and 12. No other claims were
argued in this rejection.

ISSUE
Have Appellants shown that the Examiner erred in finding that the
subject matter of representative independent claim 1 on appeal is anticipated
by Matthews?
FINDINGS OF FACT (“FF”)
1. The method of providing direct technical support over networks in
Matthews relates to direct, person to person assistance over a
communications network such as to provide interactive assistance to a
user in need. Figures 1 and 2 depict the generalized help center 40

1 As indicated earlier in this opinion, dependent claim 13 has been canceled.
Page 3 of the Answer clarifies the record as to this claim. The Examiner and
we note that dependent claims 14 and 20 presently depend from canceled
claim 13.
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corresponding to the remote service bureau of the claims on appeal.
Figures 3-18 generally illustrate user/help center dialogues relating to
user/equipment profiles to be determined. The Examiner generally
relies on the Summary of the Invention beginning at paragraph 16 for
details of the rejection. User profiles associated with equipment
profiles are generally taught in paragraphs 28-30. In addition to the
teaching in paragraph 30 that the dialogues and interactive connection
may include two video links, additional teachings of this feature are
found in paragraphs 65, 98, 113 and 123. Paragraphs 190-193 relate
to product profiles in addition to user profiles at paragraphs 194-201.
Figure 30 of Matthews illustrates the method 950 of this interactive
assistant which relates a user’s profile to equipment profiles to the
nature of interactive assistance given to the requesting users.
2. As revealed in the title of Boies, the “limitations” of a user are
determined upon selecting a format for presentation of content to this
user. As the Answer has made clear, paragraphs 10 and 66
specifically teach that the customized assistance provided to a user is
associated with the user’s profile, such as to include user disabilities
as a specific type of a broadly defined “limitation” of a user. Figure 3
illustrates an information retrieval device utilizing audio/visual
adaptor techniques and Figures 4 and 6 relate to user profiles in
element 460 in Figure 4 used in selecting information content based
upon the “limitations” of the user.

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PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification 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). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer as to the stated rejections and responsive
arguments presented in the Brief with respect to each argued claim on
appeal. Our discussions will be limited to the following points of emphasis.
Within the first stated rejection of representative independent claim 1
on appeal, page 11 of the Brief recognize that Matthews in part is concerned
with the language of the user. This recognition follows the recitation of
numerous paragraphs from Matthews in earlier pages of the Brief. The Brief
asserts that the language does not concern itself with physical disabilities of
the user. This argument is applied to independent claim 1 on appeal, yet
there is no recitation of user disabilities, let alone a physical disability of a
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user, in representative independent claim 1 on appeal. In this claim there is
only a recitation of a corresponding user profile, which Appellants also
recognize is taught in Matthews anyway.
It should be emphasized here as well that even dependent claim 2,
separately discussed later in this opinion because it is rejected under 35
U.S.C. § 103, does not even recite physical disabilities of a user to the extent
argued at page 11 of the Brief. All that is recited is the feature of a “user
disability” as a part of the user profile. Even the language of a user may be
considered a user disability from the perspective of one of ordinary skill in
the art. Moreover, even as that applies to claim 1 on appeal, Appellants’
recognition at page 11 of the Brief that their own Speciation in paragraph
[009] teaches a so-called “empty user profile” in which the user has no
relevant disabilities, clearly buttresses the Examiner’s conclusion that the
subject matter of representative independent claim 1 on appeal is anticipated
by Matthews.
We have noted in FF 1 the pertinent detailed teachings in Matthews
that we have found in part in addition to those relied upon by the Examiner
that directly address the features of representative independent claim 1
argued not to be present in Matthews. The Examiner’s responsive remarks
beginning at page 12 of the Answer directly address each of the perceived
arguments from the principal Brief. We have also noted in FF 1 particular
teachings related to the argued absence of teachings in Matthews that there
is no corresponding video uplink to the extent recited in the independent
claim 1 on appeal in Matthews. In fact, we noted numerous instances where
this feature is clearly taught to one of ordinary skill of art.
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As to the rejection of representative dependent claim 2 under 35
U.S.C. § 103, the generalized and specific teachings of user profiles in
Matthews have been further embellished by the teachings of Boies to
buttress the Examiner’s reasoning. Appellants assert at page 14 of the Brief
that Matthews and Bois in combination do not teach the entire subject matter
of representative dependent claim 2. With this view, we strongly disagree.
Initially, Appellants did not argue that Matthews and Bois are not
properly combinable within 35 U.S.C. § 103, and only generally assert that
the features of representative dependent claim 2 are not met by the
combination. There is no further explanation as to why Appellants make
such assertion.
On the other hand, the Examiner’s positions in the Answer,
particularly in the responsive argument’s portion beginning at page 18,
directly address and expand upon the Examiner’s combinability reasoning of
the relied on teachings of the two references.
Our FF 2 indicates significant teachings that the characterization of
user profiles having information related to the “limitations” of an individual
user also includes characterizations of the users having disabilities.
Lastly, we note that no Reply Brief has been filed to contest any of the
Examiner’s responsive arguments in the Answer.

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CONCLUSIONS and DECISION
Appellants have not shown that Examiner erred in finding that
Matthews anticipates that subject matter of representative independent claim
1 on appeal. Additionally, Appellants have not shown that the Examiner
erred in concluding that the combination of Matthews and Bois teaches the
subject matter of representative dependent claim 2 on appeal.
Therefore, we affirm the Examiner’s rejection of various claims under
35 U.S.C. § 102 as well as the separately stated rejection of other claims on
appeal rejected under 35 U.S.C. § 103. All claims on appeal claims are
unpatentable.
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

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