Ex Parte Luo et al

Patent Trial and Appeal Board

Jun 13, 2016

12710972 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121710,972 02/23/2010
28289 7590 06/15/2016
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
VickyW.Luo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5188-100401 9761
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
06/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICKY W. LUO, I-JEN CHIANG,
and TE-CHANG HUANG
Appeal2014-007079
Application 12/710,972
Technology Center 2100
Before JAMES R. HUGHES, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decisions rejecting claims 1-20, which are all the claims
pending in the present patent application. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Newegg, Inc. as the real party in interest. App. Br. 4.
Appeal2014-007079
Application 12/710,972
STATEMENT OF THE CASE
The present application relates to providing customer service to
website users. Spec. i-f 2.
Claim 1 is illustrative (disputed limitations emphasized):
1. A system for providing customer service to a
website user, comprising:
(a) a session management subsystem
including a user profile database for downloading a
user-state-monitoring object and a user profile
retrievable from the user profile database from a
website to a client site when a website user loads up
a web page through the website, wherein the user-
state-monitoring object is configured to monitor
and analyze the website user's behavioral patterns
in real time by comparing the website user's actions
to a set of pre-defined business rules; and
(b) a customer service representative
allocation subsystem for receiving a notification
from the user-state-monitoring object, configured to
notify an available customer service representative
associated with the website, and configured to
enable communication between the available
customer service representative and the website
user if the website user's actions match the pre-
defined business rules.
The Rejections
Claims 1, 4, 7, 10, 13, and 16 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Fernandes (US 2003/0167195 Al; Sept. 4, 2003).
Claims 2, 5, 8, 11, 14, and 17 stand rejected under 35 U.S.C. § 103(a)
over Fernandes and Maulsby (US 2008/0273224 Al; Nov. 6, 2008).
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Appeal2014-007079
Application 12/710,972
Claims 3, 6, 9, 12, 15, and 18 stand rejected under 35 U.S.C. § 103(a)
over Fernandes, Maulsby, and McNab (US 7,840,428 B2; Nov. 23, 2010).
Claim 19 stands rejected under 35 U.S.C. § 103(a) over Fernandes and
Najmi (US 2003/0030666 Al; Feb. 13, 2003).
Claim 20 stands rejected under 35 U.S.C. § 103(a) over Fernandes and
Wicks (US 7,152,018 B2; Dec. 19, 2006).
ANALYSIS
Anticipation
Appellants contend, inter alia, the Examiner errs in rejecting claim 1
by relying on different structures as disclosing the claimed user-state-
monitoring object, namely Fernandes' cookie described in paragraph 38 and
Java Applet described in paragraph 42. Compare Ans. 8. to App. Br. 13 and
Reply Br. 4. We find this argument persuasive of Examiner error. A claim is
anticipated only if each and every element as set forth in the claims is found,
either expressly or inherently described in a single prior art reference, and
arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil. Co. of
Cal., 814 F .2d 628, 631 (Fed. Cir. 1987) (emphasis added). Here, the disputed
limitations of claim I-and commensurate limitations in each of independent
claims 7 and 13-make clear that the same object must be downloaded to the
client and perform the claimed monitoring and analysis. The Examiner fails
in the record before us to find such an object. Accordingly, constrained by
the record before us, we do not sustain the Examiner's 35 U.S.C. § 102(b)
rejection of claims 1, 7, and 13, nor their dependent claims 4, 10, and 16.
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Appeal2014-007079
Application 12/710,972
Obviousness
Having not sustained the Examiner's rejection of independent claims
1, 7, and 13, we do not sustain the Examiner's 35 U.S.C. § 103(a) rejections
of 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, and 17-20 for the same reasons discussed
above.
DECISION
We reverse the Examiner's decisions rejecting claims 1-20.
REVERSED
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