Ex Parte Main

Board of Patent Appeals and Interferences

May 22, 2012

11210991 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/210,991 08/24/2005 Alexander M. Main 67,108-109; Main 1 5197
46368 7590 05/22/2012
CARLSON, GASKEY & OLDS, P.C./Alcatel-Lucent
400 W MAPLE RD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
05/22/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXANDER M. MAIN
____________

Appeal 2010-000927
Application 11/210,991
Technology Center 2100
____________

Before MAHSHID D. SAADAT, KRISTEN L. DROESCH,
and JEFFREY S. SMITH, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000927
Application 11/210,991

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Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a method and system for managing
customer access to online information (see Spec. ¶¶ [0008] – [00010]).
Exemplary Claim
Exemplary independent claim 1 reads as follows:
1. A method of providing online customer support,
comprising the steps of:
(A) providing a database containing a plurality of sets of
information;
(B) automatically establishing a user profile that
includes at least one entitlement to at least a portion of one of
the sets of information responsive to receiving an identification
of a user and based upon one of an explicit indication of the
entitlement or an inferred entitlement; and
(C) determining a probability that the user can have the
entitlement by determining whether the database includes
information sufficient to warrant giving the user the
entitlement.
Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Schlesinger (US 2004/0186809 A1)
and Russo (US 2007/0014443 A1).
The Examiner found that Schlesinger discloses all the recited steps of
claim 1 except for step (C), for which the Examiner relied on Russo (Ans. 3-
Appeal 2010-000927
Application 11/210,991

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4). The Examiner cited various paragraphs of Russo for disclosing
“determining a probability that a user can have the entitlement by
determining whether a storage includes information sufficient to warrant
giving the user the entitlement” (Ans. 4). The Examiner concluded that
modifying Schlesinger with Russo would have been obvious “to determine a
probability that the user can have an entitlement for preventing unauthorized
users from gaining access” (id.).
Appellant’s Contentions
Appellant contends that the Examiner’s rejection of claim 1 is in error
because Russo determines a probability that a fingerprint image data
corresponds to characteristics that reliably identify a finger as real for
granting access (App. Br. 4). Citing paragraph 40 of Schlesinger, Appellant
explains that combining the use of access control of Russo with Schlesinger
would have changed its principle of operation and provided no benefit by
adding another access control based on fingerprint recognition (App. Br. 4-
5).
With respect to the teachings of Russo, Appellant points out that the
determination made in Russo is based on the fingerprint information which
has nothing to do with the database to which access is requested (App. Br. 6-
7). Appellant further asserts that the claims require the database to which
the user desires entitlement to be the same as the database used for
determining the probability that the user can have entitlement (Reply Br. 1).
Therefore, Appellant contends that the information Russo uses to determine
the probability that the fingerprint image relates to a real human finger is not
based on information from the same database to which the user seeks
entitlement (Reply Br. 2).
Appeal 2010-000927
Application 11/210,991

4
Issue on Appeal
Did the Examiner err in rejecting the claims as being obvious because
the combination of Schlesinger and Russo fails to teach or suggest all the
recited features of claim 1?

ANALYSIS
We agree with Appellant’s contention that determining a probability
that the fingerprint image corresponds to a real image in Russo is not based
on the information in the database to which the user seeks entitlement. As
asserted by Appellant (App. Br. 6, Reply Br. 1-2), the cited portion of Russo
in paragraph 32 describes that the fingerprint image data is compared to
stored enrollment data. Therefore, we find that the Examiner’s proposed
modification of Schlesinger with Russo, even if proper and obvious to the
skilled artisan, would not have resulted in the claimed invention.
Claim 1 recites “determining a probability that the user can have the
entitlement by determining whether the database includes information
sufficient to warrant giving the user the entitlement,” which requires the
same database be used for the steps of determining a probability and
establishing a user profile for accessing the information in the database.
Therefore, Appellant has shown error in the Examiner’s position with
respect to the rejection of independent claim 1, of independent claim 14
which recites similar limitations, and of claims 2-13 and 15-20 dependent
thereon.

Appeal 2010-000927
Application 11/210,991

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DECISION
The Examiner’s decision to reject claims 1-20 is reversed.

REVERSED

msc