Ex Parte McCall

Board of Patent Appeals and Interferences

Aug 8, 2008

09923202 (B.P.A.I. Aug. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN E. McCALL
____________

Appeal 2007-1912
Application 09/923,202
Technology Center 3600
____________

Decided: August 8, 2008
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John E. McCall (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-13, 43-55, and 80-97. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM. 1
THE INVENTION
The invention relates to a network for communicating advisory
information, in a plurality of data types, from a server to field service
providers (e.g., field service technicians) having network devices. The
claimed invention is characterized by the use of a “provider identification
code” associated with a specific field service provider that authorizes the
field service provider to access a specific data type of advisory information.
When a field service provider sends a request for advisory information, the
request is sent with a “provider identification code.” If the server receives a
“provider identification code” that authorizes the specific field service
provider to access advisory information, the field service provider is given
access to advisory information in the specific data type that the “provider
identification code” authorizes the requesting field service provider to
access. That specific data type of advisory information is then presented to
the field service provider through the network device.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. In a computer network having a
server computer communicating with field service
providers through network devices, a method in
the server computer for providing advisory
information to the field service providers, the

1 Our decision will make reference to the Appellant’s Appeal Brief (“ Br.,”
filed Jan. 13, 2006) and the Examiner’s Answer (“Answer,” mailed Mar. 27,
2006).
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method comprising:
receiving a plurality of collected data related
to a destination facility, each of the plurality of
collected data being associated with one of a
plurality of data types;
generating data conclusions based on an
analysis between each of the plurality of collected
data and an advisory rule corresponding to the data
type of the collected data being analyzed;
mapping the data conclusions to advisory
information;
storing the advisory information in a storage
module for subsequent access by the field service
providers, wherein the storage module comprises a
plurality of data type records, the advisory
information being categorized in the plurality of
data type records based on the data type of the
collected data from which the advisory information
is derived;
receiving a request from a specific field
service provider for presentation of advisory
information, the request comprising a provider
identification code associated with the specific
field service provider and representative of a
specific data type of advisory information that the
specific field service provider is authorized to
access;
in response to receipt of the request,
retrieving advisory information from a specific
data type record of the storage module based on
the provider identification code; and
presenting the retrieved advisory
information to the specific field service provider
through the network device.

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Application 09/923,202

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Koropitzer
Wakefield
Durston
Garber
Ziegra
US 5,694,323
US 5,961,561
US 4,707,848
US 4,905,163
US 5,619,183
Dec. 2, 1997
Oct. 5, 1999
Nov. 17, 1987
Feb. 27, 1990
Apr. 8, 1997

The following rejections are before us for review:
1. Claims 1-2, 6, 8-13, 43-44, 48, 50-55, and 80-97 are rejected under 35
U.S.C. §103(a) as being unpatentable over Koropitzer and Garber.

2. Claims 3, 45, and 47 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Koropitzer, Garber, and Wakefield.

3. Claims 4 and 46 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Koropitzer, Garber, Wakefield, and Durston.

4. Claims 5 and 49 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Koropitzer, Garber, Wakefield, Durston, and
Ziegra.

5. Claims 7 and 45 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Koropitzer, Garber, and Ziegra.

ISSUES
The issues before us are whether the Appellant has shown that the
Examiner erred in rejecting claims 1-2, 6, 8-13, 43-44, 48, 50-55, and 80-97
as unpatentable over Koropitzer and Garber; claims 3, 45, and 47 as
unpatentable over Koropitzer, Garber, and Wakefield; claims 4 and 46 as
unpatentable over Koropitzer, Garber, Wakefield, and Durston; claims 5 and
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49 as unpatentable over Koropitzer, Garber, Wakefield, Durston, and Ziegra;
and, claims 7 and 45 as unpatentable over Koropitzer, Garber, and Ziegra.
These issues turn on whether Koropitzer and Garber describe, or
would have led one having ordinary skill in the art to, a method in a server
computer for providing advisory information to a field service provider
comprising receiving a request from a field service provider for presentation
of advisory information,
the request comprising a provider identification code associated with
the specific field service provider and representative of a specific data
type of advisory information that the specific field service provider is
authorized to access; and
in response to receipt of the request, retrieving advisory
information from a specific data type record of the storage module
based on the provider identification code; and
presenting the retrieved advisory information to the specific
field service provider through the network device.
Claim 1.

ANALYSIS
Rejection of claims 1-2, 6, 8-13, 43-44, 48, 50-55, and 80-97 as being
unpatentable over Koropitzer and Garber.
According to the Examiner, Koropitzer discloses a method comprising
all the claimed limitations but for (a) a plurality of data types and (b) the use
of a “provider identification code” representative of a specific data type of
advisory information that a specific field service provider is authorized to
access. “Koropitzer et al (‘323) does not specifically disclose a plurality of
data types and retrieving an identification code representative of a specific
data type of advisory information that the field service provider is authorized
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to access and retrieving advisory information from a specific data type
record based on the provider identification code.” Answer 4-5.

(a) a plurality of data types
The Specification defines “data types” as follows: “[t]he data type is
generally defined by the form or subject matter (i.e., device, business,
census, etc.) of the data and more specifically defined by the sources from
where the data originates” (Specification 10:26-28). In light of the
Specification, the claimed “plurality of data types” is construed to refer to
more than one piece of data. The distinction between pieces of data based on
subject matter (i.e., device, business, census, etc.) is not patentably
consequential because it is a distinction grounded on nonfunctional
descriptive material. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Cf. In re Gulack, 703 F.2d 1381, 1385 (when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
The Examiner argues that “Garber et al (4,905,163) teaches a plurality
of data types (definitions) for providing advisory information based on
provider identification code, see column 33, lines 30-43 for the benefit of
providing appropriate access to data.” Answer 5.
Garber, col. 33, lines 30-43 is reproduced below:
Summary of Selection Process 392
The purpose of preferred similarity selection process 392
is to allow a user or a system to select a similarity definition
398 from among definitions of similarity 390. In many cases, a
user may well wish to select a definition of similarity 390. In
these cases, generally the Nearest Neighbor system may simply
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provide a list of available definitions and request a selection. In
other cases, a separate system may be running when the Nearest
Neighbor system is called. In these cases the calling system
may wish to make the definition selection. For example, there
may be several similarity definitions 390 for a patient records
subject of interest 713. Perhaps one definition is appropriate
for a physician, a second for a nurse and a third for a medical
records technician.

Garber is directed to organizing and presenting information (“[t]he
present invention is a computerized information presentation system for
dynamically organizing information,” col. 8, ll. 3-5). The Garber passage
reproduced above describes a particular way of organizing information that
involves the use of similarity definitions to organize information according
to related concepts. Garber explains that a user may select a similarity
definition from among definitions of similarity provided, for example, in a
list, and the user can thereby retrieve information corresponding to the
selected similarity definition. Given that Garber presents to the user a list of
similarity definitions and that each definition corresponds to a specific type
of data defined by similarity, we agree with the Examiner that Garber
describes a “plurality of data types.”
We do not agree, however, that the Garber, col. 33, lines 30-43,
passage that the Examiner relied upon, “teaches a plurality of data types
(definitions) for providing advisory information based on provider
identification code.” Answer 5. We are unable to find a “provider
identification code” of any kind. We agree with the Appellant that “[Garber]
stops short of any further explanation and fails altogether to teach the
manner in which the user is determined to be of a certain type (e.g., nurse,
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doctor or medical technician). Indeed, [Garber] does not teach the use of an
identification code specific to the type of user in order to indicate which
definition to retrieve.” Br. 12-13.

(b) provider identification code
Given that the Examiner has conceded that Koropitzer does not
describe the claimed provider identification code and our determination that
the Examiner has not shown the claimed provider identification code is
described in Garber, to meet the Office’s initial burden of establishing a
prima face case of obviousness, it is necessary to show “‘some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’” KSR at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
The Examiner determined that “it would have been obvious to one of
ordinary skill in the art, at the time the invention was made to store data in a
plurality of data types and provide access based on a provider identification
code for the benefit of providing appropriate levels of access of data.”
Answer 5. To reach that determination, the Examiner made two contentions.
First, the Examiner contended that col. 12, ll. 34-36 and col. 10, ll. 4-
7, of Koropitzer would suggest the claimed provider identification code.
Answer 4.
We do not agree with this contention. The former passage describes a
site controller unit (SCU) receiving “an appropriate password (i.e., a
password that matches one of the passwords stored in [memory])” from a
main controller unit (MCU) such that the SCU may communicate with the
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MCU and thereby obtain information from the MCU. In citing this
disclosure, the Examiner would appear to be equating the claimed “provider
identification code” with a password. The normal function of a password is
to allow access. However, the claimed “provider identification code” is
claimed as having functions more complicated that simply allowing access
to information. The claimed “provider identification code” must be (1)
“associated with the specific field service provider” and (2) “representative
of a specific data type of advisory information that the specific field service
provider is authorized to access”, such that, “in response to receipt of the
request, [the field service provider] retriev[es] advisory information from a
specific data type record of the storage module based on the provider
identification code.” Claim 1. We are unable to discern how Koropitzer’s
disclosure to the common use of a password to gain access to information
would lead one of ordinary skill in the art to incorporate a code with the
functions claimed. The col. 10, ll. 4-7 disclosure of Koropitzer explains that
“smart machines” may be able to report identifying information. Again, we
are unable to discern, and the Examiner does not explain, how this
disclosure, alone, or in combination with the disclosed use of a password,
would lead one of ordinary skill in the art to incorporate a code with the
functions claimed
Second, the Examiner contended that one of ordinary skill in the art
would be led to the claimed provider identification code given Koropitzer’s
disclosure of identifying information (see discussion above) and Garber’s
disclosure of providing records of interest to a doctor, nurse or medical
technician according to a selected similarity definition. See Garber, col. 33,
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lines 30-43, reproduced above. “Since Koropitzer [ ] teaches identifying
information, it is clear that the doctor, nurse or medical technician of Garber
[ ] would also be identified by an identification code specific to the user.”
Answer 11.
We do not agree with this contention. It is not clear that “the doctor,
nurse or medical technician of Garber [ ] would also be identified by an
identification code specific to the user” (Answer 11). There is nothing in
Garber about identification codes. The bare mention of people with different
occupations would not lead one of ordinary skill in the art to incorporate a
code specific to a particular piece of data with the functions claimed,
whether or not it is associated with information corresponding to a particular
occupation. Nor does the combination of Garber’s bare mention of people
with different occupations and Koropitzer’s suggestion that “smart
machines” may be able to report identifying information lead to an
identification code for a particular piece of data, let alone the claimed
“provider identification code.”
Because we are not persuaded by either of the Examiner’s contentions
in support of the Examiner’s determination that the claimed provider
identification code would have been obvious to one of ordinary skill in the
art, we find that the Examiner has not established, in the first instance, a
prima facie case of obviousness of claim 1, or its dependent claims 2, 6, 8-
13, and 80-88. Independent claim 43 contains limitations similar to claim 1.
For the same reasons as provided for claim, we find that the Examiner has
not established a prima facie case of obviousness of claim 43 or its
dependent claims 44, 48, 50-55, and 89-97.
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For the foregoing reasons, we will not sustain the rejection.

The rejection of claims 3, 45, and 47 as being unpatentable over Koropitzer,
Garber, and Wakefield.

The rejection of claims 4 and 46 as being unpatentable over Koropitzer,
Garber, Wakefield, and Durston.

The rejection of claims 5 and 49 as being unpatentable over Koropitzer,
Garber, Wakefield, Durston, and Ziegra.

The rejection of claims 7 and 45 as being unpatentable over Koropitzer,
Garber, and Ziegra.
These rejections are directed to claims dependent on claims 1 and 43,
whose rejection we have reversed above. For the same reasons, we will not
sustain the rejections of claims 3-5, 7, 45-47, and 49 over the cited prior art.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims
are nonobvious if the independent claims from which they depend are
nonobvious.").

CONCLUSIONS OF LAW
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 1-2, 6, 8-13, 43-44, 48, 50-55, and 80-97 as unpatentable
over Koropitzer and Garber; claims 3, 45, and 47 as unpatentable over
Koropitzer, Garber, and Wakefield; claims 4 and 46 as unpatentable over
Koropitzer, Garber, Wakefield, and Durston; claims 5 and 49 as
unpatentable over Koropitzer, Garber, Wakefield, Durston, and Ziegra; and,
claims 7 and 45 as unpatentable over Koropitzer, Garber, and Ziegra.

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DECISION
The decision of the Examiner to reject claims 1-13, 43-55, and 80-97
is reversed.

REVERSED

vsh

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