Ex Parte Mikami

Board of Patent Appeals and Interferences

Jan 31, 2011

10632160 (B.P.A.I. Jan. 31, 2011)

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.
10/632,160 07/31/2003 Yoshiko Mikami JP920010380US1 (279) 1909
46320 7590 01/31/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
WHIPPLE, BRIAN P
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
01/31/2011 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 YOSHIKO MIKAMI
____________________

Appeal 2009-006640
Application 10/632,160
Technology Center 2400
____________________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and DEBRA K.
STEPHENS, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
STATEMENT OF THE CASE
In papers filed November 29, 2010, Appellant requests a rehearing
under 37 C.F.R. § 41.52 from the Opinion of the Board of Patent Appeals

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, 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.

Appeal 2009-006640
Application 10/632,160

2
and Interferences (hereinafter Board), dated September 28, 2010. In the
Opinion, we affirmed the Examiner’s rejection of claims 1-11 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Gatz and
Walker.
Appellants allege that the Board erred by misapprehending or
overlooking Appellants’ arguments previously raised in the Briefs. (Req.
Reh’g. 1-19). In particular, Appellants allege the following errors:
i. The Board overlooked Appellant’s arguments pertaining to
whether the combination of Gatz and Walker discloses or suggests a request
from a first user identifying a list of one or more applications that the first
user is permitted to execute and storing the list in the profile of a second user
(Req. Reh’g 13-19).
ii. The Board overlooked Appellant’s arguments and misconstrued
the combination of Gatz and Walker in finding that it would have been
obvious to one of ordinary skill in the art to have combined the references
(Req. Reh’g 3-12).
We have carefully reviewed the Opinion in light of Appellants’
allegations of errors. We will address those remarks in the order as outlined
above.
i. We find without merit Appellant’s first allegation of error that we
overlooked Appellant’s arguments pertaining to whether the combination of
Gatz and Walker discloses or suggests the disputed claim limitation.

Appeal 2009-006640
Application 10/632,160

3
Appellant argues that:
1) while Walker and Gatz discloses that a “user is permitted to
execute one or more applications, this is not the same as a finding that
Walker and/or Gatz teaches ‘a list of one or more applications that the first
user is permitted to execute” and that this list is included within a request
from a first user” (Req. Reh’g 15);
2) the fact that Gatz discloses that a parent may override
restrictions on a child account “does not refer . . . to the claimed list or that
the list is included within a request from a first user” (Req. Reh’g 15).
3) we assumed “without factual basis, that the claimed ‘list of one
or more applications that a first user is permitted to executed’ is needed for a
parent to modify a child account” (Req. Reh’g 16);
4) “The alleged fact that Gatz and Walker teach that a first
user . . . can access a particular application by default does not necessarily
require . . . that a list exists for applications that the first user is permitted to
execute” (Req. Reh’g 17);
5) “There has been . . . no findings of fact, supported by
substantial evidence, that the claimed ‘list of one or more applications that
the [patent [sic]/supervisor] is permitted to execute’ is a familiar element”
(Req. Reh’g 17);
6) “[T]here is no established need for the claimed list” (Req.
Reh’g 17); and
Appeal 2009-006640
Application 10/632,160

4
7) “[T]here is no technical requirement that access, by a parent, to
a particular application is required in order for the parent to restrict access,
by a child, to that particular application” (Req. Reh’g 18).
As we stated in the Opinion, we disagree with Appellant’s
contentions. We provide further clarification on this issue as follows.
Gatz discloses creating “a ‘family’ account . . . [that] allows the server
to track account identifiers . . . for each child in the family” by “a parent that
controls the family account (‘the controlling parent’)” (¶ [0071], ll. 1-6) who
“can control the access and settings of the user of the child account” (¶
[0058], ll. 3-5). Hence, in Gatz, a parent creates a family account that
includes accounts for both the parent and child, the child account having
access to (permitted to execute) certain applications as dictated by the
“parent.”
First, we agree with the Examiner that the parent has access to (i.e.,
permitted to execute) applications that the parent designates as permissible
for the child because it would not make sense that the parent would be able
to grant access to an application or site that the parent him/herself is not
permitted to access or execute. This is particularly true considering that the
whole point of the Gatz system is for a parent to monitor and restrict a
child’s access to certain applications or sites that the parent deems
unacceptable for the child. At the very least, we agree with the Examiner
that it would have been obvious to one of ordinary skill in the art, given that
a parent controls access of a child to applications by designating which
applications are permissible, to ensure that the parent has access to those
Appeal 2009-006640
Application 10/632,160

5
designated applications as a matter of common sense. “It is common sense
that familiar items may have obvious uses beyond their primary purposes,
and a person of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 402 (2007).
However, even assuming Appellant’s assertion to be correct that it
would somehow not have been obvious to one of ordinary skill in the art to
have permitted access to or execution of applications and sites to a parent in
Gatz simply because Gatz supposedly does not explicitly state in so many
words that the parent has definitive access or may execute the applications
that the parent grants access to the child, Walker also discloses a system in
which a parent restricts access to applications and sites for a child (just as in
Gatz) that Walker explicitly discloses as including access by the parent
“without restriction” (col. 10, l. 16). Thus, Walker confirms by explicitly
disclosing what Gatz implies, namely, that in a computer system in which a
parent controls a child’s access to applications or sites, the parent has access
(that is without restriction) to the applications or sites that the parent grants
to the child. We provide the following clarification regarding the Walker
reference.
Just as in Gatz, Walker also discloses a system in which a person,
such as a parent (col. 10, l. 12), restricts access to (i.e., grants permission to
execute) applications to another user, such as a child (col. 10, l. 13). Walker
further discloses that the parent accesses or executes applications or sites
“without restriction” (col. 10, l. 16) and that the parent “selects acceptable
Appeal 2009-006640
Application 10/632,160

6
web sites and adds them to a database of authorized web sites that the child
(employee) may visit” (col. 10, ll. 16-18). Hence, in Walker, a parent has
unrestricted access (and permission to execute) applications and sites and
selects certain “acceptable” applications or sites to be included in a database,
the “acceptable” applications or sites being those applications or sites in the
“unrestricted group” of applications or sites that are deemed to be accessible
to the child (permitted to execute). In other words, the parent provides a list
of applications (i.e., “acceptable” applications or sites) to which the parent
has access (as demonstrated by the fact that the parent has access “without
restriction”).
In both Gatz and Walker, a system is provided in which a parent
restricts a child’s access to applications or sites in which it is either implicit
(Gatz) or explicit (Walker) that the parent has access him/herself to the
applications or sites that the parent grants access to the child. We find this
disclosure to be equivalent, or at least suggestive, of the disputed claim
feature.
Regarding storing the list in the profile of the second user, Walker
also discloses, for example, adding new “authorized” applications and sites
to “a selected user profile” based on selections of the parent (col. 12, ll. 1-3).
We find no difference in a parent in the Walker system adding designated
acceptable applications and sites to a child’s profile and the claimed feature
of storing a list of applications in the profile of a second user (e.g., a child).
Appellant also argues that we “overlooked the issues raised by
Appellant . . . and deviated from the findings made by the Examiner” (Req.
Appeal 2009-006640
Application 10/632,160

7
Reh’g 14) because, according to Appellant, the Examiner relied solely on
Gatz rather than the combination of Gatz and Walker (Req. Reh’g 14). We
are confused by Appellant’s assertion because the Examiner relies on “the
combination of Gatz in view of Walker” (Ans. 11) and not on Gatz alone
and rejects claims 1-11 as being unpatentable over Gatz and Walker (App.
Br. 4).
Therefore, we disagree with Appellant that we overlooked or
misconstrued this issue.

ii. We also find without merit Appellant’s second allegation of error that
we overlooked Appellant’s arguments and misconstrued the combination of
Gatz and Walker in finding that it would have been obvious to one of
ordinary skill in the art to have combined the references. Appellant argues
the following:
1) “Appellant did not raise the issue of Gatz and Walker not being
within the same field of endeavor” (Req. Reh’g 4);
2) “the Honorable Board has improperly shifted the burden of
proof” (Req. Reh’g 5);
3) “[t]here is no requirement that Appellant’s claimed invention
produce unpredictable results” (Req. Reh’g 6);
4) “a reliance [on ‘predictable results’] constitutes a new grounds
of rejection” (Req. Reh’g 8) that “require different findings of fact . . . [that]
have not been articulated by either the Examiner or the Honorable Board”
(Req. Reh’g 9); and
Appeal 2009-006640
Application 10/632,160

8
5) “the Decision does not indicate whether or not these arguments
[pertaining to combinability of Gatz and Walker] were considered” (Req.
Reh’g 12).
We provide further clarification on the issue of the combinability of
the Gatz and Walker references as follows.
As we stated above and as pointed out by the Examiner, both Gatz and
Walker disclose systems that would have been known to those of ordinary
skill in the art in which a parent selects applications or sites that the parent
deems acceptable for a child to access or execute. The child then has access
to the applications or sites that the parent selects. As described above,
Walker further discloses certain additional features of the known systems,
some of which are implied by Gatz. For example, as described above,
Walker explicitly discloses that the parent has unrestricted access to
applications and sites and that the “acceptable” applications or sites, after
being selected by the parent, are stored in the child’s user profile.
In other words, the combination of Gatz and Walker is the merging of
two functionally equivalent systems, both of which would have been known
to those of ordinary skill in the art, with no change in the function of either
system. This is true because both known systems of parental control of child
access to applications or sites would still perform the same functions of
controlling a child’s access to applications or sites in the same way whether
the systems were combined or not. When “‘. . . the combination . . . only
unites old elements with no change in their respective functions . . . [the
combination] obviously withdraws what already is known into the field of its
Appeal 2009-006640
Application 10/632,160

9
monopoly and diminishes the resources available to skillful men’” (KSR,
550 U.S. at 415-416 (citing Great Atlantic & Pacific Tea Co. v. Supermarket
Equipment Corp. 340 U.S. 147, 152-153 (1950))). As such, a combination
of such known elements performing their known functions to yield
predictable results “is likely to be obvious” (KSR, 550 U.S. at 416) – in this
case, combining two known systems in which a parent controls a child’s
access to applications and sites by selecting the acceptable applications and
sites and storing the selected items in a profile of the child to achieve a
system that performs this same function.
Appellant argues that “[t]here is no requirement that Appellant’s
claimed invention produce unpredictable results” (Req. Reh’g 6), that “the
Honorable Board has improperly shifted the burden of proof” (Req. Reh’g
5), and that a finding of predictable results “does not lead, per se, to a
conclusion of obviousness” (Req. Reh’g 7). In the Opinion, we imposed no
such requirement on Appellant. To the extent that the Opinion contained
statements that Appellant construed as imposing such a requirement, we
withdraw such statements. Rather, the issue raised and addressed was
whether it would have been obvious to one of ordinary skill in the art to have
combined the Gatz and Walker references. Given the weight of the evidence
as enumerated – for example, the fact that Gatz and Walker both disclose
known systems that perform the same function and would have performed
predictable and expected functions (in this case, the same function) when
combined – we agreed with the Examiner that it indeed would have been
obvious to one of ordinary skill in the art to have combined the references.
Appeal 2009-006640
Application 10/632,160

10
Appellant also argues that the Decision relies on a new ground of
rejection (Req. Reh’g 8). We disagree. Throughout the long history of
“engagement with the question of obviousness, . . . cases have set forth an
expansive and flexible approach” (KSR, 550 U.S. at 415) and courts have
provided “instructions concerning the need for caution in granting a patent
based on the combination of elements found in the prior art” (KSR, 550 U.S.
at 415), particularly when the “combination of familiar elements according
to known methods . . . does no more than yield predictable results” (KSR,
550 U.S. at 416). Whether applying this known standard in this case
constitutes a new ground of rejection would depend on whether Appellant
had a fair opportunity to react to the thrust of the rejection. See In re
Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“the ultimate criterion of
whether a rejection is considered ‘new’ in a decision by the board is whether
appellants have had fair opportunity to react to the thrust of the rejection”).
In the present case, the Examiner rejected the disputed claims as being
obvious over the combination of Gatz and Walker. We agreed with the
Examiner’s assessment and affirmed the obviousness rejection over the
combination of Gatz and Walker. In doing so, we provided amplified
reasons in support of the affirmance, the amplified reasons being based on
the known standards of obviousness as set forth in Graham v. John Deere
Co. of Kansas City, 383 U.S. 1 and KSR, 550 U.S. (2007) (see above). Both
the Examiner’s rejection and our analysis with amplified reasons for
affirming the rejection are based squarely on the same evidentiary scheme –
namely, the known standards of obviousness under 35 U.S.C. § 103(a).
Appeal 2009-006640
Application 10/632,160

11
Merely presenting amplified reasons in support of a previously applied
rejection to the claims does not constitute a new ground of rejection. In re
Boon, 439 F.2d 724, 727 (CCPA 1971) (holding that amplified reasons, even
when relying “on additional facts, not previously in the record” do not
constitute a new ground of rejection if “the ‘evidentiary scheme’ supporting
the board’s position on this rejection does not differ in substance from that
of the examiner”). As such, we disagree with Appellant’s contention that, in
this case, our affirmance of the Examiner’s rejection on the same ground
supposedly constitutes a new ground of rejection.
Appellant also argues that the Opinion overlooked a previously
presented argument by Appellant that the combination of Gatz and Walker
supposedly fails to disclose or suggest “the claimed ‘list of one or more
applications that the first user is permitted to execute’” (Req Reh’g 12). We
disagree with Appellant but we have nevertheless provided further
clarification above regarding this issue (see above).
Appellant argues that “Appellant did not raise the issue of Gatz and
Walker not being within the same field of endeavor” (Req. Reh’g 4). We
agree with Appellant that Appellant did not raise the issue as to whether
Gatz and Walker are in the same field of endeavor or not. Therefore, to the
extent that the Opinion contains statements that solely address the issue of
whether Gatz and Walker are in the same field of endeavor, we modify the
Opinion to remove those statements.

Appeal 2009-006640
Application 10/632,160

12
CONCLUSION
In view of the foregoing discussion, we incorporate our findings as
outlined above but deny Appellant’s Request for Rehearing with respect to
making any change to our decision to affirm the Examiner’s rejection of
claims 1-11.

DENIED

rvb

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487