Ex Parte Nordahl et al

Patent Trial and Appeal Board

Oct 31, 2012

10105160 (P.T.A.B. Oct. 31, 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.
10/105,160 03/26/2002 Mats Nordahl 10400-000006/US 4535
30593 7590 10/31/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2171
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATS NORDAHL and BENGT JOHANNESSON
____________

Appeal 2010-005654
Application 10/105,160
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
GREGORY J. GONSALVES Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1-19. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
This invention relates to providing support to a user in relation to a
present support context. (Spec. 1). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A device for providing support to a user in relation to a
present support context involving at least one of a computer
program and information technology hardware;
-the device comprising: a processor, input means, output
means, and a memory comprising support data items; the
processor being configured for:
-investigating the present support context in order to
generate a reduced set of support data items, the reduced set
being limited to support data items related to the present
support context, the reduced set being generated by selecting
among support data items in the memory; the selecting being
based on the relevance of the support data items in the memory
in relation to the present support context; wherein the
investigation includes automatic querying of said support
context;
-presenting to the user using the output means the
reduced set as selectable options; and
-receiving a user's selection among the selectable options
using the input means.
(Disputed limitations emphasized).

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REJECTIONS
R1. Claims 1, 2, 10, 14, 16, 17 and 19 were rejected under 35 U.S.C. § 103
(a) as being unpatentable over Windows NT ("Windows NT", Help
Topics: Windows NT Help) in view of Othmer et al ("Othmer", PCT
Publication No. WO 0l/27847 AI, Apr. 19, 2001).
R2. Claims 3, 5-8, 11, 13 and 18 were rejected under 35 U.S.C. § 103 (a)
as being unpatentable over Windows NT and Othmer in view of
Sullivan et al ("Sullivan", US Patent No. 6,615,240 B1, Sep. 2, 2003,
filed Dec. 18, 1998).
R3. Claims 4 and 12 were rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Windows NT and Othmer in view of Sullivan and
further in view of Kulkarni et al ("Kulkarni", US Patent No.
6,159,411, Dec. 12, 2000) .
R4. Claims 9 and 15 were rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Windows NT and Othmer in view of Sullivan and
further in view of Breggin et al ("Breggin", US Patent No. 6,560,776
B1, May 6, 2003, filed Feb. 18, 2000).

GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of the
obviousness rejection of claims 1, 2, 10, 14, 16, 17, and 19 on the basis of
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
We address the rejections R2 –R4 separately, infra.

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ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken, and (2), the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants’ Appeal Brief. (Ans. 9-10). We
highlight and address specific findings and arguments below.

A.
CONTENTIONS
Appellants argue:
[T]he Examiner reads the automatic querying claim limitation
upon Othmer's collection of black box data. As discussed
above, Othmer is entirely unrelated to electronic-based user
support, and merely gathers system-state information to link a
user to a relevant user support expert. Thus, Othmer cannot
disclose or suggest an automatic querying of any particular
support context because Othmer simply gathers the same
default black box data no matter which "support context" is
actually at issue. In other words, the "context" of the user's
problem is irrelevant in Othmer because the black box
collection simply collects the same information no matter what
the problem actually is.
(App. Br. 7-8).
The Examiner disagrees:
Othmer, as pointed out above, based on the automatically
querying of the user's information, the user is directed to a web
page which contains the solution to the user's support request
(Page 4 lines 8-11). The black box of Othmer does not gather
the same information each and every time. Othmer states that
the black box may contain information about the operating
system, the application name, the last action of the user and the
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amount of memory. Since a user's last action and application
that he or she is working in is changing, to say that the 'black
box gathers the same data no matter which support context is
actually at issue is false. Othmer also supports this by stating
the support is application and instance specific (Page 4 lines 3-
8).
(Ans. 9-10).
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
"investigating the present support context in order to generate a reduced set
of support data items, . . . wherein the investigation includes automatic
querying of said support context," within the meaning of claim 1, and the
commensurate language of claim 10?
We are not persuaded by Appellants' arguments. We agree with the
Examiner that Othmer’s teaching of "automatically gather[ing] user and
system information from the user's computer so that when the user has a
technical question, the system automatically directs the user to the proper
user support provider using the information gathered at the user's computer,"
would have taught or suggested the claimed "automatic querying of said
support context." (Othmer page 3, ll. 21-24; Ans. 4, 9-10). We conclude
that the broadest reasonable interpretation of "support context" encompasses
Othmer's "information gathered at the user's computer" which is related to
the user's problem. (Ans. 9-10; Othmer page 3, line 20 to page 4, line 11).
We note that Appellants fail to cite to any definition of "support context"
from the Specification to rebut this broad but reasonable interpretation.1

1 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
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We also find unpersuasive Appellants' contention that Othmer does
not suggest "investigating the present support context" because Othmer
collects "the same information no matter what the problem actually is."
(App. Br. 7-8). In particular, we observe that the feature upon which
Appellants' rely – collecting different information for different problems – is
not recited in the claims. We decline to read such limitation into the claim.
Furthermore, even assuming arguendo (without deciding) that Appellants’
narrower interpretation may be applicable, we agree with the Examiner's
finding that Othmer collects different information for each problem, such as
the user's last action and application. (Ans. 9-10). Appellants fail to file a
Reply Brief to rebut the Examiner's specific finding.
For these reasons, we are not persuaded that the Examiner erred.
B.
CONTENTIONS
Appellants contend the "Examiner has not established a prima facie
rationale to combine Windows NT with Othmer" (App. Br. 8; emphasis
removed):
Othmer is entirely unrelated to automated self-help programs,
such as the generic Windows NT help menus, while Windows
NT help menus are entirely unrelated to helping a user identify
a Microsoft expert to work in the user's particular problem.
Thus, Othmer and Windows NT relate to two very different
approaches to the user support problem, and their teachings
could not be combined by one of ordinary skill in the art in a
way which would result in the claimed invention.
(App. Br. 8-9).

patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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The Examiner disagrees:
Othmer and Windows NT are analogous art for at least the fact
that they are both graphical user interfaces that relate
specifically to user support. One of ordinary skill in the art at
the time of the invention could have been motivated to combine
Othmer and Windows NT, since Windows NT does lack an
automatic support query. This would alleviate the novice users
from determining the problem at hand so that the user can focus
specifically concentrate at resolving the issue.
(Ans. 10).

Issue: Under § 103, did the Examiner err in combining the cited
references relied upon in the rejection of claim 1?
For the reasons given below, we agree with the Examiner one skilled
in the art would have been motivated to combine Othmer's investigation
using automatic querying with Windows NT help system to reduce the
amount of user's effort and expertise required to determine the problem.
(Ans. 10).
We find unavailing Appellants' contention that the references are not
combinable because "Othmer and Windows NT relate to two very different
approaches to the user support problem." (App. Br. 8-9). Contrary to
Appellants' contention, Othmer's and Window's NT approaches are similar
in that both need to understand what specific problem the user has in order
to provide support for a particular user's problem. These similar needs
would have suggested to one skilled in the art to look to Othmer's
investigation using automatic querying to automatically collect information
to help understand the user's problem. (Ans. 10). Moreover, Appellants do
not rebut the Examiners' specific findings.
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Notwithstanding Appellants' arguments, on this record we are not
persuaded that the Examiner erred in combining the cited references relied
upon in the rejection of claim 1. Accordingly, we sustain the Examiner's
rejection of claim 1, and of claim 10, for which no separate argument of
patentability is advanced. (App. Br. 6-8).

C.
CONTENTIONS
Appellants contend that claims 2, 14, 16, 17, and 19 are allowable for
the same reasons advanced for claims 1 and 10. (App. Br. 9). Thus we
sustain the Examiner's rejection of claims 2, 14, 16, 17, and 19 for the same
reasons given above regarding claim 1.
Regarding rejections R2-R4 of the remaining claims, Appellants argue
these claims are patentable by virtue of their dependency from parent claims
1 and 10. Appellants further argue that the additionally cited references do
not cure the deficiencies of the rejections of claims 1 and 10. However, we
find no deficiencies regarding the Examiner’s rejection of claims 1 and 10,
for the reasons discussed above. Therefore, we sustain the Examiner's
rejections R2-R4 of claims 3, 5-8, 11, 13, and 18, of claims 4 and 12, and of
claims 9 and 15, for the same reasons discussed above regarding claims 1
and 10.

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DECISION
We affirm the Examiner's rejections of claims 1-19 under §103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh