Ex Parte Park

Board of Patent Appeals and Interferences

Apr 23, 2010

10377746 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IN-HO PARK
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Appeal 2009-013042
Application 10/377,746
Technology Center 2400
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Decided: April 23, 2010
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1, 3-7, 9-11, and 13-15. The
Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was held on April 14, 2010.

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We affirm-in-part.

A. INVENTION
The invention at issue on appeal relates to message processing unit
processes input and output messages. The information producing unit
dynamically produces updated information based on the data stored in the
database and provides it in a web document format. The information
managing unit manages characteristic information and additional
information of a device. The data processing unit processes a transaction of
the data stored in the database. The characteristic information and the
additional information of the device existing in the home network created in
an XML format is converted into a predetermined document structure and
stored in the database. Accordingly, the remote users can have different
access authority from each other by assuring independence between the
domestic devices and the remote devices, and easily use the home network
service by providing the device information in a web document format.
(Abstract.)
B. ILLUSTRATIVE CLAIMS
Claims 1 and 5, which further illustrate the invention, follow.
1. An apparatus for providing device information via a network
comprising:

a message processing unit which converts device information,
including at least one of basic information, a service list, and a status
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parameter list, of a domestic device into database schema based on a
registration request message received from the domestic device;

a storage unit which stores the converted device information of the
domestic device;

a data processing unit which processes a transaction of the device
information in an Extensible Markup Language format stored in the storage
unit in responding to a information request of the domestic device; and

an information producing unit which produces device information in a
web page format based on the device information in the XML format
received from the data processing unit and provides the produced device
information in the web page format to the message processing unit when a
request for information is made by a user;

wherein the message processing unit outputs a polling message for
polling whether the domestic device is in an active mode or not, and renews
the device information of the domestic device stored in the storage unit
based on a reply message to the polling message received from the domestic
device.

5. A method of providing device information via a network
comprising steps of:

(a) receiving device information including basic information, a service
list, and a status parameter list of the domestic device created in an XML
format from a domestic device;

(b) converting the device information into a predetermined database
schema and storing the converted device information;

(c) receiving a request for provision of the device information; and

(d) converting a format of the requested device information into web
page format and providing the requested device information in web page
format to the user;
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(c1) approving access of the user based on a user ID and a password
input by the user before step (d) and wherein the step (d) is performed when
access of the user is approved.

C. REFERENCES
The Examiner relies on the following references as evidence:
Humpleman US 6,466,971 B1 Oct. 15, 2002
Ito US 6,510,212 B2 Jan. 21, 2003
Daum US 6,826,267 B2 Nov. 30, 2004
(filed Jul. 12, 2001)

D. REJECTIONS
Claims 1, 3-4, 10-11, and 13-15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Humpleman in view of Daum.
Claims 5-7 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Humpleman in view of Daum further in view of Ito.

II. ISSUE
Has the Examiner erred in rejecting independent claim 1 over the
combination of Humpleman in view of Daum? Specifically, has the
Examiner set forth a prima facie case of obviousness setting forth a specific
showing of each of the claimed elements recited in independent claim 1?
Has the Examiner erred in rejecting independent claim 5 over the
combination of Humpleman in view of Daum and Ito? Specifically, has the
Examiner set forth a reasoned conclusion of obviousness setting forth a
showing of "approving access of the user based on a user ID and a password
input by the user before step (d) and wherein the step (d) is performed when
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access of the user is approved" as recited in independent claim 5 and a
reasonable motivation for the combination?

III. PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

IV. ANALYSIS
With respect to independent claims 1 and 10, the claims are directed
to an apparatus for providing device information via a network in both
independent claims and the claims recite distinct "units." The Examiner's
rejection is written at a high level to merely reiterate the claim language and
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insert citations to Humpleman without further explanation or correlation of
the recited claimed limitations to the teachings of Humpleman. The
Examiner's responsive arguments section then maintains that "Appellant has
failed to point out how the argued limitation is patently distinguishable from
the above-cited portions of Humpleman." (Ans. 8.) We find the Examiner's
position to be unreasonable and find that the Examiner's rejection does not
address the totality of the claim limitation which recites "a message
processing unit which converts device information, including at least one of
basic information, a service list, and a status parameter list, of a domestic
device into database schema based on a registration request message
received from the domestic device." The mere fact that XML data is present
in the teachings of Humpleman does not address the remainder claim
limitation "into database schema based on a registration request message
received from the domestic device." Appellant has argued in the Brief and
Reply Brief that Humpleman fails to teach this limitation and the Examiner
has never addressed the totality of the parts of this limitation on the record.
We are left to speculate as to how Humpleman would teach or suggest the
totality of this limitation. Therefore, we find the Appellant has shown error
in the Examiner's conclusion of obviousness of independent claim 1.
Additionally, Appellant argues that the Examiner's reliance upon the
Daum reference to show the claimed "the message processing unit outputs a
polling message for polling whether the domestic device is in an active
mode or not, and renews the device information of the domestic device
stored in the storage unit based on a reply message to the polling message
received from the domestic device" is in error and there is no teaching
suggestion for the claimed limitation. (App. Br. 12). The Examiner relies
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upon column 6 of Daum with respect to polling for status information in the
statement of the rejection at pages 4-5 of the Answer and in the responsive
arguments the Examiner maintains that Daum at columns 30 and 32 teaches
that the central facility maintains information regarding the status of polled
devices and that "[i]n order to maintain a current version of the counter
information, it must be renewed in response to the counter inquiries." While
we agree with the Examiner's statements and findings concerning Daum, the
Examiner views Daum in a vacuum and does not address the totality of the
claim limitations recited and disputed by Appellant. Here, the Examiner
identifies status of polled devices, including the counter information (Ans. 8)
as the renewing device information and in combination with the teachings of
Humpleman in the system would have renewed device information stored in
the interface library on the HNORB & IL server. (Ans. 8-9). We disagree
with the Examiner's conclusion and find there to be too much speculation
and hindsight reconstruction.
We find the Examiner's statement of the rejection and responsive
arguments do not clearly address the merits of the claimed invention with
respect to the two "based on" limitations recited in the claimed invention
concerning the message processing unit and the polling as they interrelate.
Here, the Examiner’s cursory treatment of the claim language which has
been specifically argued and addressed with respect to its "hardware"
limitations has merely been addressed in a functional manner in the
Examiner’s cursory treatment of the claim limitations. Therefore, we find
the Appellant has shown error in the Examiner's reasoned conclusion of
obviousness of independent claim 1.
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Independent claim 10 includes similar limitations as independent
claim 1 which we found to be deficient in the rejection. Therefore, we find
the Appellant has shown error in the Examiner's reasoned conclusion of
obviousness of independent claim 10.
With respect to independent claim 5, Appellant’s scope of claim 5 is
broader than that of independent claims 1 and 10. Additionally, Appellant
does not rely upon the same arguments advanced with respect to
independent claims 1 and 10. Therefore, we consider only those arguments
advanced with respect to independent claim 5. We have considered only
those arguments actually made by Appellants. Arguments which Appellants
could have made but did not make in the Brief have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that "there is no teaching or suggestion Ito of
converting a format of the requested device information into web page
format and providing the requested device information in web page format
to the user when the access of the user is approved as required by the claim."
(App. Br. 13). The Examiner maintains that the teachings of Ito concerning
the use of a user ID and password as disclosed at columns 4 and 7, would
have suggested to prevent unregistered users from illegally using the
provided device information. (Ans. 6).
Appellant again argues the limitation (c1) and contends that there is
simply no disclosure in the cited references that a format of the device
information is converted into a webpage format and provided to the user
after user access has been approved. We disagree with Appellant and find
that the teachings of Ito suggests that the user/customer must input the user
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ID and password as disclosed in column 4. The system generally operates as
follows:
The portable telephone 101 thereby loading onto the remote operating
service and the service provider 104 authenticates the user by the customer
database 204 based on the user ID and the user password input in the
customer authentication home page. Subsequently at column 8, Ito discloses
that the user selects the apparatus (home electric appliance) which he is
desirous of operation from the list on the display. The service provider 104
transmits to the portable telephone 101 the appliance home page 301
corresponding to the selected apparatus (home electric appliance) sent from
the portable telephone 101. In the process, the appliance home page 301 is
prepared, as required, using the condition of the apparatus (home electric
appliance) sent from the remote operation adapter 106. The current
operating conditions are displayed in the home page in accordance with the
condition of any apparatus sent from the remote operation adapter. (See
generally column 8, lines 38-54).
This information is suggested to be retrieved after the user ID and
password are provided since it is the current operating condition.
Furthermore, step (d) of "converting a format of the requested device
information into web page format and providing the requested device
information in web page format to the user" is “performed when access of
the user is approved” since the user has been approved already. Therefore,
the condition of converting the format after the log in is met by merely
having the user log in and then the system prepares for webpage for the
selected appliance. Therefore, Appellant has not shown error in the
Examiner's reasoned conclusion of obviousness. (If Appellant desires
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simultaneous operation of approval in conversion, then additional language
would be needed to distinguish this feature--when access of the user is
approved, then all subsequent actions are performed and meet the limitation
"when access of the user is approved.")
Appellant further contends that there is no apparent need in
Humpleman to register its users to use the system and no need in
Humpleman to prevent unregistered users from illegally providing device
information. (App. Br. 14-15; Reply Br. 7). Appellant contends that
Humpleman encourages the sharing of information among users in columns
4 and 5 and that the incorporation of user verification into Humpleman
would destroy its flexibility thereby undermining the Examiner's basis for
the combination. (App. Br. 14-15; Reply Br. 7). We disagree with
Appellant's contention, and we do not find that the user verification would
destroy flexibility or would be a barrier to the combination.
We find the Examiner's stated combination to be reasonable and
supported by the relied upon teachings. Furthermore, Appellant has not
provided evidence to show that effecting such a combination was “uniquely
challenging or difficult for one of ordinary skill in the art.” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Therefore, Appellant has not shown error in
the Examiner's reasoned conclusion of obviousness of independent claim 5
and dependent claims 6, 7, and 9.

V. CONCLUSION
For the aforementioned reasons, we find Appellant has shown that the
Examiner has erred in the rejection of independent claims 1 and 10, and we
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will reverse the rejection thereof and their respective dependent claims 3, 4,
11, and 13-15. We find the Examiner has not erred in the rejection of
independent claim 5 and dependent claims 6, 7, and 9.

VI. ORDER
We reverse the obviousness rejections of claims 1, 3, 4, 10, 11, and
13-15, and we affirm the obviousness rejection of claims 5-7 and 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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