Ex Parte Petras et al

Board of Patent Appeals and Interferences

Jun 1, 2010

10624345 (B.P.A.I. Jun. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GREGORY J. PETRAS, JEFFREY T. ZYWICKI, FLORI N.
PARHAM, MARK A. FISHER, ROBERT R. MARTIN, ANDREW F.
MASON, CORY OSBORN, LISA J. CRAMER, CRAIG P. THOMPSON,
NORMAN WHITE, GARY D. MELLOTT, KIMBERLY A. CAMERON,
KORY KREDIT, RACHAEL A. THOMAS, CONNIE RIFFEL, and
RICHARD W. HILL
____________________

Appeal 2009-006522
Application 10/624,3451
Technology Center 2100
____________________

Decided: June 1, 2010
____________________

Before JOHN A. JEFFERY, LEE E. BARRETT, and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed July 22, 2003. Appellants claim the benefit under
35 U.S.C. § 119 and § 120 of various applications dating to February 10,
2000. The real party in interest is Involve Technology, Inc.
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STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 35, 36 and 43 to 85
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 1 to 34
and 37 to 42 have been withdrawn from consideration.

We affirm the rejections.

Appellants’ invention relates to a system and method for maintaining
a database of information using user opinions (Spec. 1, middle). The system
can develop questionnaires for acquiring user opinions of products or
services and can help users find information on products and services from
other users (id.). In the words of Appellants:
A system for automatically creating and
maintaining a database of information utilizing
user opinions about subjects, particularly
exceptional experiences. Described is an Internet
system assisting/motivating a population of users
interested in information about certain categories
of subjects to automatically maintain the database
content and to improve the usefulness and quality
of the database information without any substantial
management by the website owner-manager. The
user opinions are primarily in the form of both
comments and ratings about which natural-
language terms best describe a particular subject,
enabling user searches of the subject database to be
by way of preferred such descriptive natural
language terms, which terms are further preferred
to be evaluative and approving.
Also, a system for automatically creating
and maintaining a database of information utilizing
user knowledge about sales related subjects.
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Described is an Internet-based system for
assisting/motivating a population of users
interested in information about certain categories
of sales related subjects to automatically maintain
the database content and to improve the usefulness
and quality of the database information without
any substantial management by the website owner-
manager. The user opinions are primarily in the
form of both comments and ratings of which sales
related subjects best provide assistance in
completing a sale.
(Spec. 146)

Claims 35 and 43 are exemplary, and are reproduced below:
35) An Internet website client-server computer system, for
use to determine by e-mail survey a level of subject
approval for each one of a population of survey
participants by capturing each such participant's opinions
about the degree of relevance of each of a respective set
of natural language terms to each of a respective set of
subjects, comprising:

a) a client interface system arranged so that a survey
taker may indicate at least

i) a defined question for the survey,

ii) a such set of subjects to be evaluated,

iii) a such set of natural-language terms to be
rated as to relevancy to each subject,

iv) a participant audience, and

v) a time-frame for response;

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b) a server computer processor system connected
with said client interface system; and

c) a server computer software system, operational
with said server computer processor system,
arranged to provide survey processing comprising

i) compiling a survey file and survey
document in accordance with survey taker
input,

ii) communicating such survey document to
such participant audience, and

iii) receiving and tabulating responses.

43) An Internet client-server system for assisting at least one
group of users having at least one common goal to
capture and search, in a single database, offered
knowledge, relevant to such at least one common goal, of
a plurality of such users for the benefit of at least one of
such users, comprising:

a) individually capturing for such database at least
one experience of at least some of such plurality;

b) storing in such database such experience;

c) user-searching, using at least one natural-language
word, to select at least one desired kind of stored
experience;

d) performing such user-searching; and

e) presenting search results.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yong US 5,749,079 May 05, 1998
Nielsen US 5,948,054 Sep. 07, 1999
Hill US 6,029,192 Feb. 22, 2000
Ng US 6,405,175 B1 Jun. 11, 20002
Hamlin US 6,477,504 B1 Nov. 05, 2002

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 45, 47 to 49, 52, 54 to 56, 58, 60, 61, 63, 66, 68, 70, 72 to 74,
76, 78, 79, 81 and 83 stand rejected under 35 U.S.C. § 112 for being
indefinite.
R2: Claims 35 and 36 stand rejected under 35 U.S.C. § 102(e) for being
anticipated by Hamlin.
R3: Claims 43 to 45, 48, 49, 52, 56 and 57, plus 64 to 66, 68, 70, 74 and
75 stand rejected under 35 U.S.C. § 102(e) for being anticipated by Hill.
R4: Claims 46, 47, 50, 51, 53 to 55, 58 and 59 plus 67, 69, 71 to 73, 76, 77
and 82 to 85 stand rejected under 35 U.S.C. § 103(a) for being obvious over
Hill in view of Ng.
R5: Claims 60 to 62 plus 78, 79 and 80 stand rejected under
35 U.S.C. § 103(a) for being obvious over Hill in view of Yong.
R6: Claims 63 plus 81 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Hill in view of Nielsen.

For each rejection in the rejection summary above, the claims listed
after the word “plus” were indicated as being rejected by the respective
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rejections listed in the Examiner’s clarification in the Answer, pages 20 to
30. Appellants’ submission concerning an impropriety of the format of the
Examiner’s rejections is deemed to be a petitionable matter, and not within
the jurisdiction of this tribunal (App. Br. A18, top).

Appellants contend that the claims are not indefinite. Appellants also
contend that Hamlin and Hill do not each anticipate the claimed subject
matter, and that Hill in combination with Ng, Yong and Nielsen do not teach
limitations in the claims. The Examiner contends that each of the claims is
properly rejected.
We will review the rejections in the order argued and as grouped in
the Briefs. We have only considered those arguments that Appellants
actually raised in the Briefs. Arguments that Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
The issues are whether Appellants have shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 112, paragraph 2; 35 U.S.C.
§ 102(e) and 35 U.S.C. § 103(a). The claims present a number of
occurrences where the antecedent basis of a term may be unclear. In
addition, a prior art rejection hinges on whether the references Hamlin and
Hill teach the surveying, storing and accessing of user experiences as
claimed.
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a system and method for accumulating, storing
and retrieving data on all manner of products and services, leisure
activities and experiences (Spec 5, middle). One aspect of this
voluminous application on which the claims focus is an automated
system for distributing surveys to subjects, and accumulating the
responses for a client (Spec. 57, middle). Another aspect is the
assignment of natural language descriptive words relevant to a specified
subject (Spec 56, middle). Searching is based on these descriptions (Id.)
2. The Hamlin reference teaches a mechanism for automated survey
creation and distribution (Col. 2, l. 55). The mechanism permits clients
to generate questionnaires (Fig. 3) with natural language terms that are
evaluated by the survey participants (Fig. 4, Col. 7, l. 55). Results are
tabulated and posted on a web page for the client (Col. 10, ll. 27 to 29).
3. The Hill reference teaches a generalized system for sharing evaluations
of products, services and experiences (Col. 3, ll. 5, 37). Evaluations of
resources are made by users and posted for others to consider (Col. 5, ll.
2, 25).

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PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

“A reference does not fail as an anticipation merely because it does
not contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978) (citing In
re Schaumann, 572 F.2d 312, 317 (CCPA 1978).

“It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim.” In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1457 (Fed. Cir. 1984)).

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“Indefiniteness under 35 U.S.C. § 112 ¶ 2 is an issue of claim
construction and a question of law that we review de novo.” Cordis Corp. v.
Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009) (citing
Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008)).

For post-prosecution analysis, our guiding courts use the following
analysis:
Patent claim is not invalid for indefiniteness unless it is
insolubly ambiguous; therefore, if meaning of claim is discernible,
claim is sufficiently clear to avoid invalidity on indefiniteness
grounds, even if interpreting claim is difficult, and construction is one
over which reasonable persons could disagree.

Bancorp Services LLC v. Hartford Life Insurance Co., 359 F.3d 1367 (Fed.
Cir. 2004).
However, during prosecution before this Office, while Appellants still
have the opportunity to amend the claims, a higher standard of clarity is
required:
In particular, rather than requiring that the claims are insolubly
ambiguous, we hold that if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C.
§ 112, second paragraph, as indefinite.

Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents the conclusions of unpatentability on pages 3 to 30 of the
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Examiner’s Answer. In opposition, Appellants present a number of
arguments.

Arguments with respect to the rejection
of claims 45, 47 to 49, 52, 54 to 56, 58, 60, 61, 63, 66, 68, 70, 72 to 74, 76,
78, 79, 81 and 83
under 35 U.S.C. § 35 U.S.C. § 112 (para. 2) [R1]

The Examiner has rejected the noted claims for diverse reasons. We
will consider this rejection claim by claim:
Claims Analysis
45, 66 We agree that the claimed term “substantially” in the context of
the degree to which a website management system is
“substantially automatic” is indefinite. Appellants point to the
Specification, page 98, line 32, for supporting the definition for
the term (App. Br. A10, middle). However, even in the
Specification there is no delineation of which management
functions would be performed by the system, and which would
be reserved for the administrator. In building a competing
software/ hardware system, a future inventor would never be
sure whether the supplying of a certain automated function
would overstep the boundary of the system management being
“substantially automatic.” We thus hold “substantially
automatic” in these claims to be indefinite. See In re
Nehrenberg, 280 F.2d 161, 165 (CCPA 1960). The scope of
the claim term “substantially” must be sufficiently defined in
the Specification (id. at 165). In the instant application,
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“substantially automatic” as claimed was not sufficiently
defined to make certain the scope of the claim.
47 We agree with the Examiner that the term “such population of
users” and “such management community” are indefinite,
lacking a clear antecedent basis. Claim 47 and its parent claims
mention groups of users, pluralities of users, and some of such
pluralities of users. It is simply not clear which population or
community is being referred to in claim 47.
48-49, 68 The limitations “such knowledge of users” and “such group of
users” could refer to any of a number of users and groups of
users in the parent claims to which the noted phrases may refer.
We agree with the Examiner these claims are not clear.
52, 70 We disagree with the Examiner with respect to the limitation “if
any” being indefinite. A limitation may be conditional, and
may leave open the situation where the condition is not
satisfied. We recommend that “if any” be located after the
word “experience,” but will not support the rejection.
54, 72 We agree with the Examiner that the term “such at least one
user” is indefinite, as, in the context of the claim, the “at least
one user” could be one of many users in the parent claims. We
also agree that “such accumulated points” is unclear, as the user
who accumulated the points is not unambiguously specified.
55, 73 We agree with the Examiner that there is no reference for “such
computer software”.
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56, 74 We agree with the Examiner that “one item of experience” has
no defined antecedent in the claim or in the parent claims.
Likewise, there is no antecedent for “involved subset”.
58, 76 These claims lack an antecedent for “such set of performance
goals,” “such population of users,” and “such reward system,”
as expressed by the Examiner.
60, 78 The terms “such at least one user,” and “such at least one
predetermined category” lack antecedent basis in the claim or in
the parent claims.
61, 79 The term “such pre-determined information” does not
necessarily refer to the more general term “knowledge” and
thus lacks antecedent basis.
63, 81 No “such at least one user” is unambiguously expressed, in the
claims or their parents.

We also agree with the Examiner (Ans. 3, bottom) that the term
“such” is not a clear reference to an antecedent term – “said” is much
preferable as it makes a specific reference to the antecedent of the term in
question. “Such” is less definite and we are not aware that this term has an
accepted meaning in claim interpretation.

Arguments with respect to the rejection
of claims 35 and 36
under 35 U.S.C. § 102(e) [R2]

The Examiner has rejected claims 35 and 36 for being anticipated by
Hamlin. The Appellants demur, contending that “Hamlin fails to disclose
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any survey involving ‘a such set of subjects to be evaluated’ and ‘a such set
of natural-language terms to be rated as to relevancy to each survey’”, as
claimed (App. Br. A12, middle). Examples of such experiential subjects to
be evaluated as disclosed by the Appellants are “a succulent steak, a cozy
campsite.” (Id.). Examples of Appellants’ descriptive words are “tasty,
romantic, friendly service.” (Id.).
Hamlin teaches a system for automating the creation, distribution and
analysis of surveys over the Internet (Fig 2A; col. 2, ll. 54 to 64). The actual
subject matter of the surveys are not material to the rejection, as the claims
mention no more than “subjects to be evaluated”. However, we note that the
Hamlin reference is adapted for surveying related to marketing generalized
products, such as toothpaste (Col. 1, l. 48). The adjectival natural-language
evaluation terms in the Hamlin reference are chosen by the client, who
specifies the survey himself (Col. 8, l. 2). In the table in column 8, line 25,
natural language terms such as reading, sleeping, working etc. are evaluated,
relevant to a subject, such as enjoyable pursuits. In summary, we find that
Hamlin teaches subjects to be evaluated and relevant sets of natural language
terms rated as to relevancy to each subject.
We find no error in the Examiner’s rejection of claims 35 and 36, for
the reasons stated above and for the reasons stated by the Examiner (Ans.
34, top).

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Arguments with respect to the rejection
of claims
43 to 45, 48, 49, 52, 56 and 57, plus 64 to 66, 68, 70, 74 and 75
under 35 U.S.C. § 102 [R3]

The Examiner has rejected the noted claims for being anticipated by
Hill, which teaches a system for storing and retrieving information about
experiences with products and services (Col. 2, ll. 61 to 68). Appellants
argue that Hill “does not disclose storing in any database user experiences or
user-searching, using at least one natural-language word, to select at least
one desired kind of store experience.” (App. Br. A14, middle).
We adopt and agree with the Examiner’s analysis of the teachings of
the Hill reference with respect to claim 43. Hill clearly teaches searching on
user experiences, best exemplified by entries concerning river rafting in the
Rocky Mountain National Park or related experiences (col. 11, l. 17). Hill
teaches each of the steps recited in the claim, capturing, storing, searching,
presenting, and thus anticipates it. (See Ans. 8 and 9.)
With respect to the features of dependent claims 48, 49 and 56, we
agree with and adopt the Examiner’s response, and do not find error in the
rejections (Ans. 35, middle; Ans. 11, top).

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Arguments with respect to the rejection
of claims 46, 47, 50, 51, 53 to 55, 58 and 59 plus 67, 68, 71 to 73, 76, 77
and 82 to 85 [R4]
and of claims 60 to 62 plus 78, 79 and 8 [R5]
and of claims 63 plus 81 [R6]
under 35 U.S.C. § 103(a)

The Examiner has rejected the noted claims for being obvious over
Hill, and respectively Ng, Yong and Nielsen. Against each of these
rejections the Appellants have only stated that the secondary reference fails
to overcome the deficiencies of Hill. As we have not found the anticipation
rejection over Hill to be deficient, we will not find error in applying Hill to
the respective rejections under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 35, 36 and 43 to 85 under
rejections R1 – R6.

DECISION
This Board decides as follows:
R1: The rejection of claims 45, 47 to 49, 54 to 56, 58, 60, 61, 63, 66, 68,
72 to 74, 76, 78, 79, 81 and 83 under 35 U.S.C. § 112 paragraph 2 for being
indefinite is affirmed. The rejection under 35 U.S.C. § 112 paragraph 2 of
claims 52 and 70 is reversed.
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R2: The rejection of claims 35 and 36 under 35 U.S.C. § 102(e) for being
anticipated by Hamlin is affirmed.

R3: The rejection of claims 43 to 45, 48, 49, 52, 56 and 57, plus 64 to 66,
68, 70, 74 and 75 under 35 U.S.C. § 102(e) for being anticipated by Hill is
affirmed.

R4: The rejection of claims 46, 47, 50, 51, 53 to 55, 58 and 59 plus 67, 68,
71 to 73, 76, 77 and 82 to 85 under 35 U.S.C. § 103(a) for being obvious
over Hill in view of Ng is affirmed.

R5: The rejection of claims 60 to 62 plus 78, 79 and 80 under
35 U.S.C. § 103(a) for being obvious over Hill in view of Yong is affirmed.

R6: The rejection of claims 63 plus 81 under 35 U.S.C. § 103(a) for being
obvious over Hill in view of Nielsen is affirmed.

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

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peb

GREGORY J. PETRAS
INVOLVE TECHNOLOGY, INC.
6522 NORTH 27TH STREET
PHOENIX, AZ 85016
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