Ex Parte Porter et alDownload PDFBoard of Patent Appeals and InterferencesAug 5, 201010429533 (B.P.A.I. Aug. 5, 2010) Copy Citation 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. 10/429,533 05/05/2003 H. Keith Porter RPS920020153US1 (113) 2611 50594 7590 08/06/2010 CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER ANDERSON, FOLASHADE ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 08/06/2010 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 H. KEITH PORTER, DAVID GRINING, SCOTT W. JENSEN, and MICHAEL CROASDAILE ____________ Appeal 2009-008279 Application 10/429,533 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, 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 2009-008279 Application 10/429,533 2 STATEMENT OF THE CASE H. Keith Porter, et al. (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE.2 THE INVENTION The invention is a method of managing an electronic catalog. Specification 1:1-2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for immediate escalation of a rule change request from a customer to change a rule that applies to a catalog associated with the customer, wherein the rule is a member of a set of rules that are used to create the catalog and the request is escalated until it reaches an owner of the rule, and wherein the catalog and the set of rules are stored and executed on networked computer hardware, the method comprising the steps of: providing a means for the customer to submit the rule change request; receiving the rule change request by a software module associated with the catalog; 2 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Jul. 9, 2008) and Reply Brief (“Reply Br.,” filed Nov. 30, 2008), and the Examiner’s Answer (“Answer,” mailed Sep. Sep. 29, 2008). Appeal 2009-008279 Application 10/429,533 3 processing the request to see if the rule change request has been pre-approved, wherein if the request has been pre-approved an automated response indicating approval of the request is sent to the customer and the set of rules are changed to reflect the approved rule change, and if the request has not been pre-approved; locating the owner of the rule; forwarding the request to the owner of the rule; alerting the owner of the rule to the presence of the request; and, sending a response from the owner of the rule to the customer, wherein the response indicates an approval of the request, a disapproval of the request with a reason for the disapproval, or a subsequent request from the owner of the rule to hold a dialog with the customer to discuss the rule change request, and wherein if the response is an approval, the set of rules are changed to reflect the approved rule change. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: McDonough Skladman Smith US 6,070,142 US 6,400,810 B1 US 2004/0148201 A1 May 30, 2000 Jun. 4, 2002 Jul. 29, 2004 How Blaze Advisor Works, Business White Paper Blaze Advisor, HNC Software, 2001. [Hereinafter, Blaze.] The following rejection is before us for review: 1. Claims 1-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Blaze, McDonough, Smith, and Skladman. Appeal 2009-008279 Application 10/429,533 4 ISSUE The issue is whether claims 1-19 are unpatentable over 35 U.S.C. § 103(a) over Blaze, McDonough, Smith, and Skladman. Specifically, the issue is with whether the combination of Blaze and Smith teaches the steps of receiving a rule change request and processing the request recited in claim 1, as asserted by the Examiner. FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. Blaze describes creating custom rules based applications for the Internet, such as a website application for an insurance company called Century Coverage. See pgs. 6-7. 2. Blaze describes that the rules of the customer application can be changed by a user using the rules maintenance application, which has a wizard and templates for changing the rules. Pg. 13-14. 3. Blaze states: However, other steps have rules that change frequently. In this category, one set of rules is “owned” by the underwriting department, another by the regulatory affairs department, and others by marketing and sales. Blaze Advisor Innovator allows you to take these rules, create templates for them, and then enable non-technical people to safely edit them using intuitive rule maintenance applications. With Innovator, Century Coverage Appeal 2009-008279 Application 10/429,533 5 transfers responsibility for application modification, customization, and personalization from the IT department to the business analysts and managers in the various departments who are responsible for the rules. Pg. 13 4. Blaze teaches that information about rule changes are collected and stored in a repository when rules are changed and that [t]he most common information is simply who changed a rule, when and why.” Pg. 13. See also pg. 14. 5. Smith describes an insurance management system for managing insurance contracts using pre-defined business rules. Smith [0001]. 6. Smith describes generating an insurance policy and using business rules to approve or reject a particular policy. Smith [0177]. ANALYSIS In the rejection, the Examiner found that Blaze implicitly teaches the step of receiving a rule change request in passages of pages 13-15 (Answer 13-15) but admitted that Blaze does not explicitly describe the processing step, which includes sending a response that indicates an approval, disapproval, or a subsequent request; and includes changing the set of rules if the response is approval. Answer 4-5. The Examiner asserts that paragraph [0177] of Smith teaches these steps. Answer 5-6. The Appellants argue that this combination of Blaze and Smith does not teach these limitations because: 1) the Examiner’s assertion that Blaze implies receiving a rule change request is factually unsupported (App. Br. 9- 11) and 2) paragraph [0177] of Smith does not describe a rule approval Appeal 2009-008279 Application 10/429,533 6 process but instead teaches using rules to approve or reject changes to an insurance policy (App. Br. 11-12 and Reply Br. 12). We agree with the Appellants. The Examiner quotes portions of pages 13-15 of Blaze to find that Blaze implies a step of “receiving a rule change request by a software module associated with the catalog.” See Answer 15-16. See also FF 1-4. However, while these passages describe that rules can be changed using a rules maintenance application and that information about the change is recorded (FF 1-4), these passages do not describe expressly or implicitly that a request for a rule change was received by a software module. We note that, contrary to the Examiner’s argument, Blaze teaches that non-technical people, such as business analysts and mangers of various departments, can make edits themselves instead of IT departments. FF 3. The Examiner has not established that Blaze implicitly teaches a step of receiving a rule change request by a software module associated with the catalog. Further, we find that the cited passage of Smith does not cure this deficiency. Paragraph [0177] of Smith teaches generating an insurance policy and describes using business rules to approve or reject a particular policy. FF 5. This paragraph of Smith does not teach approving or rejecting a rule change request or changing a set of rules if the request is approved. This paragraph of Smith relates to the use of business rules and not to processing and responding to a request to change the business rules. Therefore, we find that the Examiner has not established that one of ordinary skill in the art would have been led by Blaze and Smith to the claimed steps of receiving a rule change request and processing the rule change request as recited in claim 1. We note that the Examiner did not Appeal 2009-008279 Application 10/429,533 7 apply McDonough or Skladman to teach these limitations. See Answer 6-7. Accordingly, we find that the Appellants have overcome the rejection of claim 1, and claims 2-9, dependent thereon, under 35 U.S.C. § 103(a) over Blaze, McDonough, Smith, and Skladman. Independent claim 10 recites an apparatus that includes a software module that is structured to processes a rule change request and if the request is pre-approved, changes the set of rules. The Examiner applied the same rationale to reject claim 10 as discussed above to reject claim 1. Answer 4-7. For the same reasons as above, we find that the Appellants have overcome the rejection of claims 10, and claims 11-19, dependent thereon, under 35 U.S.C. § 103(a) over Blaze, McDonough, Smith, and Skladman. DECISION The decision of the Examiner to reject claims 1-19 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007).. REVERSED mev CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON FL 33487 Copy with citationCopy as parenthetical citation