Ex Parte Porter et al

Board of Patent Appeals and Interferences

Aug 5, 2010

10429533 (B.P.A.I. Aug. 5, 2010)

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