Ex Parte Robb

Board of Patent Appeals and Interferences

Sep 24, 2009

09877926 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL H. ROBB
____________

Appeal 2009-004312
Application 09/877,926
Technology Center 3600
____________

Decided: September 25, 2009
____________

Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-59. We have jurisdiction under 35 U.S.C. § 6(b). (2002) An
Oral Hearing was held on September 9, 2009.

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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a system and method for providing a collaboration tool
where advisors, clients and/or other participants may access client data by
interaction in common forum, such that consistent and accurate collaboration of
resources and information may be achieved.
(Spec. 1:12-15).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer implemented for enabling a financial services client and one
or more financial service provider participants to collaborate as a team comprising
the steps of:
enabling a collaboration team comprising one or more participants to be
defined; providing a common electronic forum containing client data wherein
client data is accessible by one or more financial service provider participants
wherein each participant has predefined authorizations; and
enabling the financial services client to interact with one or more financial
service provider participants through the common electronic forum wherein the
common electronic forum further enables interaction among the one or more
participants through the common forum where client data is accessible within the
scope of access authorized to each participant.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Carter 5,787,175 Jul. 28, 1998
Zucknovich 5,940,843 Aug. 17, 1999
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Day US 6,243,733 B1 Jun. 5, 2001
Moran US 6,430,542 B1 Aug. 6, 2002

The following rejections are before us for review.
The Examiner rejected claims 1-59 under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
The Examiner rejected claims 1-5, 7-19, 22-32, 34-46, 49-54, and 57-58
under 35 U.S.C. § 103(a) as being unpatentable over Zucknovich.
The Examiner rejected claims 6, 20-21, 33, and 47-48 under 35 U.S.C.
§ 103(a) as being unpatentable over Zucknovich in view of Moran.
The Examiner rejected claims 55-56 stand under 35 U.S.C. § 103(a) as being
unpatentable over Zucknovich in view of Carter.
ISSUES
Has Appellant shown that the Examiner erred in rejecting claims 1-59 under
35 U.S.C. § 112, on the grounds that those skilled in the art would understand that
the words, "collaborate" "enabling" "to interact" "forum," "events" and "actions,"
"client" and "participants" "library of resources" and "system" are definite when
the claims are read in light of the specification?
Has Appellant shown that the Examiner erred in rejecting claims 1-5, 7-19,
22-32, 34-46, 49-54, and 57-58 on appeal as being unpatentable under 35 U.S.C.
§ 103(a) over Zucknovich on the grounds that a person with ordinary skill in the
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art would understand that the disclosure in Zucknovich of a contributor posting a
report on the repository server and an investor downloading same from the server
constitutes interaction thereby meeting the claim language; and whether the
claimed client data can distinguish patentability based on the content of the
involved data?
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject matter pertains.’”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”)

Novelty/Obviousness Nonfunctional Descriptive Material
When “non-functional descriptive material” is recorded or stored in a
memory or other medium (i.e., substrate) it is treated as analogous to printed
matter cases where what is printed on a substrate bears no functional relationship
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to the substrate and is given no patentable weight. See In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983).
Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the descriptive
material will not distinguish the invention from the prior art in terms of
patentability.)
The analogous-art test requires that the Board show that a reference is either
in the field of the applicant's endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on that reference as a basis
for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Appellant’s Specification does not specifically define the term “forum”,
nor does it utilize the term contrary to its customary meaning.
2. The Specification only discusses forums in the context of “the advisors
(or authorized participants) 102, 104, and 106 may communicate with client 110
as well as each other through password protected forums to retrieve various
documents and information from fellow advisors (or participants) and/or from
client 110 through collaboration tool 120 of the present invention.” (Spec. 13:5-8).
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3. The ordinary and customary definition of the term “forum” as defined
inter alia by Merriam Webster’s Collegiate Dictionary (10th ed.) is: a medium (as
a newspaper) of open discussion or expression of ideas.
4. Zucknovich discloses that a contributor via contributor workstations 14,
16, 18, 19 are used by brokerage and investment banking firms to submit reports to
the repository server 2. (col. 5, ll. 62-64).
5. The reports in Zucknovich are investment research reports. (col. 5, l. 44).
6. Zucknovich discloses
[t]he repository server 2 provides investors with lists of
reports received from the contributor workstations 14, 16,
18, 19 and allows investors to request lists of reports that
fit certain criteria. The investor can select reports from
these lists to down-load, view and/or print. Generally,
lists of reports can be generated by the web server 4.
(col.7, ll. 26-31).
7. Zucknovich discloses
[t]he contributor of a report can be notified that a
particular investor has accessed that report. The
repository server 2 maintains for each report a list of
those who accessed that report. The repository server 2
can transmit that list to the report's contributor on a
regular basis and/or when requested by the contributor.
(col.7, ll. 32-38).
8. Zucknovich discloses
[w]henever an investor makes a query for a list of
reports, the investor's Internet browser sends an HTTP
(hypertext transfer protocol) request that represents what
the user wants to the web server 4. If the request does
not have a verification signature attached to it, the web
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server 4 sends a command back to the Internet browser,
causing it to prompt the user for an ID and password.
The Internet browser will then return this information to
the web server 4, which will verify that the user is
entitled to access the reports stored at the repository
server 2. If the user is verified, the Internet browser will
be given a verification signature. If not, the user will be
prompted again for his ID and password. Once access is
verified, the web server 4 will start the CGI program
named in the original HTTP request, along with any run-
time parameters that are specified in the request. The
CGI program first verifies that the user making the
request (whose ID is passed to the CGI program by the
web server 4 through, for example, an environment
variable) is the only one using that ID at that moment.
(col. 8, ll. 42-61).
9. The Specification describes using technology to overcome information
dissemination problems in that
…technologies may be utilized for coordinating
administrative operations, disseminating information or
documents for review and retention, individual access to
investment information, reference and research libraries
and providing information inputs for ongoing financial,
legal, investment and other support and functions. (Spec.
3: 4-7).
10. The ordinary and customary definition of the term “interaction” as
defined inter alia by Merriam Webster’s Collegiate Dictionary (10th ed.) is:
mutual action or influence.

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ANALYSIS
1. We will not sustain the rejection of claims 1-59 under 35 U.S.C. § 112,
second paragraph.
2. We have carefully considered the arguments addressing the rejections
made under 35 U.S.C. § 103(a) and find, on balance and in light of the breadth of
the claims, the facts support the Examiner’s position and thus the Appellant’s
arguments are not persuasive as to error in the rejections. We thus affirm the
rejections of claims 1-59 made under 35 U.S.C. § 103(a).
1. 35 U.S.C. § 112, Second Paragraph Rejection
The Examiner maintains that claims 1-59 are indefinite because the claims
use the follow words which the Examiner considers to be confusing: "collaborate"
"enabling" "to interact" "forum," "events" and "actions," "client" and "participants"
"library of resources" and "system." (Ans. 5). We disagree with the Examiner.
Each of the terms when read in light of the Specification can be reasonably
understood to render a valid interpretation of the involved claim language.
For example, the Examiner maintains that it is unclear whether the system
recited in claims 28-54 is either a method or an apparatus. (Answer 6). However,
our review of the Specification shows that the referenced system 100 is an
apparatus comprised of a communication device 103 and a connected network 108,
and thus its use in the claims as an apparatus is definite. The test for definiteness
under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d
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1081, 1088 (Fed. Cir. 1986) (citations omitted). Accordingly, we are persuaded of
error in the rejection.
2. The 35 U.S.C. § 103(a) Rejections
Appellant’s arguments against each of the 35 U.S.C. § 103(a) rejections are
based on perceived deficiencies of Zucknovich. Inasmuch as Appellant raises the
same issues with respect to each of these rejections, we discuss the rejections
together, addressing each of Appellant’s arguments in turn.
Initially, we note that the Appellant argues claim 1 as representative of all
independent claims. Correspondingly, representative claim 1 will decide the
appeal of the claims 2-5, 7-19, 22-32, 34-46, 49-54, and 57-58.
Appellant argues that “[t]here is no communication or ‘interaction’ between
the investors and contributors, whereas claim 1 recites "enabling the financial
services client to interact with one or more financial service provider participants
through the common electronic forum." (Appeal Br. 12).
We disagree with Appellant. Appellant’s Specification does not specifically
define the term “forum”, nor does it utilize the term contrary to its customary
meaning (FF 1, 2). The ordinary and customary definition of the term “forum” is
a medium (as a newspaper) of open discussion or expression of ideas. (FF 3).
We find that in Zucknovich contributors via contributor workstations are used by
brokerage and investment banking firms to submit or post reports to the repository
server 2. (FF 4). The reports are investment research reports. (FF 5). In turn, [t]he
repository server 2 provides investors with lists of reports received from the
contributor workstations and the investor can select reports from these lists to
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down-load, view and/or print (FF 6). The ordinary and customary definition of the
term “interaction” is defined inter alia as mutual action or influence (FF 10). The
repository server 2 thus serves as a common or mutual resource medium for
investors, influencing them by the analysis of the reports which are downloaded
and read. We thus find that the process of a contributor posting a report on the
repository server and an investor subsequently downloading same from the
repository server constitutes interaction through a common forum thereby meeting
the claim language.
Appellant next argues that “because the content of the reports describe
neither the research contributors nor the recipients of the report, the reports cannot
be reasonably considered ‘client data’… That is, the content of the research
pertains to third parties, and thus is clearly not ‘client data,’ as alleged by the
Examiner.” (Appeal Br. 11). We disagree with Appellant.
Appellant is effectively arguing a patentable distinction based on the content
of the involved data. Patentable weight need not be given to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir.
1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte
Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential) (Federal Circuit Appeal
No. 2006-1103; affirmed without written opinion Aug. 17, 2006). Claim 1 only
requires that client data be accessible within the scope of access authorized to each
participant and falls short of tying function of the content to the scope of the access
authorized to each participant.
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Appellant also argues the Examiner “failed to provide evidence” for a
dependent claim which recites "wherein the common forum provides modification
information associated with client data wherein modification information
comprises one or more actions associated with one or more participants.” (Appeal
Br. 12). However, as found supra, Zucknovich discloses modification information
in the form of a list of those who accessed a given report (FF 7), which accessing is
read as an action associated with the investor/participant. Since the Examiner did
make reference to the use of such a “client history database” as evidence of this
function (Ans. 6), we do not find error in the Examiner’s rejection with respect to
this contention.
Appellant finally argues that Zucknovich is non-analogous art because
Zucknovich's field of endeavor is the electronic
distribution of research reports to authorized recipients,
and the particular problem addressed therein is allowing
a research provider to filter or restrict opinions and
reports, or somehow indicate to clients and investors that
a company is under review. (Appeal Br. 12).
We disagree with Appellant. The analogous-art test requires that the Board
show that a reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was concerned in
order to rely on that reference as a basis for rejection. See In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent
to the problem based on the judgment of a person having ordinary skill in the art.
See Oetiker at 1447. (“[I]t is necessary to consider ‘the reality of the
circumstances,’ in other words, common sense-in deciding in which fields a person
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of ordinary skill would reasonably be expected to look for a solution to the
problem facing the inventor.” Id. (quoting In re Wood, 599 F.2d 1032, 1036
(CCPA 1979)). In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
In this case, we characterize the general problem facing the Appellant as
optimizing technology to disseminate information or documents for review and
retention, individual access to investment information, reference and research
libraries and providing information inputs for ongoing financial, legal, investment
and other support and functions. (FF 9). This problem is congruent with that
addressed by Zucknovich in the selective dissemination of investment reports to
investors by contributors who effectively create a library of data reports on the
repository server for access by investors (FF 4-6, 8). Thus, we find that
Zucknovich is reasonably pertinent to the problem the Appellant was trying to
solve, because it is concerned with the general problem of disseminating
investment information, and we thus conclude it is analogous art.
Appellant does not advance additional arguments to the other, separate
rejections made under 35 U.S.C. § 103(a). Accordingly, we will not sustain the
remaining rejections of the claims for the reasons set forth above.

CONCLUSIONS OF LAW
We conclude the Appellant has shown that the Examiner erred in rejecting
claims 1-59 under 35 U.S.C. § 112, second paragraph.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-5, 7-19, 22-32, 34-46, 49-54, and 57-58 under 35 U.S.C.
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§ 103(a) as allegedly being unpatentable over Zucknovich.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 6, 20-21, 33, and 47-48 under 35 U.S.C. § 103(a) as allegedly
being unpatentable over Zucknovich in view of Moran.
We conclude the Appellant has not shown that the Examiner erred
in rejecting claims 55-56 stand under 35 U.S.C. § 103(a) as allegedly being
unpatentable over Zucknovich in view of Carter.

DECISION
The decision of the Examiner to reject claims 1-59 is AFFIRMED.
AFFIRMED.

JRG

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