Ex Parte Shah et al

Board of Patent Appeals and Interferences

Mar 25, 2009

09742699 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AJIT S. SHAH, MADHUKAR THAKUR,
DAVE HU, and JOYCE THOM
____________________

Appeal 2008-2941
Application 09/742,6991
Technology Center 2100
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Decided:2 March 25, 2009
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Before LEE E. BARRETT, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on December 20, 2000. The real party in interest is PlanetIdeal, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 27 through 49. Claims 1 through 26 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appellants’ Invention
Appellants invented a method and system for facilitating the
electronic exchange of personal information between individuals on a
network. (Spec. 8:5-8.) Particularly, Figure 1 depicts an information
exchange system (102) including various client platforms (111, 113, 115,
117, 119) that interface with a database (160) via an interface layer (130), an
application layer (140), and an exchange engine layer (150). (Id. at 5:1-13.)
A registered user may provide to a vault (142) in the application layer (140)
a request to store personal information. The vault, in turn, queries a virtual
record manager (VRM) (154) in the exchange engine layer (150) to actually
carry out the request. (Id. at 5: 22-24, 6: 17-20.) Further, the registered user
utilizes the data exchange engine (156) in the exchange engine layer (150)
and permissions data (166) in the database (160) to allow pre-designated
registered users to view selected fields of personal information in the user’s
profile for a defined period of time. (Id. at 7: 27- 8:3.) Consequently, when
a first registered user requests to access the personal information of a second
registered user, the contact manager (148) in the application layer (140)
invokes the account manager (152) in the exchange engine layer (150) to
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determine which fields in the second user’s profile the first user is
authorized to access, and thereby limits the user’s access accordingly. (Id. at
8: 5-16.)

Illustrative Claim
Independent claim 27 further illustrates the invention as follows:

27. An information exchange system comprising:
an engine configured to determine an identity of a first party to
be provided personal information, determine whether a
selected field of the personal information of a second
party can be provided to the first party, and provide the
selected field of the personal information of the second
party to the first party; and
a database configured to store at least one field of the personal
information.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Liu U.S. 6,216,131 B1 Apr. 10, 2001

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Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 27 through 49 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Liu.

Appellants’ Contentions
Appellants argue that Liu’s synchronization software that passively
waits for a user to enter a name is not configured to consider, investigate or
calculate to ascertain the user name of the REX handheld device. Appellants
therefore submit that Liu does not teach an engine configured to determine
the identity of a first party to be provided personal information, as recited in
independent claim 27. (App. Br. 10-11; Reply Br. 4.)
Further, Appellants argue that Liu’s processing device that readily
maps user information from one data set in a first computer device to
another data set in a second computer device is not configured to determine
whether the data set about a first computer can be provided to a second
computer. Therefore, Appellants submit that Liu does not teach an engine
configured to (1) determine whether a selected field of the personal
information of a second party can be provided to a first party, and
(2) provide the selected field of the personal information of the second party
to the first party. (Appeal Br. 13; Reply Br. 5-6.)

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Examiner’s Findings/Conclusions
The Examiner finds that Liu’s disclosure of a synchronization
software that recognizes the user name entered in the REX wizard panel as
the identification associated with a specific REX card teaches an engine for
determining the identity of a first party to be provided personal information,
as recited in independent claim 27. (Ans. 10.) Further, the Examiner finds
that Liu’s disclosure of mapping data fields containing user information,
such as user-supplied contact lists, between a PC and the REX system
teaches (1) determining whether a selected field of the personal information
of a second party can be provided to the first party, and (2) providing the
field of the personal information of the second party to the first party, as
recited in independent claim 27. (Id. at 3-4, 10.) Therefore, the Examiner
finds that Liu anticipates claim 27. (Id. at 3-4.)

II. ISSUES
Have Appellants shown that the Examiner erred in finding that Liu
teaches an engine configured to (1) determine the identity of a first party to
be provided personal information, (2) determine whether a selected field of
the personal information of a second party can be provided to a first party,
and (3) provide the selected field of the personal information of the second
party to the first party?

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III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Liu
1. As depicted in Figure 1, Liu discloses a method and system for
mapping data fields containing user information (e.g. user-supplied contact
lists) from a desktop PC (100) to a handheld organizer (REX)(154). (Col. 2,
ll. 39, 58-60, col. 5, ll. 26-36.)
2. As shown in Figures 3A-G, the REX handheld device includes
a wizard panel (300a) for facilitating the synchronization of the user contact
information between the two computers. Particularly, the wizard panel
presents a series of prompts to the user to enter and/ or select the necessary
information, such as user name, calendar, contact files, memos and
preferences that the user wishes to synchronize. REX indicates that the
entered username is the identification associated with a specific REX card,
and it is used for configuration information. (Col. 5, ll. 36-40.)
3. Upon selecting the synchronize option, the REX system detects
and sets up mappings for each cardfile field that the user selected to
synchronize, and subsequently synchronizes the selected fields between the
two computers according to the synchronization information defined by the
user. (Col. 6, ll. 47-55, col. 7, ll. 9-27.)

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IV. PRINCIPLES OF LAW
Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). "[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." Id. at 1313.
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Anticipation
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
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
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1559, 1565 (Fed. Cir. 1992)). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

V. ANALYSIS
Independent claim 27 recites in relevant part an engine configured to
(1) determine the identity of a first party to be provided personal
information, (2) determine whether a selected field of the personal
information of a second party can be provided to a first party, and
(3) provide the selected field of the personal information of the second party
to the first party.
We first consider the scope and meaning of the terms “determine” and
“of”, which must be given their broadest reasonable interpretation consistent
with Appellants’ disclosure, as explained in In re Morris, 127 F.3d 1048
(Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
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Id. at 1054. See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating
that “claims must be interpreted as broadly as their terms reasonably
allow.”). Appellants’ Specification states the following:
The contact manager 148 manages the information about each
registered user's static contacts by storing these in the database 160
and retrieving it when necessary. In contrast, to manage dynamic
contacts the contact manager 148 invokes the VRM 154 and the data
exchange engine (DXE) 156. The contact manager 148 first invokes
the account manager 152 to verify that the user logging in to the
system 102 is a registered user and to retrieve the internal account ID
of the user.
(Spec. 8: 5-11.)
Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d at 1321.
Upon reviewing Appellants’ Specification, we fail to find a definition
for the claim term “determine” or for the term “of”. We therefore construe
cited terms consistently with their ordinary meaning as provided in a
dictionary.
The Examiner has not cited any authority as support for construing
these terms in the rejection of claims 27 through 49. Appellants, on the
other hand, assert that
The American Heritage Dictionary [defines the term
“determine” as] “to establish or ascertain definitely, as after
consideration, investigation or calculation.”
(App. Br. 9.)

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Further, Appellants assert that
The American Heritage Dictionary [defines the term “of” as]
“[w]ith reference to, about.”
(App. Br. 12.)
In the absence of the citation of any broader definition of the terms
“determine” and “of” by the Examiner, we will apply the definitions offered
by Appellants.
As set forth in the Findings of Facts section, Liu discloses a software
program in the REX handheld device including a wizard panel that prompts
a user to enter a username associated with a specific REX card. (FF. 2.) Liu
further discloses that, for each particular cardfile associated with an entered
username, the REX system maps or synchronizes the selected data fields
between the desk PC and the REX computer. (FF. 3.) We find that the REX
software assigns the entered username to each synchronization session or
cardfile in order to ascertain the identity of the session. Therefore, consistent
with the adopted definitions above, the REX program determines the identity
of each synchronization session between the two computers. We are not
persuaded by Appellants’ argument that the personal information being
exchanged between the two computers pertains to user’s information as
opposed to information pertaining to the PC. Appellants’ attempt to
distinguish the claim limitation over Liu based upon the nature of the
information as opposed to its function in the claim is unavailing. The nature
of the information itself pertains to non-functional descriptive material,
which is not entitled to any patentable weight.
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We recognize nonetheless that Liu’s disclosure does not teach any
control mechanism in either the REX system or the PC to enable the
computers to selectively restrict access to the data fields that can be
synchronized. Thus, we agree with Appellants that Liu does not teach an
engine configured to determine whether a selected field of the personal
information of a second party can be provided to a first party and providing
that selected field of the second party to the first party. It follows that
Appellants have shown that the Examiner erred in finding that Liu
anticipates independent claim 27.
Because claims 28 through 49 also recite the cited limitations,
Appellants have also shown error in the Examiner’s rejections of those
claims.

VI. CONCLUSION OF LAW
Appellants have shown that the Examiner erred in rejecting claims 27
through 49 as set forth above.

VII. DECISION
We reverse the Examiner’s decision to reject claims 27 through 49.

REVERSED

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