Ex Parte Wu

Board of Patent Appeals and Interferences

Dec 29, 2009

10918219 (B.P.A.I. Dec. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YUH-CHERNG WU
________________

Appeal 2009-010593
Application 10/918,219
Technology Center 2100
________________

Decided: December 29, 2009
________________

Before JAMES D. THOMAS, THU A. DANG, and DEBRA K.
STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-010593
Application 10/918,219

2
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner's rejection of claims 1-28. Claims 29-31 were withdrawn. (App.
Br. 1). We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We AFFIRM.

STATEMENT OF THE CASE
According to Appellant, the invention relates to a knowledge base for
solving problems (Spec. [0001]).

Exemplary Claim
1. A computer program product tangibly embodied in a
machine-readable medium, the computer program product
including instructions that, when executed, search for
information to identify an expert capable of solving a problem,
the computer program product being configured to:

receive an electronic message comprising a request to
solve the problem;

in response to the received electronic message and
without human intervention, process the received request by:

determining if an expert is necessary to solve the
problem,

conditioned upon a determination that an expert is
necessary, triggering an expert locator module that
searches an enterprise server for a knowledge network to
solve the problem, wherein:

the enterprise server is configured to store
information for a plurality of knowledge networks,
and

Appeal 2009-010593
Application 10/918,219

3
each knowledge network comprises
information for a virtual community of experts
capable of solving a problem, and

if a knowledge network to solve the problem
is located, search and identify at least one expert
within the virtual community of the knowledge
network that is capable of solving the problem in
the received request; and

perform a subsequent process for solving a
problem that involves the identified expert.

Prior Art
The Examiner relies on the following prior art references:
Gusick 2001/0047270 A1 Nov. 29, 2001

XPERTSHARE COMPREHENSIVE FEATURES & BENEFITS, (Xpert
Universe Dec. 2003) (hereinafter “XpertSHARE”).

Examiner's Rejection
The Examiner rejected claims 1-28 under 35 U.S.C. §103(a) as
unpatentable over Gusick and XpertSHARE.1

THE §103(a) REJECTION OVER GUSICK AND XPERTSHARE
Appellant contends Gusick fails to disclose that 'processing' features
are performed in response to the received electronic message, without
human intervention (App. Br. 12). Instead, Appellant argues, Gusick

1 The Examiner’s rejection of claims 1-28 under 35 U.S.C. §112, first
paragraph set forth in the Final Rejection of January 31, 2008 was
withdrawn in the Examiner’s Answer of December 29, 2008. (Ans. 11-12).
Appeal 2009-010593
Application 10/918,219

4
discloses a system where a customer and customer service dispatcher are
involved in the “processing” (id.).
Appellant also contends the combination of Gusick and XpertSHARE
is not a “‘simple substitution of one known element for another to obtain
predictable results’” (id.). Appellant further argues XpertSHARE does not
disclose or suggest potential features that could be performed without human
intervention and only provides a “high-level, bullet-point marketing
summary” lacking processing details (App. Br. 13-14).
The Examiner found that although Gusick fails to teach locating an
expert without human intervention (Ans. 4), Gusick does teach locating an
expert albeit with human intervention (id. at 15).
Further, the Examiner found (1) XpertSHARE makes it “clear that
one skill[ed] in the art could/would have combined or substituted their tools
with existing business process[es]”; (2) automating or implementing a
manual process in software is notoriously well known and one of ordinary
skill in the art could have programmed this; and (3) even without
XpertSHARE’s teaching, one of ordinary skill in the art could/would have
modified Gusick's method (id. at 15-16).

ISSUE
Has Appellant shown the Examiner erred in concluding that it would
have been obvious to combine the expert locating system of Gusick with the
automated expert location software of XpertSHARE?

Appeal 2009-010593
Application 10/918,219

5
FINDINGS OF FACTS
We find as follows:
1. XpertSHARE has the (1) "capability to access, manage and
leverage organizational expertise," and (2) "[r]outes to the best available
expert based on criteria established by management" (XpertSHARE 1)
(emphasis omitted).
2. XpertSHARE is delivered through a web-enabled PC
(XpertSHARE at 2).

PRINCIPLES OF LAW
Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
New Arguments
New arguments raised in the Reply Brief, which could have been
made in the Appeal Brief, are untimely and will not be considered on appeal.
See Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989
Appeal 2009-010593
Application 10/918,219

6
(Fed. Cir. 2006) (argument raised for the first time in the reply brief that
could have been raised in the opening brief is waived) (citation omitted).
Automation of a Known Process
It is generally obvious to automate a known manual procedure or
mechanical device. Our reviewing court stated in Leapfrog Enters. Inc. v.
Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill
in the art would have found it obvious to combine an old electromechanical
device with electronic circuitry “to update it using modern electronic
components in order to gain the commonly understood benefits of such
adaptation, such as decreased size, increased reliability, simplified operation,
and reduced cost.” Id. at 1163. “The combination is thus the adaptation of
an old idea or invention … using newer technology that is commonly
available and understood in the art.” Id.

ANALYSIS
Appellant has failed to present any arguments or evidence to
overcome the Examiner’s findings regarding Gusick. Specifically,
Appellant merely describes Gusick, failing to explain the deficiencies of
Gusick or why the Examiner's erred in his findings. (App. Br. 11-12).
In the Reply Brief, Appellant argues “[n]o teaching of an ‘expert
locator module’ is provided in Gusick, nor is a teaching provided in
XpertSHARE." (Reply Br. 2). However, Appellant failed to make this new
and specific argument in the Appeal Brief. Thus, this argument is deemed
waived, as it could have been made in the Appeal Brief and was not. See
Optivus, 469 F.3d at 989.
Appeal 2009-010593
Application 10/918,219

7
With respect to Appellant’s arguments regarding XpertSHARE, we
disagree. We find XpertSHARE is an example of an expert locator system
that is automated, as XpertSHARE (1) "[r]outes to the best available expert
based on criteria established by management" and (2) “is delivered through a
web-enabled PC” (FF 1-2). Thus, we find one of ordinary skill in the art
would recognize that XpertSHARE is a software product, as it is delivered
through a PC, that automates a manual process of locating an expert.
We agree with the Examiner’s findings that (1) XpertSHARE teaches
one of ordinary skill in the art that their tools would have combined with or
substituted for existing business processes; and (2) automating or
implementing a manual process in a piece of software is notoriously well
known (Ans. 15-16). Thus, one of ordinary skill in the art would have
modified Gusick's method to be automated in software even without the
teaching of XpertSHARE (id.). Specifically, as Gusick teaches the features
of exemplary claim 1 with human intervention, we find that it would be
obvious to one of ordinary skill in the art to automate a known manual
procedure. See Leapfrog, 485 F3d at 1163. Thus, we agree with the
Examiner that it would be obvious to modify Gusick's method even without
the teaching of XpertSHARE.
Accordingly, Appellant has failed to persuade us of error in the
Examiner's conclusion of obviousness with respect to exemplary claim 1.
With regard to independent claim 12, Appellant presents similar arguments
made with respect to representative claim 1 (See App. Br. 14-15). Further,
Appellant argues independent claims 21 and 27 for the reasons described
above with regard to exemplary claim 1. Thus, for the reasons discussed
Appeal 2009-010593
Application 10/918,219

8
above, with respect to exemplary claim 1, we sustain the Examiner's
rejection of:
(1) independent claim 1 and claims 2-11 which depend therefrom;
(2) independent claim 12 and claims 13-20 which depend therefrom;
(3) independent claim 21 and claims 22-26 which depend therefrom;
and
(4) independent claim 27 and claim 28 which depends therefrom.

CONCLUSION
Appellant has not shown the Examiner erred in concluding that it
would have been obvious to combine Gusick with XpertSHARE.
Accordingly, Appellant has not shown the Examiner erred in rejecting
claims 1-28 under 35 U.S.C. § 103(a).

DECISION
The Examiner's rejection of claims 1-28 under 35 U.S.C. §103(a) 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

nhl

FISH & RICHARDSON, P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022