Ex Parte Haller et al

Patent Trial and Appeal Board

Nov 13, 2012

10950790 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOCHEN HALLER and PHILIP ROBINSON
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Appeal 2010-008768
Application 10/950,790
Technology Center 3600
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008768
Application 10/950,790

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 20, 23, 26, 28-29, 31-37, and 39-45 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C. §
6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a trust registry to
provide information for trusted third parties (Spec. 1:14-19). Claim 20,
reproduced below with the numbering in brackets added, is representative of
the subject matter on appeal.

20. A computer-implemented method comprising:
monitoring, at a trust service, a business capacity of a
potential partner entity which is participating in an existing
business collaboration, wherein the business capacity includes
reliability, expertise, or availability characteristics associated
with the potential partner entity;
[1] receiving, at the trust service from a requesting entity,
a trust determination request to perform a trust determination on
the potential partner entity, the request identifying the potential
partner entity and specifying requirements of a desired business
collaboration between the requesting entity and the potential
partner entity;
[2] selecting, at the trust service, a trusted third party
responsible for performing the trust determination based on a
type of the desired business collaboration identified in the trust
determination request;
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Application 10/950,790

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determining, at the trust service, using information
received from the selected trusted third party, whether the
potential partner entity satisfies the specified requirements
based at least upon the monitored business capacity of the
potential partner entity in the existing business collaboration;
authorizing, at the trust service, the desired business
collaboration if determining that the potential partner entity
satisfies the specified requirements; and
facilitating and monitoring communications relating to
the authorized desired business collaboration between the
requesting entity and the potential partner entity at the trust
service.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejections:
Eisenhart US 2001/0047276 A1 Nov. 29, 2001
Stowell US 2002/0099579 A1 Jul. 25, 2002
King US 2005/0091172 A1 Apr. 28, 2005

The following rejection is before us for review:
1. Claims 20, 23, 26, 28-29, 31-37, and 39-451 are rejected under
35 U.S.C. § 103(a) as unpatentable over Eisenhart, Stowell, and King.

FINDINGS OF FACT
We find the findings of fact in the Analysis section below are
supported by at least a preponderance of the evidence2.

1 Claim 38 has been indicated as having been canceled (Br. 3).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2010-008768
Application 10/950,790

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ANALYSIS
The Appellants argue that the rejection of claim 20 is improper
because the cited prior art does not disclose claim limitation [1] (Br. 8-10,
Reply Br. 2-3). In contrast, the Examiner has determined that Eisenhart
discloses the cited claim limitation at paragraphs [0013]-[0014] (Ans. 4-5,
14-15).
We agree with the Appellants. Claim limitation [1] requires:
[1] receiving, at the trust service from a requesting entity,
a trust determination request to perform a trust determination
on the potential partner entity, the request identifying the
potential partner entity and specifying requirements of a
desired business collaboration between the requesting entity
and the potential partner entity[.]
(Emphasis added).
Eisenhart at paragraphs [0013]-[0014] does not disclose a portion of
claim limitation [1] and the rejection of record is therefore not sustained.
While Eisenhart at paragraph [0014] does disclose that the system
determines whether a potential business partner is a good match by
comparing the member requirement from both the members perspective and
the potential business partners perspective, it does not specifically disclose
elements of claim limitation [1] requiring “receiving … a trust
determination request to perform a trust determination on the potential
partner entity.” (Emphasis added). Eisenhart at paragraph [0014] prioritizes
the good matches and the list is evaluated by the member. Here, Eisenhart at
paragraph [0014] does not specifically disclose the step of receiving a trust
determination request to perform a trust determination of the potential party
entity with the request identifying the potential partner but rather instead
scans several potential business partners. For these reasons the rejection of
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Application 10/950,790

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claim 20 and its dependent claims is not sustained. Claims 31-32 contain a
similar limitation and the rejection of these claims and their dependent
claims is not sustained for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 20, 23, 26, 28-29, 31-37, and 39-
45 is reversed.

REVERSED

hh