Ex Parte Rafal et al

Board of Patent Appeals and Interferences

May 25, 2007

09778281 (B.P.A.I. May. 25, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD RAFAL,
ANDERS ECKMAN, and SIDNEY PROBSTEIN
____________

Appeal 2006-3144
Application 09/778,281
Technology Center 2100
____________

Decided: May 25, 2007
____________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and ALLEN R.
MACDONALD, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
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Appellants’ claimed invention relates to a method of creating and
hosting customized online gatherings in which one or more server computers
communicate via the Internet with user operated Web browsers.
We affirm.
Claim 1 is illustrative of the invention and it reads as follows:
1. The method of using the Internet to create and host a customized
online gathering of participants which occurs at a scheduled time
comprising, in combination, the steps of:
providing at least one server computer connected to the Internet for
communicating with a plurality of client computers operated by users which
are also connected to the Internet,
storing at said server computer:
a) template data defining one or more template web pages,
each of said template web pages implementing a predetermined
activity in which said users may participate as part of said online
gathering,
b) an identification of said first user as the host of said
online gathering,
c) a guest list accepted from said first user identifying a
plurality of other invited users,
d) a specification of a scheduled time or scheduled time
range during which the online gathering will occur, and
e) customization data accepted from said first user,
combining said template data and said customization data to create
customized web pages which together implement said customized online
gathering,
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establishing at said scheduled time or during said scheduled time
range an authorized connection via the Internet between said server
computer and each of said invited users that choose to participate in said
gathering and,
responding to requests received from any given one of said invited
users during said online gathering by transmitting to said given user a
requested one of said customized Web pages.
The Examiner relies on the following prior art references to show
unpatentability:
Tatham US 6,223,177 B1 Apr. 24, 2001
(filed Nov. 19, 1998)
Maurille US 6,484,196 B1 Nov. 19, 2002
(filed Mar. 20, 1998)
Sluiman US 6,590,589 B1 Jul. 8, 2003
(filed Nov. 29, 1999

Claims 1-12 stand rejected under 35 U.S.C. § 103(a). As evidence of
obviousness, the Examiner offers Tatham in view of Maurille with respect to
claims 1, 2, 6-10, and 12, and adds Sluiman to the basic combination with
respect to claims 3-5 and 11.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed waived [see 37
CFR § 41.37(c)(1)(vii)].

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ISSUE
Under 35 U.S.C § 103(a), has the Examiner established a prima facie
case of obviousness based on Tatham taken in combination with Maurille
with respect to claims 1, 2, 6-10, and 12 with the further addition of Sluiman
with respect to claims 3-5 and 11?

PRINCIPLES OF LAW
As a general proposition in an appeal involving a rejection under
35 U.S.C. § 103, an Examiner is under a burden to make out a prima facie
case of obviousness. If that burden is met, the burden of going forward then
shifts to 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. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); and In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). ).
Furthermore, “‘there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’ . . . [H]owever,
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1336 (Fed. Cir. 2006)).

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ANALYSIS
With respect to independent claims 1 and 8, Appellants’ arguments in
response to the Examiner’s 35 U.S.C. § 103(a) rejection initially assert a
failure by the Examiner to establish a prima facie case of obviousness since
all of the claimed limitations are not taught or suggested by the applied prior
art references. In particular, Appellants focus on the alleged deficiency of
Tatham in disclosing the claimed feature of storing template data defining
template web pages which implement activities for user participation.
According to Appellants (Br. 9-10; Reply Br. 3-4), the workgroup creation
template 170 of Tatham referenced by the Examiner is merely a fill-in-the
blanks form completed by a user to create a workgroup.
As explained by the Examiner (Answer 11-12), however, in the
showing of correspondence with the claimed subject matter, Tatham’s
disclosure (col. 4, ll. 55-60) of the workgroup creation template 10 is used
along with the disclosure of the dedicated site 180 which, in the terminology
used by Tatham, is considered a customizable private office suite (Tatham,
col. 4, ll. 19-34 and col. 4, ll. 66 through col. 5, ll. 26). With this in mind,
we see no error in the Examiner’s finding that the workgroup creation
template 170 in Tatham is a template which defines web pages since it is
used to create the private office suite.
It is further our view that the ordinarily skilled artisan would
recognize and appreciate, from Tatham’s description of the applications
contained in the private office suite, that such customizable private office
suite contains web pages which implement activities for user participation.
As just one example, the project collaboration tool included in Tatham’s
private office suite is described as providing a “Web sit(sic) environment for
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creating , implementing and managing projects.” (Tatham, col. 6, ll. 53-57,
and Fig. 3D).
We also find no error in the Examiner’s establishment (Answer 4) of
proper motivation for adding the conference time scheduling features of
Maurille to the group conferencing teachings of Tatham. As pointed out by
the Examiner (Answer 13), Appellants’ arguments (Br. 10) do not attack the
Examiner’s assertion of obviousness to the ordinarily skilled artisan of
adding a time scheduling application to Tatham’s private office suite of
applications. Instead, Appellants’ arguments rely on those previously made
regarding the alleged deficiency of Tatham in disclosing a template of
customizable web pages, which arguments we found to be unpersuasive for
all of the reasons discussed supra.
For the above reasons, since it is our opinion that the Examiner’s
prima facie case of obviousness has not been overcome by any convincing
arguments from Appellants, the Examiner’s 35 U.S.C. § 103(a) rejection,
based on the combination of Tatham and Maurille, of independent claims 1
and 8, as well as dependent claims 2, 7, 9, and 12 not separately argued by
Appellants, is sustained.
Turning to a consideration of the Examiner’s 35 U.S.C. § 103(a)
rejection of separately argued dependent claims 6 and 10 based on the
combination of Tatham and Maurille, we sustain this rejection as well. We
find no error in the Examiner’s position (Answer 15-16) that the disclosure
of Maurille describes the collaboration of web servers as claimed. We are
further of the opinion that the ordinarily skilled artisan would recognize and
appreciate that the suite of applications provided in the private office suite of
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Tatham, such as the collaboration tool illustrated in Tatham’s Figure 3D,
would be provided by servers acting in collaboration with each other.
Lastly, we also sustain the Examiner’s obviousness rejection of
dependent claims 3-5 and 11 in which the predetermined default values’
teaching of Sluiman is added to the combination of Tatham and Maurille.
Initially, Appellants’ arguments (Br. 11-12; Reply Br. 4-5) to the contrary
notwithstanding, we fail to see why Tatham’s workgroup creation disclosure
(col. 4, ll. 55-65) in which the user identification of workgroup members,
applications to be used, project scope, etc. would not be considered to
correspond to the claimed “gathering type,” “occasion,” or “theme.” It
follows, then, that the application of Sluiman’s customized default value
teaching to the system of Tatham as modified by Maurille, and we find no
persuasive arguments from Appellants attacking the proposed combination,
would result in the invention as set forth in appealed claims 3-5 and 11.

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CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-12 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

KIS

CHARLES G. CALL
215 W. HURON STREET, APT 2
CHICAGO, IL 60610-3331