Ex Parte Shaouy et al

Board of Patent Appeals and Interferences

May 24, 2007

09810992 (B.P.A.I. May. 24, 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for publication and is not binding precedent of the Board.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 WILLIAM PHILIP SHAOUY and
MATTHEW BUNKLEY TREVATHAN
____________

Appeal 2007-0987
Application 09/810,992
Technology Center 2100
____________

Decided: May 24, 2007
____________

Before LEE E. BARRETT, JOSEPH F. RUGGIERO, and
JEAN R. HOMERE, 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 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants’ disclosed invention relates to a method and apparatus for
tailoring information to the characteristics of a user of an application
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program such as a web browser. A request object, which contains profile
elements that convey characteristics of the user, is transmitted from the
application program to an arbiter. The arbiter performs an analysis of the
request object and selects a personalization engine based on the outcome of
the analysis. The request object is presented to the selected personalization
engine which accesses a content database to retrieve a personalized content
object which includes tailored information for the user. (Specification 2-3.)
We affirm.
Claim 1 is illustrative of the invention and it reads as follows:
1. A method for tailoring information to characteristics of an information
user, comprising:

a) passing a request object containing at least one profile element to an
arbiter;

b) actively selecting, by analysis of the at least one profile element, a
personalization engine from a plurality of personalization engines by
the arbiter, the arbiter refining and altering a selection based on a
number and type of the profile element;

c) accessing a content database to retrieve a personalized content object
identified by the personalization engine selected by the arbiter.

The Examiner relies on the following prior art references to show
unpatentability:
Kurtzman, II US 6,044,376 Mar. 28, 2000
Jacobi US 6,064,980 May 16, 2000
Kadowaki US 6,313,921 B1 Nov. 6, 2001
(filed Sep. 18, 1998)
Tetzlaff US 6,556,963 B1 Apr. 29, 2003
(filed Sep. 24, 1997)

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Forecast Pro Product Description Brochure (Forecast Pro), December 2000,
web pages (unnumbered) available at
http://web.archive.org/web/*/www.forecastpro.com (last visited Oct. 13,
2005).

Claims 18-20 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Forecast Pro. Claims 1-17 stand rejected under 35 U.S.C.
§ 103(a). As evidence of obviousness, the Examiner offers Kadowaki in
view of Forecast Pro with respect to claims 1, 2, 4, 6, 8, 9, and 12-17, adds
Kurtzman, II to the basic combination respect to claims 3, 5, 10, and 11, and
adds Jacobi and Tetzlaff to the basic combination with respect to claim 7.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details.

ISSUES
(i) Under 35 U.S.C § 102(a), does Forecast Pro have a disclosure
which anticipates the invention set forth in claims 18-20?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claims 1-17,
has the Examiner established a prima facie case of obviousness based on
Kadowaki taken in separate combinations with the secondary references to
Forecast Pro, Kurtzman, II, Jacobi, and Tetzlaff?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
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Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
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, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (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,
51 USPQ2d 1943, 1945 (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).

2. 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, 5 USPQ2d 1596, 1598
(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,
148 USPQ 459, 467 (1966). “[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
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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)).

35 U.S.C. § 102(a) REJECTION
With respect to claims 18-20, Appellants’ arguments in response to
the Examiner’s 35 U.S.C. § 102(a) rejection initially assert (Br. 6) that the
Forecast Pro reference is not a valid reference since the Examiner has not
established that such reference has a publication date prior to the March 16,
2001 filing date of Appellants’ application. After reviewing the arguments
presented by the Examiner (Answer 13), however, we find ourselves in
agreement with the Examiner’s position as stated in the Answer. In our
view, the skilled artisan would have recognized and appreciated that the
numbers “20001209085500” appearing at the bottom of the Forecast Pro
web pages correspond to the date, i.e., December 9, 2000, that the web pages
were publicly available. It is our opinion that, absent any evidence
forthcoming from Appellants that proves otherwise, the printed dates on the
Forecast Pro web pages retrieved from the “archive.org” web site, as well as
the copyright date of 2000 on the last of the retrieved web pages, establish
that the cited Forecast Pro reference is a an applicable prior art reference. In
re Epstein, 32 F.3d 1559, 1567, 31 USPQ2d 1817, 1822 (Fed. Cir. 1994)
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(“in the absence of evidence to support this speculation, we do not find
appellant’s argument persuasive”).
Turning to the merits of the 35 U.S.C. § 102(a) rejection of claims 18-
20 based on the disclosure of Forecast Pro, the Examiner indicates (Answer
3) how the various limitations are read on the disclosure of Forecast Pro. In
particular, the Examiner directs attention to the second full paragraph
(designated by the Examiner as “item 1”) on page 1 of Forecast Pro.1
According to the Examiner (id.), the described “historic data,” “expert
system,” and “forecasting technique” selection corresponds to the claimed
“profile element,” “arbiter,” and “personalization engine” selection.
In our view, the Examiner’s analysis is sufficiently reasonable that we
find that the Examiner has as least satisfied the burden of presenting a prima
facie case of anticipation. The burden is, therefore, upon Appellants to come
forward with evidence and/or arguments which persuasively rebut the
Examiner’s prima facie case. 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 to be waived; see 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants’ response asserts that the Examiner has not shown how
each of the claimed features is present in the disclosure of Forecast Pro so as
to establish a prima facie case of anticipation. Our review of Appellants’
arguments (Br. 7-8; Reply Br. 2-3), however, reveals that Appellants have

1 The Examiner’s statement of the grounds of rejection cites various passages
from Forecast Page and designates them as “item” numbers, i.e., “item 1,”
“item 2,” etc. Appellants’ arguments also refer to these item numbers and
we will also in this decision.
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simply reiterated the features recited in claims 18-20 and drawn a
conclusion, without more, that the features in Forecast Pro identified by the
Examiner do not correspond to such claimed features. Such arguments do
not, in our view, satisfy Appellants’ burden of providing evidence and/or
arguments which show how the Examiner has erred in presenting a prima
facie case of anticipation.
For example, Appellants contend that, in contrast to Forecast Pro’s
“expert system” and “forecasting technique,” the language of claim 18
requires the selection, by an arbiter, of a personalization engine by analyzing
at least one profile element. In support of this contention, Appellants argue
(Br. 7) that the expert system in Forecast Pro, which the Examiner asserts
corresponds to the claimed arbiter, merely “analyzes data and ‘selects the
appropriate forecasting technique.’” It is our opinion, however, that,
although Forecast Pro uses different nomenclature from that claimed, the
disclosed operation of the expert system in Forecast Pro, which Appellants
correctly summarize, corresponds precisely to that which is claimed.
In other words, we find no error in the Examiner’s finding that the
user’s historical data analyzed by the expert system in Forecast Pro
corresponds to the claimed “profile element,” especially in view of
Appellants’ description of a “profile element” in the Specification (5:5-11).
Similarly, we agree with the Examiner’s finding (Answer 14) that Forecast
Pro’s forecasting model technique corresponds to the claimed
personalization engine. As explained by the Examiner, Forecast Pro
describes the use of various forecasting models to analyze a user’s historical
data to develop forecast reports, which description corresponds, in our view,
to Appellants’ description (Specification 6-7) of a personalization engine as
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one which analyzes user data to generate new content and predict future
behavior.
Further, we agree with the Examiner’s characterization of the
disclosed expert system of Forecast Pro as one which analyzes user
historical data and selects the appropriate forecasting technique for a user’s
needs. In other words, with reference to the language of claim 18, we find
that the expert system of Forecast Pro is an “arbiter” which analyzes “profile
elements” in the form of user historical data to select a “personalization
engine,” i.e., forecasting model techniques, to develop a forecast tailored to
a user’s individual requirements.
With respect to dependent claims 19 and 20, Appellants’ arguments
(Br. 8-9) to the contrary notwithstanding, we find that the Examiner (Answer
3-4, 15) has explained exactly how the disclosure of Forecast Pro satisfies
the claimed requirements. We find no persuasive arguments from
Appellants that convince us of any error in the Examiner’s position that the
designated items 4 and 5 on pages 3 and 4 of Forecast Pro describe the
claimed features of personalized content object sending (claim 19) and
profile database access (claim 20).
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Forecast Pro, the Examiner’s 35 U.S.C.
§ 102(a) rejection of claims 18-20 is sustained.

35 U.S.C. § 103(a) REJECTIONS
Appellants’ arguments (Br. 10-17; Reply Br. 3-5) in response to the
Examiner’s obviousness rejection of independent claims 1 and 8 based on
the combination of Kadowaki and Forecast Pro assert a failure by the
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Examiner to establish a prima facie case of obviousness since all of the
claimed limitations are not taught or suggested by the applied Kadowaki and
Forecast Pro references. With respect to the Kadowaki reference, our review
of Appellants’ arguments reveals that they follow a similar format to those
made with regard to the anticipation rejection of claims 18-20 based on
Forecast Pro.
In other words, Appellants have merely repeated the recited features
of claims 1 and 8, repeated the passages cited by the Examiner from
Kadowaki, and have drawn the conclusion, without more, that the cited
passages do not teach or suggest the claimed features. We find no error, and
there are no persuasive arguments from Appellants that show any error, in
the Examiner’s finding (Answer 5 and 15-17) that Kadowaki’s disclosure
can be reasonably interpreted as describing the arbiter, selection from plural
personalization engines, and personalized content database retrieval features
of appealed claims 1 and 8. Appellants’ arguments with respect to
dependent claims 2, 4, 6, 9, and 12-17, mentioned separately in the principal
Brief, follow the same format as those made with respect to claims 1 and 8,
and are equally unpersuasive.
We also agree with the Examiner that Forecast Pro discloses the
claimed feature of “the arbiter refining and altering a selection based on a
number and type of the profile element.” Appellants’ arguments have
shown no error in the Examiner’s finding (Answer 5) that the designated
items 2 and 3 of Forecast Pro disclose the selection of the particular
forecasting technique, i.e., personalization engine, based on the number and
type of the profile element. In our view, the Examiner is correct in the
assertion that the claimed number and type of profile element could be
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reasonably interpreted as corresponding to Forecast Pro’s “very short” and
“low volume” data quantity characterizations and “volatile” and “sparse”
profile element types associated with the Simple Methods and Low Volume
Models forecasting techniques. We also find no persuasive arguments from
Appellants that convince us of any error in the Examiner’s establishment of
proper motivation (Answer 6) for the proposed combination of Kadowaki
and Forecast Pro.2
We also make the observation that, in making the obviousness
rejection of claims 1 and 8, the Examiner has relied on Forecast Pro solely
for a teaching of the altering and refining of a selection of a personalization
engine based on profile element number and type. It is apparent to us,
however, from our own independent review of Forecast Pro, as well as the
Examiner’s analysis of Forecast Pro in relation to the anticipation rejection
of claims 18-20, that other of the features set forth in appealed claims 1 and
8 are also present in Forecast Pro.
For example, we find in Forecast Pro, as did the Examiner, a teaching
which corresponds to the claimed passing of a request object with a profile
element to an arbiter. The Examiner, in analyzing previously discussed
claim 19, directed attention to item 1 of Forecast Pro which describes the
passing of a profile element in the form of user historical data to an expert
system, i.e., an arbiter. Similarly, we find in item 1 of Forecast Pro a
disclosure of the analysis of the user historical data to select a particular
forecasting technique, i.e., personalization engine. Accessing content from a

2 Although Appellants contend (Reply Br. 6-7) that the Examiner has not
responded to Appellants’ arguments attacking the basis for the Examiner’s
proposed combination of Kadowaki and Forecast Pro, we find no such
arguments in Appellants’ principal Brief on appeal.
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database to retrieve personalized content identified by the personalization
engine, as set forth in independent claims 1 and 8, is also suggested by item
4 of Forecast Pro which describes the output of the selected forecasting
technique, i.e., personalization engine, to provide database access.
In view of the above discussion and analysis of the disclosure of the
Forecast Pro reference, it is our opinion that, although we found no error in
the Examiner’s proposed combination of Kadowaki and Forecast Pro, as
discussed supra, the Kadowaki reference is not necessary for a proper
rejection of at least independent claims 1 and 8 since all of the claimed
elements are in fact present in the disclosure of Forecast Pro. A disclosure
that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable
under 35 U.S.C. § 103, for "anticipation is the epitome of obviousness."
Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir.
1984). See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571
(CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644
(CCPA 1974).
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 of
claims 1, 2, 4, 6, 8, 9, and 12-17, is sustained.
We also sustain the Examiner’s obviousness rejection of dependent
claims 3, 5, 10, and 11, in which the Kurtzman, II reference is added to the
combination of Kadowaki and Forecast Pro, as well as the rejection of
dependent claim 7, in which the Jacobi and Tetzlaff references are added to
Kadowaki and Forecast Pro. Appellants have provided no separate
arguments relative to the patentability of these claims but, rather, have
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chosen to let these claims stand or fall with their parent independent claims 1
and 8.

CONCLUSION
In summary, we have sustained the Examiner’s rejections of all the
claims on appeal. Therefore, the decision of the Examiner rejecting claims
1-20 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

tdl/ce

ANDREW M CALDERON
GREENBLUM AND BERNSTEIN PLC
1950 ROLAND CLARKE PLACE
RESTON VA 20191
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