Ex Parte Teng et al

Board of Patent Appeals and Interferences

May 10, 2007

09999074 (B.P.A.I. May. 10, 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for publication and is not binding precedent of the Board.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 JOAN C. TENG and THOMAS B. REMAHL
____________

Appeal 2007-0954
Application 09/999,0741
Technology Center 2100
____________

Decided: May 10, 2007
____________

Before JAMES D. THOMAS, LEE E. BARRETT, and JOHN A. JEFFERY,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-63. We have jurisdiction under 35 U.S.C. § 6(b).

1 This application claims benefit of the following U.S. Provisional
Applications: (1) 60/258,087 filed Dec. 22, 2000, and (2) 60/285,524 filed
Apr. 20, 2001.
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STATEMENT OF THE CASE
Appellants invented an identity system that uses workflows to manage
identity profiles (i.e., information associated with particular entities, such as
users, groups, organizations, etc.) (Specification 10: 31-32). Specifically, a
first workflow can invoke one or more nested subflows. Such a process
reduces administrative costs of creating and maintaining workflows.
Additionally, the technique allows workflows to implement processes
requiring multiple applications.2 Claim 1 is illustrative:
1. In an identity system, a method for using workflows to manage an
identity profile, comprising the steps of:

a computer performing a first workflow, said first workflow performs
a first task on an identity profile; and

starting a second workflow as a subflow of said first workflow, said
second workflow performs a second task.

The Examiner relies on the following prior art references to show
unpatentability:
Berg US 5,999,911 Dec. 7, 1991
Hsu US 5,581,691 Dec. 3, 1996
Flores US 5,734,837 Mar. 31, 1998
Diener US 2002/0013777 A1 Jan. 31, 2002
(filed Mar. 16, 2001)3
Guheen US 6,519,571 B1 Feb. 11, 2003
(filed May 27, 1999)

2 See generally Specification Page 2, line 28 – Page 3, line 25.
3 This published application is based on Provisional Application No.
60/189,988, filed Mar. 17, 2000.
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Alcorn US 2004/0153509 A1 Aug. 5, 2004
(filed Aug. 19. 2003)4
Ahluwalia US 6,728,685 B1 Apr. 27, 2004
(filed Apr. 5, 2000)

The Examiner’s rejections are as follows:
1. Claims 1-3, 5, 7-15, 17-20, 24, 26-28, 38, 39, 41, 43-46, 48, 49, 53,
54, and 58-605 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Berg in view of Guheen.
2. Claims 4, 21, 22, 40, 47, 52, 55, and 56 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Berg in view of Guheen and further in
view of Flores.
3. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berg in view of Guheen, Flores, and further in view of Diener.
4. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berg in view of Guheen and further in view of Alcorn.
5. Claims 6, 16, 25, 30-32, 34, 36, 37, 42, 50, 51, 61, and 62 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Berg in view of
Guheen and further in view of Hsu.

4 This published application is a continuation-in-part of Application No.
09/608,208 filed Jun. 30, 2000.
5 Although the Examiner omitted claim 59 in the statement of the rejection
on Page 3 of the Answer, claim 59 was nevertheless included in the
discussion of the rejection. See Answer 6; see also Br. 2 (indicating that
claims 1-63 stand rejected). We therefore presume that the Examiner’s
omission of claim 59 in the grouping on Page 3 of the Answer was an
inadvertent typographical error and the Examiner intended to include claim
59 in this rejection statement.
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6. Claims 33 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berg in view of Guheen, Hsu, and further in view
of Ahuwalia.
7. Claim 57 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berg in view of Guheen, Flores, and further in view of Hsu.
8. Claim 63 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berg in view of Guheen, Hsu, and further in view of Flores.

Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. 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).

OPINION
It is our view, after consideration of the record before us, that the
evidence relied upon and the level of skill in the particular art would have
suggested to one of ordinary skill in the art the invention set forth in the
claims on appeal. Accordingly, we affirm.
We first consider the Examiner’s rejection of claims 1-3, 5, 7-15,
17-20, 24, 26-28, 38, 39, 41, 43-46, 48, 49, 53, 54, and 58-60 under 35
U.S.C. § 103(a) as unpatentable over Berg in view of Guheen. 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
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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). If
that burden is met, the burden then shifts to the Appellants 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).
With respect to the independent claims, the Examiner's rejection
essentially finds that Berg teaches a computer that performs a first workflow
as claimed including performing a task on an “identity profile.” Under one
interpretation of “identity profile,” the Examiner contends that the limitation
corresponds to Berg’s behavioral description of a circuit design under
Appellants’ definition of the term “identity profile.”
The Examiner adds that even under an alternative interpretation of
“identity profile” (i.e., corresponding to a “user profile”), Guheen teaches
notifying administrators and knowledge managers to maintain profiles
including adding new users, changing user IDs, re-establishing user
passwords, etc. Under this alternate interpretation, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to combine Guheen’s teaching into Berg’s workflow to
handle administration tasks so that user profiles could be managed in a
workflow environment (Answer 3-7).
Regarding the independent claims,6 Appellants argue that the prior art
does not teach or suggest performing a first workflow, the first workflow

6 Although Appellants provide separate arguments in connection with each
independent claim (Br. 13-15), the arguments are all directed to
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performs a task on an identity profile as claimed (Br. 8, 13-15). Appellants
argue that although Berg discloses workflows for automated computer-aided
design, the reference fails to suggest that Berg’s workflows may be used to
manage an identity profile (Br. 8).
Appellants further contend that Guheen customizes web interfaces
based on known qualities of web customers, but the reference is not directed
to user or group administration (Br. 9). Appellants argue that although
Guheen teaches that administrators or knowledge managers perform
administrative tasks as the Examiner indicates, Guheen does not teach or
suggest any software program or tool for performing such duties.
Appellants add that Guheen fails to disclose an identity profile or that
administrative tasks might be performed as part of managing an identity
profile (Br. 10; Reply Br. 3-4).
Appellants also argue that there is no motivation to combine Berg
with Guheen. According to Appellants, Guheen does not disclose any
technological means to perform user management, and Berg fails to disclose
any user management whatsoever (Br. 11-12).
The Examiner responds that Berg compiles a behavioral description of
a circuit design. According to the Examiner, an “identity profile” can be any
information associated with a particular circuit design; therefore, Berg’s
workflow is used to manage an identity profile as claimed (Answer 16).

commensurate limitations, namely performing a first workflow that performs
a first task (or operates) on an identity profile. In essence, Appellants have
not presented arguments for separate patentability for each respective
independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, we select
claim 1 as representative of all independent claims.
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The Examiner further contends that Guheen provides various tools for,
among other things, administering distributed systems and managing user
accounts (Answer 17).
We will sustain the Examiner’s rejection of representative claim 1. At
the outset, we find the Examiner’s interpretation of “identity profile” as
corresponding to the behavioral description of a circuit design problematic
essentially for the reasons noted by Appellants.7 Nevertheless, we find that
Berg amply discloses not only this limitation, but all other limitations of
claim 1 giving the terms their broadest reasonable interpretation.
Berg discloses a workflow management system that includes a
workflow manager 70 that utilizes a flow management engine 84 (Berg, col.
6, ll. 38-51; Fig. 3). The flow management engine maintains a workflow
instance database that stores information about an instance of a workflow.
Significantly, the flow management engine keeps track of, among other
things, the identification of a user (e.g., the user’s login name) executing
each particular step in a flow. The flow management engine also maintains,
among other things, the identification of the user who opened the workflow
(Berg, col. 7, ll. 1-25).
Berg’s tracking and maintenance of user identifications associated
with respective workflow instances fully meets the limitations calling for
managing an identity profile and the workflow performing a first task on an
identity profile as claimed. When a user executes any given workflow, a
“first task” is certainly performed on the “identity profile” maintained by the

7 According to Appellants’ Specification, an “identity profile” is “a set of
information associated with a particular entity (e.g., user, group,
organization, etc.).” (Specification 10: 31-32).
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flow management engine. Moreover, Berg discloses that a workflow may
contain one or more subflows whose user inputs are likewise sent to the flow
management engine for processing (Berg, col. 7, ll. 45-52).
In short, Berg actually anticipates representative claim 1.
Nevertheless, obviousness rejections can be based on references that happen
to anticipate the claimed subject matter. In re Meyer, 599 F.2d 1026, 1031,
202 USPQ 175, 179 (CCPA 1979). Furthermore, although we sustain the
Examiner’s obviousness rejection based on the teachings of Berg alone, we
may rely on fewer references than the Examiner in affirming a multiple-
reference rejection under 35 U.S.C. § 103. In re Bush, 296 F.2d 491, 496,
131 USPQ 263, 266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2,
150 USPQ 441, 444 n.2 (CCPA 1966).
Even though we find the teachings of Guheen are merely cumulative
to those of Berg for the reasons noted above, we nonetheless find that
Guheen also anticipates representative claim 1. Even if we assume, without
deciding, that the specific passages in Guheen relied upon by the Examiner
fail to teach or suggest software or tools to execute the various
administrative tasks performed by administrators or knowledge managers,
the reference is nonetheless replete with teachings of using workflows to
manage identity profiles.
Indeed, user profile management is touted as a key feature in one
embodiment of Guheen. See Guheen, column 210, line 32 – column 211,
line 7; Figs. 79-81. In that embodiment, user interfaces are customized
based on users’ profiles – personalized profiles that fully meet “identity
profiles” as claimed.
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To this end, users’ profiles are first developed (Guheen, Fig. 80, Step
2310). Fig. 81 of Guheen details the method employed to create these user
profiles. Specifically, a variety of user information is collected and placed
in a database (Guheen, Fig. 81, Steps 2320-21). In our view, these database
entry functions alone fully meet a workflow performing a first task on an
identity profile as claimed. Next, users’ buying patterns are estimated for a
particular item each time the user uses the system. Users’ current activities
are then logged and entered into the database (Guheen, Fig. 81, Steps 2322-
23). These steps, in our view, reasonably constitute a second subflow of the
first workflow that performs a second task as claimed.
After the user profile is developed, the system then displays an item
for purchase with a set of features based on the user profile, the presentation
of which is customized based on the user profile. Moreover, web content
can be matched to specific user profiles (Guheen, col. 210, l. 32 – col. 211, l.
46; Figs. 79-81).
In short, at least this embodiment in Guheen anticipates representative
claim 1.8 Accordingly, we will also sustain the Examiner’s rejection of this
claim solely on the teachings of Guheen. We reach this conclusion
reiterating that obviousness rejections can be based on references that
happen to anticipate the claimed subject matter. Meyer, 599 F.2d at 1031,
202 USPQ at 179. Moreover, we may rely on fewer references than the
Examiner in affirming a multiple-reference rejection under 35 U.S.C. § 103.

8 We note that this example is merely exemplary of Guheen’s use of identity
profiles. In fact, Guheen discloses other embodiments that automatically
customize user interfaces based on user profiles. See, e.g., Figs. 68 and 76-
78 and accompanying text.
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Bush, 296 F.2d at 496, 131 USPQ at 266-67; Boyer, 363 F.2d at 458 n.2, 150
USPQ at 444 n.2.
Notwithstanding our conclusion that Berg and Guheen considered
separately each independently anticipate representative claim 1, we
nevertheless find that the skilled artisan would have had ample reason on
this record to combine the teachings of Guheen with Berg.
To determine whether an adequate reason exists to combine known
elements, we consider (1) interrelated teachings of multiple patents; (2) the
effects of demands known to the design community or present in the
marketplace; and (3) the background knowledge possessed by a person
having ordinary skill in the art. We need not, however, “seek out precise
teachings directed to the specific [claimed] subject matter” as we can
account for “the inferences and creative steps that a person of ordinary skill
in the art would employ.” KSR Int’l Co. v. Teleflex Inc., No. 04-1350, slip
op. at 14 (U.S., Apr. 30, 2007).
Contrary to Appellants' argument,9 Guheen in fact discloses
technological means to perform user management (e.g., developing user
profiles via a database and customizing interfaces based on specific user
profiles) as we discussed previously.10 Moreover, Berg’s flow management
engine tracks each user’s identification (e.g., the user’s login name) for each
particular step in a flow in a database.11 Based on these collective teachings,
as well as the inferences and creative steps that the skilled artisan – an
electrical engineer with several years of related industry experience – would

9 See Br. 11.
10 See P. 8-9, supra, of this opinion.
11 See P. 7, supra, of this opinion.
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reasonably employ, we see no reason why the skilled artisan would not have
combined the user management features of Guheen with Berg’s workflow
management capability. Such a combination would provide, among other
things, customized interfaces tailored to particular users in a workflow
environment. For at least these reasons, the skilled artisan would have
reasonably combined the respective teachings of the references.
For at least these reasons, we will sustain the Examiner’s rejection of
representative claim 1. Since Appellants have not separately argued the
patentability of claims 2, 3, 5, 7-15, 17-20, 24, 26-28, 38, 39, 41, 43-46, 48,
49, 53, 54, and 58-60 with particularity, these claims fall with representative
claim 1. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).
With regard to the Examiner’s respective rejections of (1) claims 4,
21, 22, 40, 47, 52, 55, and 56; (2) claim 23; (3) claim 29; (4) claims 6, 16,
25, 30-32, 34, 36, 37, 42, 50, 51, 61, and 62; (4) claims 33 and 35; (7) claim
57; and (8) claim 63 (Answer 7-16), we find that the Examiner has
established at least a prima facie case of obviousness of those claims that
Appellants have not persuasively rebutted. Specifically, the Examiner has
(1) pointed out the teachings of the cited references, (2) noted the perceived
differences between the references and the claimed invention, and (3)
reasonably indicated how and why the references would have been modified
to arrive at the claimed invention (Answer 7-16). Once the Examiner has
satisfied the burden of presenting a prima facie case of obviousness, the
burden then shifts to Appellants to present evidence or arguments that
persuasively rebut the Examiner's prima facie case. Appellants, however,
did not persuasively rebut the Examiner's prima facie case of obviousness,
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but merely noted that the addition of the other cited references fails to cure
the deficiencies of Berg and Guheen in connection with the independent
claims (Br. 12). The rejection is therefore sustained.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-63 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

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