Ex Parte Bodin et al

Board of Patent Appeals and Interferences

Apr 19, 2010

10756146 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM KRESS BODIN,
MICHAEL JOHN BURKHART,
DANIEL G. EISENHAUER, and
THOMAS J. WATSON
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Appeal 2009-001187
Application 10/756,146
Technology Center 2100
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Decided: April 20, 2010
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Before JOSEPH L. DIXON, CAROLYN D. THOMAS, and DEBRA K.
STEPHENS , Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-001187
Application 10/756,146

I. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Invention
The invention at issue on appeal relates to a method and system for
creating a presentation document including a content specific grammar and a
structured document by differential dynamic content delivery (Spec. 2).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method for differential dynamic content
delivery, the method comprising:

providing a session document for a presentation,
wherein the session document includes a session
grammar and a session structured document;

receiving a presentation control instruction to
present a classified structural element of the
session document, wherein the classified structural
element comprises one or more versions of
presentation content;

determining whether at least one version of
presentation content of the classified structural
element exists for a user;

identifying alternative display content for the user
if no version of presentation content of the
classified structural element exists for the user; and
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presenting the identified alternative display content
to the user.

The References
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Bryan US 6,658,414 B2 Dec. 2, 2003

Capra et al. “WebContext: Remote Access to Shared Context”, ACM
International Conference Proc. Series, vol. 15, Proc. of the Workshop
on perceptive User Interfaces, p. 1-9 (2001) (Hereafter “Capra”).

The Rejection
The Examiner entered the following rejection which is before us for
review:
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Capra and Bryan.
II. ISSUE
Has the Examiner erred in finding that the combination of Capra and
Bryan teaches or fairly suggests “providing a session document for a
presentation, wherein the session document includes a session grammar and
a session structured document”, as recited in independent claim 1?

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III. PRINCIPLES OF LAW

Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Bryan
1. Bryan discloses authentication/session database 106 separates from other
databases and is used to store the user access information to authenticate the
user (col. 7, l. 61—col. 8, l. 5; Fig. 1). The session database maintains a
record for the information about user accessing:
When a user accesses his or her voice
portal, session database 106 maintains a context
for the user. For example, session database 106
may store state information indicating where the
user is in a particular voice portal in order to allow
the user to return to that location should the user so
desired.

(Col. 9, ll. 9-13).
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V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to Appellants’ Brief to show error therein. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998).

The Common Features in Claims
Independent claim 1 recites, inter alia, “providing a session document
for a presentation, wherein the session document includes a session grammar
and a session structured document.” Independent claims 11 and 21 contain
those similar limitations.
35 U.S.C. § 103(a) rejections
With respect to independent claim 1, the Appellants contend that
Capra does not teach the claimed limitation providing a session document
for a presentation but is “merely concern[ed] with allowing users to inquire
about information seen on a web page through a telephone-based voice user
interface.” (App. Br. 8). Bryan’s session database only maintains a context
for a user, such as the state information indicating where the user is in a
particular voice portal, but does not provide a session document for the
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presentation including a session grammar and a session structured document.
(Id. at 12).
The Examiner admitted that Capra does not teach the session
document (Ans. 11) but states that Bryan teaches the argued limitation (id.)
The Examiner also states that the combination of Capra and Bryan teaches
the argued limitation. (Id. at 12).
We disagree with the Examiner’s interpretation of the references. We
find that the paragraph of the Bryan reference relied upon by the Examiner
only discusses a context or state information being maintained in the session
database for the user to revisit, which is only a record of the user accessing
the voice portal (FF 1). This context, in our view, can not be a session
document for a presentation. Bryan is also silent about the claimed context
is a session document for a presentation that includes a session grammar and
a session structured document. Furthermore, even if assuming Capra
teaches a grammar and a structured document, we conclude that the
combination of Capra’s context and context grammar with Bryan’s session
context of state information would not been obvious to one skill in the art at
the time of the invention because Bryan’s session database does not relate to
content delivery (FF 1).
As such, we find the Examiner’s position is untenable.
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of obviousness as
required to teach or fairly suggest the invention as recited in claim 1 by the
combination of Capra and Bryan. The rejection of dependent claims 2-10
contains the same deficiency. The Appellants, thus, have demonstrated error
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in the Examiner’s reasoned conclusion of obviousness of the subject matter
of claims 1-10.
The independent claims 11 and 21 contain the similar limitations to
those found in independent claim 1. The Appellants present similar
arguments as set forth with respect to independent claim 1 in response to the
rejections of independent claims 11 and 21 (App. Br. 17).
As we found above in our discussion with respect to independent
claim 1, we similarly find that the Appellants have demonstrated error in the
Examiner’s reasoned conclusion of obviousness of the subject matter of
independent claims 11 and 21. The rejection of dependent claims 12-20 and
22-30 also contains the same deficiency. Hence, the Appellants’ argument
persuades us that the Examiner erred in rejecting claims 11-30.
We, therefore, cannot sustain the rejection of claims 1-30 under 35
U.S.C. § 103.
VI. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in finding that the combination of Capra and Bryan teaches or fairly suggests
“providing a session document for a presentation, wherein the session
document includes a session grammar and a session structured document”,
as recited in independent claim 1.

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VII. ORDER
We reverse the obviousness rejections of claims 1-30 under 35 U.S.C.
§ 103(a).

REVERSED

peb

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