Ex Parte Brebner

Board of Patent Appeals and Interferences

Jun 12, 2009

09765067 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GAVIN BREBNER
____________________

Appeal 2008-005519
Application 09/765,067
Technology Center 2400
____________________

Decided:1 June 12, 2009
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals the Examiner’s final rejection of claims 1-25 under
35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)(2002).
We affirm-in-part.

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-005519
Application 09/765,067

2
I. STATEMENT OF THE CASE
A. INVENTION
According to Appellant, the invention relates to a communications
system, and to a process for facilitating a transaction between a user and a
remote server (Spec. 1, ll. 8-9).

B. ILLUSTRATIVE CLAIM
Claims 1 and 16 are exemplary and are reproduced below:
1. Process for assisting a transaction between a[sic] user and at
least one remote server, the one[sic] each remote server being
prepared to process at least one predetermined command, said process
comprising:

receiving an abstract request formulated at a client
computer and containing incomplete information identifying a
potential transaction;

analysing said abstract request and mapping it to a
corresponding one of said remote servers, and to one of said
predetermined command;

constructing an aggregated request based on said mapped
command, enriched with data extracted from a local profile;

transmitting said aggregated request to said corresponding
server;

receiving the answer from said corresponding server and
displaying the answer to the user for completing the
transaction.

Appeal 2008-005519
Application 09/765,067

3
16. A method of using DMI or WMI interfaces for collecting data
representative of a computer profile for achieving an electronic
business transaction.

C. REJECTIONS
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Warwick US 6,598,169 B1 Jul. 22, 2003
Anderson US 6,578,142 B1 Jun. 10, 2003
Christianson US 6,102,969 Aug. 15, 2000

Claims 1-4, 6-15, 17-21, and 23-25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the teachings of the Anderson in view of
Christianson.
Claims 5, 16, and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of the Anderson in view of Christianson and
Warwick.
The rejection of claims 2, 11-15, and 17 under 35 U.S.C. § 112 has
been withdrawn.

II. ISSUES
Has Appellant shown that the Examiner erred in finding that 1) the
combination of Anderson and Christianson teaches or would have suggested
“receiving an abstract request” which contain “incomplete information
identifying a potential transaction” (Claim 1), and 2) the combination of
Appeal 2008-005519
Application 09/765,067

4
Anderson, Christianson, and Warwick teaches or would have suggested a
method “of using DMI or WMI interfaces” (Claim 16)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Christianson
1. Christianson discloses receiving a user query, retrieving a description
of each information source, formatting the query according to this
description in a manner suitable for each information source, and
transmitting the formatted query to the source (col. 3, ll. 8-21).
2. An aggregation engine receives the user query from the user interface
module, retrieves wrappers from the wrapper database, and translates
the query to the request formats accepted by each of the information
sources (col. 8, ll. 25-34; Fig. 3).
Warwick
3. Warwick discloses a Windows Management Instrumentation
(“WMI”) system which provides an interface through which
instrumented components can provide information (Abstract).

IV. PRINCIPLES OF LAW
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
Appeal 2008-005519
Application 09/765,067

5
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
"An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.'' Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
If the body of a claim fully and intrinsically sets forth all of the
limitations of the claimed invention, and the preamble merely states, for
example, the purpose or intended use of the invention, rather than any
distinct definition of any of the claimed invention’s limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999); see also Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
Appeal 2008-005519
Application 09/765,067

6
obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (citing KSR, 550 U.S. at 416). The Federal
Circuit relied in part on the fact that Leapfrog had presented no evidence that
the inclusion of a reader in the combined device was “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. at 1162 (citing KSR, 550 U.S. at 418-19).

V. ANALYSIS
Claims 1-4, 6-9, 11-15, 17-21, and 23-25
Appellant provides the same arguments with respect to the rejection of
claims 1-4, 6-9, 11-15, 17-21, and 23-25. Therefore, we select independent
claim 1 as being representative of these claims. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2008-005519
Application 09/765,067

7
Appellant argues that “there is nothing in these pages [referenced by
the Examiner], nor indeed in any other passage in Christianson, that may be
understood as disclosing and receiving of an abstract request formulated at a
client computer” because “‘[a]bstract request’ . . . refers to a request for a
transaction that only contains ‘some basic incomplete information’ or ‘only
partial information’ for completing the requested transaction” (App. Br. 7).
In the Answer, the Examiner directs the Appellant’s attention to
Christianson, which the Examiner finds as disclosing:
The local agent includes means for receiving an abstract request
that is entered by a user, that is to say a request that is assumed
to contain only partial information that is needed regarding the
particular service that is desired. The local agent has access to
a list of servers and includes means for analysing that abstract
request and for mapping it to one corresponding server, and one
particular command for accessing that server. The local agent
then constructs an aggregated request transaction based on that
particular command, and which further includes the additional
information that the agent extract form a local profile. This
results in an aggregate request that is transmitted through the
network to the identified mapped server.

(Ans. 9-10).
Thus, we determine in this Appeal whether Appellant has shown that
the Examiner erred in finding that the combination of Anderson and
Christianson teaches or would have suggested “receiving an abstract
request” which contains “incomplete information identifying a potential
transaction” (Claim 1).
Appeal 2008-005519
Application 09/765,067

8
We begin our analysis by giving the claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d at 1324. Furthermore, our analysis
will not read limitations into the claims from the specification. See In re
Van Geuns, 988 F.2d at 1184. Though Appellant argues that the claimed
“abstract request” refers to a request “that only contains ‘some basic
incomplete information’ or ‘only partial information’ for completing the
requested transaction” (App. Br. 7, emphasis added), such argument is not
commensurate with the language of claim 1. Appellant’s claim 1 does not
place any limitation or context on what the term “abstract request” means,
includes, or represents other than that it contains “incomplete information
identifying a potential transaction.” In fact, claim 1 does not place any
limitation on the term “incomplete.” Thus, we will not limit the “abstract
request” of claim 1 to a request that only contains some basic incomplete
information for completing the requested transaction, as Appellant argues.
Instead, we interpret claim 1 as requiring an abstract request containing
information for identifying a potential transaction, wherein the information
is “incomplete,” i.e., not whole.
Christianson discloses formatting a query according to this description
in a manner suitable for each information source (FF 1), wherein an
aggregation engine retrieves wrappers from the wrapper database and
translates the query to the request formats accepted by each of the
information sources (FF 2). As the Examiner found and as the Appellant
admits, the netbot of Christianson adds “additional information from the
Appeal 2008-005519
Application 09/765,067

9
wrapper module to the query before forwarding to the information sources”
(App. Br. 7).
We find that an artisan would have understood that such query to be
aggregated to the accepted formats to be a query containing incomplete
information. That is, prior to the aggregation, the query does not have the
additional information, and thus, contains incomplete information. Thus, we
find that the combined teachings of Anderson and Christianson would have
suggested an abstract request containing information for identifying a
potential transaction, wherein the information is “incomplete,” as required
by claim 1.
Appellant further contends that “[t]he Examiner . . . ignores
Applicant’s argument and does not even allege that, much less cite to a
specific portion of the specification where Christianson actually teaches,
receiving an abstract request that contains incomplete information
identifying a potential transaction” (App. Br. 8). Appellant appears to be
repeating the argument that claim 1 recites an “abstract request” that “only”
contains information “for completing the requested transaction,” which is
not commensurate with the language of claim 1. That is, the language of
claim 1 does not require any “completing the requested transaction” as
Appellant argues.
As discussed above, we interpret claim 1 as requiring an abstract
request containing information for identifying a potential transaction,
wherein the information is incomplete. We find that the combined teachings
of Anderson and Christianson would have suggested an abstract request
Appeal 2008-005519
Application 09/765,067

10
containing information for identifying a potential transaction, wherein the
information is “incomplete,” as required by claim 1.
Furthermore, we agree with the Examiner’s finding that
Christianson’s query is formatted “according to the description in a manner
suitable for each information source” or is translated “into the request
formats accepted by each of the N information sources,” thereby the query is
an “abstract request containing incomplete information identifying a
potential transaction” (Ans. 11). That is, even if claim 1 requires
information be “for completing the requested transaction” as Appellant
contends, we find that it would have understood by skilled artisans that the
additional information aggregated to the request for formatting the request
in a manner suitable for the information sources would have been
information for completing the requested transaction. An artisan would have
understood that formatting in the manner that is suitable for the information
sources was needed for completing the transaction.
Thus, we agree with the Examiner that the combination of Anderson
and Christianson would have fairly suggested “receiving an abstract request”
which contains “incomplete information identifying a potential transaction”
(Claim 1). Accordingly, Appellant has not shown that the Examiner erred in
finding that the combined teachings of Anderson and Christianson would
have suggested the invention as recited in independent claim 1. Claims 2-4,
6-9, 11-15, 17-21, and 23-25 fall with claim 1.
Appeal 2008-005519
Application 09/765,067

11
Claim 10
As to claim 10, Appellant surmises that “the Examiner is . . . alleging
that a ‘detecting module for determining available bandwidth’ teaches
‘detecting a condition of insufficient resources’” (App. Br. 8). Thus,
Appellant contends that “available bandwidth” is not the same as
“insufficient resources” (id.).
In response, the Examiner adds the new finding that, in Anderson,
“the content is sent to the user computer, the content includes a summary of
information such as the availability of patches and fixes” (Ans. 11). The
Examiner then reasons that notifying users “of relevant software updates and
upgrades” is “detecting a condition of insufficient resources” (Ans. 11-12).
After reviewing the record on appeal, we agree with the Examiner that
an artisan would have understood Anderson’s teaching of notifying users of
relevant software updates and upgrades to be “detecting a condition of
insufficient resources,” as set forth in the Examiner’s finding. However,
claim 10 requires that “in response to said insufficient resources detection,
automatically identifying one predetermined server.” That is, claim 10
defines “a condition of insufficient resources” to be a condition responsive
to which the predetermined server is automatically identified.
In the section relied by the Examiner for the teaching of notifying
users of relevant software updates and upgrades, there is no teaching of
automatically identifying one predetermined server in response to the
notification information.
Appeal 2008-005519
Application 09/765,067

12
Thus, though we agree with the Examiner that it would have been
obvious to an artisan that the condition in need of updates and upgrades is a
condition of insufficient resources, we find that the combination of
Anderson and Christianson would not have suggested “in response to said
insufficient resources detection, automatically identifying one predetermined
server,” as required by claim 10.
Because Appellant has shown the Examiner erred, we reverse the
rejection of claim 10 as being unpatentable under 35 U.S.C. § 103(a) over
Anderson in view of Christianson.
Claims 5, 16, and 22
As to claim 16, Appellant argues that that “[t]here is simply nothing in
Warwick even remotely connected or connectable to a method of collecting
data representative of a computer profile for achieving an electronic business
transaction” and thus the Examiner’s findings “shed no light onto how
combining these three references would result in the subject matter of claim
16” (App. Br. 10). Appellant then contends that “there is no support to be
found in any of the references for the Examiner’s alleged motivation for the
skilled person to combine Christianson, Anderson, and Warwick” (id.).
However, the Examiner finds that though “Anderson does not
specifically disclose the profile parameters are collected by means of an
interrogation via the DMI or WMI,” “Warwick discloses WMI is one
implementation of the Common Information Model schema for managing
systems, networks, applications, databases and devices” (Ans. 12). Thus,
the Examiner finds that it would have been obvious to combine the teachings
Appeal 2008-005519
Application 09/765,067

13
“because Warwick’s teaching of WMI would obviate the need for
developers to create private interfaces to kernel mode drives to access that
information” (id.).
Accordingly, we determine in this Appeal whether Appellant has
shown that the Examiner erred in finding that the combination of Anderson,
Christianson, and Warwick teaches or would have suggested a method “of
using DMI or WMI interfaces” (Claim 16).
In claim 16, the language “for collecting data representative of a
computer profile” and “for electronic business transaction” are merely
intended uses of the interfaces. We will not limit the scope of claim 16 by
the intended use language because such statements merely define a context
in which the invention operates. See Boehringer, 320 F.3d at 1345. In fact,
claim 16 in its entirety is merely a preamble without any body which fully
and intrinsically sets forth all of the limitations of the claimed invention.
Intended use language in a preamble which merely recites the purpose or
intended use of the claimed invention does not further limit the claim. See
Pitney Bowes, Inc., 182 F.3d at 1305; see also Rowe v. Dror, 112 F.3d at
478.
We conclude that the subject matter sought to be patented by
Appellant as a whole would have been obvious to the artisan as we consider
the facts of the case and the common sense of those skilled in the art. See
Leapfrog, 485 F.3d at 1161.
Warwick discloses using WMI interfaces (FF 3). As the Examiner
finds, “Warwick discloses WMI is one implementation of the Common
Appeal 2008-005519
Application 09/765,067

14
Information Model schema for managing systems, networks, applications,
databases and devices” (Ans. 12) and thus, it would have been obvious to
combine the teachings “because Warwick’s teaching of WMI would obviate
the need for developers to create private interfaces to kernel mode drives to
access that information” (id.). We agree with the Examiner that Warwick, in
combination with Anderson and Christianson, teaches or would have
suggested a method “of using DMI or WMI interfaces,” as required in claim
16.
Appellant has presented no evidence that adding the WMI interfaces
for collecting data to the teachings of Anderson and Christianson of
collecting data on the conventional Microsoft-based systems was “uniquely
challenging or difficult for one of ordinary skill in the art” (see Leapfrog,
485 F.3d at 1162), nor has Appellant presented evidence that these
“represented an unobvious step over the prior art” (id.). Rather, Appellant’s
claimed invention is simply an arrangement of the well-known teachings of
applying WMI interfaces with the well-known teaching of collecting data on
Microsoft-based systems. The combined teachings of the references
represent merely a combination of familiar elements according to known
methods and do no more than yield predictable results. See KSR, 550 U.S. at
416.
Consequently, Appellant has not met the burden of showing the
Examiner erred in rejecting claim 16 and claims 5 and 22 falling therewith,
under 35 U.S.C. § 103(a) over Anderson in view of Christianson and
Warwick.
Appeal 2008-005519
Application 09/765,067

15
CONCLUSIONS
(1) Appellant has not shown that the Examiner erred in concluding
that claims 1-4, 6-9, 11-15, 17-21, and 23-25 are unpatentable over the
teachings of Anderson in view of Christianson.
(2) Appellant has shown that the Examiner erred in concluding that
claim 10 is unpatentable over the teachings of Anderson in view of
Christianson.
(3) Appellant has not shown that the Examiner erred in concluding
that claims 5, 16, and 22 are unpatentable over the teachings of Anderson in
view of Christianson and Warwick.
(4) Claims 1-9 and 11-25 are not patentable over the prior art of
record.

DECISION
We affirm the Examiner's decision rejecting claims 1-9 and 11-25
under 35 U.S.C. § 103(a). We reverse the Examiner’s decision rejecting
claim 10 under 35 U.S.C. § 103(a).
Appeal 2008-005519
Application 09/765,067

16
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-IN-PART

msc

HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400