Ex Parte Clay et al

Board of Patent Appeals and Interferences

Jun 19, 2009

10162782 (B.P.A.I. Jun. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT R. CLAY,
ROBYN RUTH LEVINE,
DAVID A. SHUSTER, and
KEVIN R. WYNE
____________

Appeal 2009-005568
Application 10/162,782
Technology Center 3600
____________

Decided:1 June 19, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

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 2009-005568
Application 10/162,782

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert R. Clay, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-4, 6-14, and 16-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of presenting a business opportunity proposal by a
presenting party to a client team, comprising the steps of:

providing a visual display tool having a display device, a
business modeling capability including a spreadsheet with
parameters, an image capture device, and an attentive technology
analyzer;

presenting said business opportunity proposal by said
presenting party to said client team using said display device and said
business modeling capability;

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed May 30, 2008) and the Examiner’s Answer (“Answer,” mailed Aug.
19, 2008).
Appeal 2009-005568
Application 10/162,782

3
while said presenting party is presenting, capturing an image of
said client team with said image capture device;

analyzing said image for two or more of the following: eye
movement, facial expression, gestures, or body motion, with said
attentive technology analyzer; and

during said presenting by said presenting party, modifying said
parameters in said spreadsheet in response to said analyzing to
drive said business modeling capability to alter said business
opportunity proposal.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Tognazzini
Cohen-Solal
US 5,898,423
US 6,873,710 B1
Apr. 27, 1999
Mar. 29, 2005

The following rejection is before us for review:
1. Claims 1-4, 6-14, and 16-20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tognazzini and Cohen-Solal.3

ISSUES
Does the prior art disclose or lead one of ordinary skill in the art to
provide a spreadsheet as claimed?

3 The statement of the rejection set forth in the Answer (p. 3) lists the wrong
claims.
Appeal 2009-005568
Application 10/162,782

4
PRINCIPLES OF LAW
Obviousness
“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 question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 407 (“While
the sequence of these questions might be reordered in any particular case,
the [Graham] factors continue to define the inquiry that controls.”) The
Court in Graham further noted that evidence of secondary considerations
“might be utilized to give light to the circumstances surrounding the origin
of the subject matter sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
All the claims on appeal include a spreadsheet as a limitation to the
subject matter claimed. As such, the cited prior art must disclose this
limitation or, as a whole, have led one of ordinary skill in the art to it in the
manner claimed. Cf. Miniauction, Inc. v. Thomson Corp., 532 F.3d 1318,
1324 (Fed. Cir. 2008) (“The first issue we address with respect to
obviousness is the scope and content of the prior art—specifically whether
the prior art exhibited every step of the methods claimed in independent
Appeal 2009-005568
Application 10/162,782

5
claims 1 and 31 of the ’099 patent.”)
There is no dispute that the cited prior art does not expressly disclose
this limitation. See e.g., Answer 5 (“Tognazzini does not expressly show
wherein the information is displayed in a spreadsheet format.”)
The dispute is over whether it would have been obvious over
disclosure in Tognazzini to include a spreadsheet as claimed. A claimed
invention is unpatentable if the differences between it 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.” 35
U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 406;
Graham v. John Deere Co., 383 U.S. at 13.
In that regard, the Examiner has taken two positions.
First, the Examiner points to column 9, lines 25-45, of Tognazzini,
and argues that “C9 [i.e., col. 9], operating environment - spreadsheet as
claimed would be equivalent to a database inherently needed to identify
advertising displayed based on user images captured).” Answer 4; emphasis
omitted (addressing claim 1). See also Answer 6 (addressing claim 10);
Answer 8 (addressing claim 19); and, Answer 10 (Response to Argument)
(“This modification would require a database (equivalent to a spreadsheet)
and an algorithm (parameters for database) which indicated which
information to provide based on the user input (equivalent to business
model) (C6 [i.e., col. 6 which describes information processing by a central
processor] and C9).”)
Second, the Examiner argues that information in a spreadsheet format
is nonfunctional descriptive material. See Answer 5 (addressing claim 1)
(“[T]hese differences are only found in the nonfunctional descriptive data
Appeal 2009-005568
Application 10/162,782

6
and are not functionally involved in the steps recited. The presentation
system would be performed regardless of the format of data presented
(spreadsheet, full page, window, video, picture, etc.). Thus, this descriptive
data will not distinguish the claimed invention from the prior art in terms of
patentability [case cites omitted].”) See also Answer 7 (addressing claim
10); and, Answer 9 (addressing claim 16).
The Appellants have challenged the Examiner’s first position. Br. 7.
We find that the Examiner has not established a prima facie case of
obviousness.
We reproduce the relevant Tognazzini passage from col. 9 that the
Examiner relied upon to argue that “spreadsheet as claimed would be
equivalent to a database inherently needed to identify advertising displayed
based on user images captured” (Answer 4; emphasis omitted):
Appeal 2009-005568
Application 10/162,782

7

(Tognazzini, col. 9, ll. 28-44. )
This passage not only fails to describe a spreadsheet but we see no
database mentioned. If we understand the Examiner correctly, the disclosure
of a storage from which to access data would lead one of ordinary skill in the
art to a database. Then, because there is an alleged “equivalence” between
databases and spreadsheets, one of ordinary skill in the art would be further
led to a spreadsheet and, moreover, to the spreadsheet as claimed. The
difficulties with this train of logic are manifold.
A storage from which to access data does not necessarily mean a
database is involved. There are many devices for storing data which do not
involve the use of a database. Simply because Tognazzini discloses a
storage from which to access data does not mean one of ordinary skill in the
Appeal 2009-005568
Application 10/162,782

8
art would necessarily understand Tognazzini to disclose a database. But,
even if we assumed arguendo that one of ordinary skill in the art reading
Tognazzini’s disclosure of a storage from which to access data would be led
to implement a database, the claimed invention uses a spreadsheet, not a
database. In that regard, the Examiner alleges an “equivalence” between
databases and spreadsheets. However, there is no evidence on the record
that one of ordinary skill in the art would view databases and spreadsheets
interchangeably. In fact, it is common knowledge that databases and
spreadsheets are not the same and have very different functions. A
spreadsheet is a software tool for organizing information in cells. See
Specification, p. 4, first paragraph. Accordingly, we do not find sufficient
evidence on this record that Tognazzini’s disclosure of a storage from which
to access data would lead one of ordinary skill in the art to use a spreadsheet.
Even still, the independent claims require that during presenting by
the presenting party, modifying said parameters in the spreadsheet in
response to analyzing to drive the business modeling capability to alter the
business opportunity proposal. In a typical database, the parameters stay
fixed, while data is simply placed with the appropriate one of different preset
parameters arranged in an array if a sensed changed occurs. Here however,
Appellants require that the parameters of the matrix change, which would
not occur in a typical database.
Moreover, the question is not whether it would have been obvious to
implement a spreadsheet but to implement a spreadsheet as claimed.
“Analysis begins with a key legal question -- what is the invention claimed?
Courts are required to view the claimed invention as a whole. 35 U.S.C.
§ 103. Claim interpretation, in light of the specification, claim language,
Appeal 2009-005568
Application 10/162,782

9
other claims, and prosecution history, is a matter of law and will normally
control the remainder of the decisional process.” Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1567 (Fed. Cir. 1987). Spreadsheets are per se
known and the Appellants have admitted as much. See Specification, p. 4.
But the claimed subject matter as a whole uses a spreadsheet such that its
parameters are modified in response to analyzing an image captured by an
image capturing device for two or more of eye movement, facial expression,
gestures, or body motion via an attentive technology analyzer. We disagree
that the use of the spreadsheet as claimed is to be argued away, as the
Examiner has, by reasoning that formatting information in a spreadsheet is a
matter of nonfunctional descriptive material. The type of information placed
in the cells of the spreadsheet would be fairly considered nonfunctional
descriptive material. But the modification of the spreadsheet parameters as
claimed is a limitation to the claimed subject matter that implicates the
function of a spreadsheet as a software tool and thus an apparent reasoning
with logical underpinning for modifying Tognazzini so as to include the use
of a spreadsheet in the manner claimed is required in order that a prima facie
case of obviousness can be said to have been established for the claimed
subject matter. This has not been done.
For the foregoing reasons, we find that a prima facie case of
obviousness has not been established.

CONCLUSIONS
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1-4, 6-14, and 16-20 under 35 U.S.C. § 103(a) as being
unpatentable over Tognazzini and Cohen-Solal.
Appeal 2009-005568
Application 10/162,782

10

DECISION
The decision of the Examiner to reject claims 1-4, 6-14, and 16-20 is
reversed.

REVERSED

mev

IBM CORPORATION
IPLAW SHCB/40-3
1701 NORTH STREET
ENDICOTT NY 13760