Ex Parte Dunn

Board of Patent Appeals and Interferences

Sep 24, 2010

10084859 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MELISSA W. DUNN
____________________

Appeal 2009-006331
Application 10/084,8591
Technology Center 2400
____________________

Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed February 27, 2002. The real party in interest is Microsoft
Corp. (Br. 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The Appellant appeals from the Examiner’s rejection of claims 3, 5, 6,
9-13, 15-19, 21, 29, 30, and 32-37 under authority of 35 U.S.C. § 134(a).
Claims 1, 2, 4, 7, 8, 14, 20, 22-28, 31, and 38-46 have been canceled. The
Board of Patent Appeals and Interferences (BPAI) has jurisdiction under 35
U.S.C. § 6(b).
We reverse.
Appellant’s Invention
The invention at issue on appeal relates to a system and method for
allowing a user of web-services (Internet based services) to control access to
user-specific information stored in a network computer system, e.g., in a
data store associated with a web-service provider. (Spec. 1, ll. 3-8; 11, ll. 2-
27.)3
Representative Claim
Independent claim 15 further illustrates the invention. It read as
follows:
15. A method of controlling access to user specific
information for use in a network computer system including a
web-services provider, a user of a service provided by the web-
services provider, and a client of the web-services provider,
said method of controlling access to the user-specific
information comprising:
operatively receiving at the web-services provider a
request from the client to access the certain user-specific

3 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“Br.”) filed
May 21, 2007; and Response to Notification of Non-Compliant Appeal Brief
(“Response”) filed December 18, 2007. We also refer to the Examiner’s
Answer (“Ans.”) mailed February 25, 2008.
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information in the data store wherein the web-services provider
maintaining a data store of user-specific information associated
with the user, said user-specific information accessible by the
user and having access by the client controlled by the user, said
client seeking access to certain of the user-specific information
in the data store;
generating an intended use request by the client of the
certain user-specific information in the data store;
determining an allowed level of access permitted by the
user;
comparing the generated intended use request with the
determined allowed level of access;
invoking a consent engine in response to the client’s
request if the generated intended use request is outside the
allowed level of access, said consent engine informing the user
of the client’s request to access the certain user-specific
information in the data store and inviting the user to permit or
to deny the client’s request to access the certain user-specific
information in the data store; and
completing the request from the client to access the
certain user-specific information in the data store when the
generated intended use request by said client of the certain user-
specific information is within the determined allowed level of
access permitted by the user.

References
The Examiner relies on the following references as evidence of
unpatentability:
Kramer US 5,414,852 May, 9, 1995

Ukelson US 6,338,096 B1 Jan. 8, 2002

Erickson US 2003/0081791 A1 May 1, 2003
(filed Oct. 26, 2001)
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Chen US 2003/0191703 A1 Oct. 9, 2003
(filed Feb. 1, 2002)

Desai US 6,820,204 B1 Nov. 16, 2004
(filed Mar. 31, 2000)

The American Heritage Dictionary of the English Language: Fourth
Edition (2000).

Rejections on Appeal
The Examiner rejects claims 5, 15, 19, 21, 29, 30, and 32-37 under 35
U.S.C. § 102(e) as being anticipated by Chen.
The Examiner rejects claims 3, 10, 13, and 16-18 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Chen and
Kramer.4
The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Chen and Ukelson.
The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Chen and Desai.
The Examiner rejects claims 11 and 12 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Chen, Kramer, and Erickson.

4 The Examiner’s statement of the rejection lists claims 3, 10, 13, 16, and 17
(Ans. 9), but discusses claim 18, which is dependent on claim 17, in the
body of the rejection (Ans. 11). We find this typographical error to be
harmless, and correct the statement of rejection in the interest of clarity.
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ISSUES
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding the Chen reference discloses
“invoking a consent engine in response to the client’s request if the
generated intended use request is outside the allowed level of access, said
consent engine informing the user of the client’s request to access the certain
user-specific information in the data store and inviting the user to permit or
to deny the client’s request” as recited in Appellant’s claim 15?

FINDINGS OF FACT (FF)
Chen Reference
1. Chen describes a system for aggregating data contained in
multiple client accounts and reporting the aggregated account information to
the client and other interested parties to whom the client has granted access
permission according to a client specified level of access permission for the
interested party. (Abst.; ¶¶ [0011], [0012], [0040], [0136]-[0139], [0164].)
Chen maintains a set of client permissions, set by the client for the interested
parties and for the clients’ accounts. (¶¶ [0171]-[0172].) The client can
change or grant access permission to interested parties, for example, from a
list of potential interested parties supplied by an application server and/or
Chen’s aggregation system (¶¶ [0175]-[0176].) As Chen explains:
[0175] If the client selects the field containing the name (or the
field where the name would appear if no name is currently
listed) for an interested party 1410 associated with a particular
aggregated account 1405, the client terminal may display a list
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of potential interested parties 1410 for whom the client user
may choose to grant account access. The list of potential
interested parties 1410 may be provided by the application
server along with an applet transmitted to the client terminal
pursuant to client logon using the client terminal. The
application server may obtain the current set of interested
parties 1410 from client account data using the database server.

[0176] In one embodiment, the data aggregation system may
maintain and store the list of potential interested parties 1410
based upon the interested parties 1410 previously entered or
selected by the client user for other aggregated accounts 1405.
The client user can add or delete an interested party 1410 by
highlighting a particular interested party 1410 from among
those displayed and then selecting the highlighted interested
party 1410 or deleting it, depending on the change to be made.
New interested parties 1410 not named in the displayed list may
be entered using the client terminal keyboard or other data entry
device.
(¶¶ [0175]-[0176].)

ANALYSIS
Appellant elects to argue the anticipation rejection of independent
claims 15 and 29, and does not separately argue dependent claims 19 and 21
(dependent on claim 15), nor dependent claims 5, 30, and 32-37 (dependent
on claim 29). We, therefore, select independent claim 15 as representative
of Appellant’s groupings and arguments, and we will address Appellant’s
arguments with respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
Appellant has 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
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Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of anticipation in the
Examiner’s Answer with respect to representative claim 15 (Ans. 3-5, 14-
19) and claim 29 (Ans. 5-6, 19-21). The Examiner also sets forth a detailed
explanation of a reasoned conclusion of obviousness in the Examiner’s
Answer with respect to claims 3, 6, 9-13, and 16-18. (Ans. 8-14.)
Therefore, we look to the Appellant’s Brief to show error in the proffered
reasoned conclusions. See Kahn, 441 F.3d at 985-86.
Issue 1: Arguments Concerning the Examiner’s Rejection of
Claims 5, 15, 19, 21, 29, 30, and 32-37
under 35 U.S.C. § 102(e)
The Examiner rejects representative claim 15 for being anticipated by
the Chen reference. (Ans. 3-5, 14-19.) Appellant contends, inter alia, that
Chen “fails to disclose or teach ‘invoking a consent engine in response to
the client’s request if the generated intended use request is outside the
allowed level of access, said consent engine informing the user of the
client’s request to access the certain user-specific information in the data
store and inviting the user to permit or to deny the client’s request . . . .’”
(Br. 4; see Br. 8-9.) The Examiner finds that Chen discloses the disputed
feature. (Ans. 4, 17-19.) Specifically, the Examiner finds that:
Chen teaches [of] presenting a client user a list of
potential or new interested parties (Paragraphs 0175-176). The
potential or new interested parties on the list do not have access
to client account data until the client user approves account
access for the potential or new interested parties on the list.
Any login requests by the potential or new interested parties
would be “outside the allowed level of access” permitted by the
client user. By the presenting the list, the client user is
informed of the potential or new interested parties that are
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“outside the allowed level of access” and desire access to the
client account data, which meets the scopes [sic] of “informing
the user of the client’s request to access the certain user-specific
information in the data store”.
(Ans. 19.)
Based on the record before us, we find error in the Examiner’s
anticipation rejection of representative claim 15. We agree with Appellant
that the Chen reference does not disclose the disputed feature of “invoking a
consent engine in response to the client’s request . . . [and] informing the
user of the client’s request” for essentially the reasons espoused by
Appellant.
As detailed in the Findings of Fact section supra, Chen describes a set
of client permissions, set by the client (user) for the interested parties and for
the clients’ accounts. The client can grant initial access permission to
potential interested parties, or change access permission for interested
parties. The potential interested parties may be presented to a user as a list
of potential interested parties supplied by an application server and/or
Chen’s aggregation system. (FF 1.) We, however, do not find Chen
describes providing or generating the list of potential interested parties (i.e.,
invoking the consent engine) in response to a rejected interested party
(client, other than the user) request (i.e., a client’s generated intended use
request, which is outside the allowed level of access). Nor does Chen
describe in any way informing the user of a failed attempted access request.
Rather, Chen’s list is provided in response to a user’s action “[when] the
client [(user)] selects the field containing the name . . . for an interested party
1410 associated with a particular aggregated account 1405, the client
terminal may display a list of potential interested parties.” (FF 1, ¶ [0175].)
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As pointed out by Appellant, the list of potential interested parties is
provided to the user by the application server, which “maintains and stores
the list of potential interested parties ‘based upon the interested parties
previously entered or selected by the client user for other aggregated
accounts.’” (Br. 9; see FF 1, ¶ [0176].) Consequently, we agree with
Appellant that Chen does not describe providing the potential interested
parties list in response to a client’s request, nor informing the user of the
client’s request. Thus, Chen does not disclose “invoking a consent engine in
response to the client’s request if the generated intended use request is
outside the allowed level of access, said consent engine informing the user
of the client’s request to access the certain user-specific information in the
data store and inviting the user to permit or to deny the client’s request” as
recited in Appellant’s claim 15.
We, therefore, are constrained by the record before us to find that
Chen does not disclose at least the disputed feature of “invoking a consent
engine in response to the client’s request.” The Examiner has failed to set
forth a prima facie anticipation rejection. It follows that Appellant has
persuaded us to find error in the Examiner’s anticipation rejection of
Appellant’s representative independent claim 15.
Appellant’s independent claim 29 includes a limitation similar in
scope to the disputed limitation of claim 15 – “a consent engine generating
an option list in response to the client's request” (see Br. 17, Claim App’x.,
claim 29). It follows, for the reasons discussed supra, that the Chen
reference also does not anticipate Appellant’s independent claim 29.
Appellant’s dependent claims 19 and 21 (dependent on claim 15), and
dependent claims 5, 30, and 32-37 (dependent on claim 29) depend on their
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respective base independent claims. Therefore, based on the record before
us, we find that the Examiner erred in finding the Chen discloses each
limitation recited in Appellant’s claims 5, 15, 19, 21, 29, 30, and 32-37.
Accordingly, we reverse the Examiner’s anticipation rejection of these
claims.
Rejection of Claims 3, 6, 9-13, and 16-18 under § 103
Appellant does not separately argue the Examiner’s obviousness
(§ 103) rejections of dependent claims 3, 6, 9-13 (dependent on claim 29),
and 16-18 (dependent on claim 15), instead relying on the arguments made
with respect to claim 15 (supra). (Br. 2, 9, 11.) Based on the record before
us, we also find error in the Examiner’s obviousness rejection of Appellant’s
dependent claims 3, 6, 9-13, and 16-18. As we explained with respect to
claims 15 and 29 supra, the Chen reference does not disclose at least one
feature recited in the claims. The Examiner rejects each of claims 3, 6, 9-13,
and 16-18 as unpatentable in view of a combination including the Chen
reference. (Ans. 8-14.) None of the cited references cures the deficiencies
of the Chen reference. Accordingly, we must also reverse the Examiner’s
obviousness rejections of claims 3, 6, 9-13, and 16-18.

CONCLUSIONS OF LAW
Appellant has shown that the Examiner erred in rejecting claims 5, 15,
19, 21, 29, 30, and 32-37 under 35 U.S.C. § 102(e).
Appellant has shown that the Examiner erred in rejecting claims 3, 6,
9-13, and 16-18 under 35 U.S.C. § 103(a).

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DECISION
We reverse the Examiner’s rejection of claims 5, 15, 19, 21, 29, 30,
and 32-37 under 35 U.S.C. § 102(e).
We reverse the Examiner’s rejection of claims 3, 6, 9-13, and 16-18
under 35 U.S.C. § 103(a).

REVERSED

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