Ex Parte Foth et al

Board of Patent Appeals and Interferences

May 7, 2012

10656789 (B.P.A.I. May. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS J. FOTH, ALTON J. VOLANTH,
G. JONATHAN WOLFMAN, HOWARD M. CITRON,
and MARK DYDZHUN
____________

Appeal 2010-012294
Application 10/656,789
Technology Center 3600
____________

Before: BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012294
Application 10/656,789

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-3, 6-22, and 31-
34. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is directed to gathering raw data, which can be
both subjective opinion and objective data, about other parties with which an
enterprise deals, summarizing and formatting the data gathered, and
distributing the resulting information generated among users in the
enterprise (Spec., para. [0001]). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A method for controlling a system for
automatically generating and distributing information,
comprising the steps of:
a) monitoring a document as it is processed by a user;
b) identifying a reference to a party in said document;
c) accessing a database that stores information about
various users including weights assigned by the various users
and detail level assigned to the various users;
d) accessing a database of information relating to
relationships between an enterprise and other parties wherein
said information includes a value of said relationship to said
enterprise, a quality of said relationship to said enterprise and
the weights assigned by the various users; and
e) if a record relating to said party exists in said database,
providing information relating to a relationship between said
enterprise and said party to said user, based upon the detail
level assigned to the user.

Claims 1-3, 6-8, 10-19, 21, and 22 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Aycock (US 5,765,138, iss. Jun. 9, 1998) in
view of Piggot (US 2002/0156736 A1, pub. Oct. 24, 2002); claims 9 and 20
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Aycock in
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Application 10/656,789

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view of Piggot and Klingman (US 5,950,172, iss. Sep. 7, 1999); and claims
31-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Aycock
in view of Piggot and Crockett (US 2004/0039631 A1, pub. Feb. 26, 2004).
We AFFIRM.

ANALYSIS
We are not persuaded the Examiner erred in asserting that various
combinations of Aycock, Piggot, Klingman, and Crockett render obvious
claims 1-3, 6-22, and 31-34 (App. Br. 15-20). We agree with and adopt the
Examiner’s findings, claim constructions, and rationales, as set forth on
pages 13-18 of the Examiner’s Answer.
Contrary to the conclusion implied by Appellants’ string citation
(App. Br. 17), the Examiner has met the initial burden of establishing a
prima facie case of obviousness, by providing pinpoint citations for each
claim aspect on pages 4-13 of the Examiner’s Answer. See In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (during examination, the examiner
bears the initial burden of establishing a prima facie case of obviousness).
For example, for claim aspects c) and e) of independent claim 1, the
Examiner has cited the following:
 Figure 2 of Aycock;
 column 2, line 65 through column 3, lines 1-3, 9-18 of Aycock;
 column 11, lines 23-30 of Aycock; and
 paragraph [0014] of Piggot
(Exam’r’s Ans. 4-5, 13-15). In response, Appellants have recited verbatim
various portions of Aycock and Piggot, added a one sentence summary of
those portions, recited claim aspects c) and e) verbatim, and made the
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general conclusory statement that “Aycock and/or Piggot taken separately or
together do not disclose or anticipate steps c and e of claim 1 and those
claims dependent thereon” (App. Br. 15-16). In all of this, Appellants have
failed to provide a specific, technical analysis as to why the Examiner’s
application of the cited portions of Aycock and Piggot to claim aspects c)
and e) are incorrect. In the absence of such an analysis, Appellants have not
met the burden of rebutting the prima facie case of obviousness. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“[o]nce a prima facie case of
obviousness [is] established..., the burden shift[s] to appellant to rebut it”).
And even if Appellants have barely met that burden, the weight of the
evidence overwhelmingly favors the Examiner.
With respect to Appellants’ arguments concerning certain advantages
of the claimed invention (App. Br. 17), if the combination of references
renders obvious every aspect of the claims, the combination also includes
the same advantages as the claimed invention.

DECISION
The decision of the Examiner to reject claims 1-3, 6-22, and 31-34 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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Application 10/656,789

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