10341583 - (D) (B.P.A.I. Oct. 13, 2009)

Ex Parte Goodwin et al

Board of Patent Appeals and InterferencesOct 13, 2009

10341583 - (D) (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JAMES P. GOODWIN, CARL J. KRAENZEL, ANDREW L. SCHIRMER, and DAVID L. NEWBOLD __________ Appeal 2009-003691 Application 10/341,583 Technology Center 2100 __________ Decided: October 14, 2009 __________ Before JAY P. LUCAS, ST. JOHN COURTENAY III, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-003691 Application 10/341,583 2 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).1 The Invention The disclosed invention relates generally to organizing data and communicating with users having affinity to the data (Spec. 1). Independent claim 1 is illustrative: 1. A method for organizing knowledge data comprising: enabling a user to specify a subset of knowledge data, wherein the knowledge data is organized according to one or more topical categories, the knowledge data comprising (i) user profiles that include information about one or more individuals, and (ii) documents that include information content created, edited, and/or accessed by the individuals, and wherein the information about the individuals included in the user profiles includes affinities of the individuals to documents and affinities of the individuals to the topical categories; providing a place associated with the subset of the knowledge data, said place including at least one portal having a search window for searching the subset of the knowledge data, a list for displaying indicia associated with individuals having user profiles that include an affinity to the subset of knowledge data, and communication means to initiate communication with these individuals; enabling the user to initiate a search of the subset of the knowledge data using the search window; 1 Appellants waived appearance at an oral hearing scheduled for this appeal on October 6, 2009. Appeal 2009-003691 Application 10/341,583 3 performing the search of the knowledge data initiated by the user, wherein performing the search comprises (i) identifying one or more of the documents that include information content related to the search and (ii) identifying one or more of the user profiles that include affinities to the identified documents; displaying indicia associated with the individuals that correspond to the user profiles that include affinities to the identified documents; enabling selection of one or more of the displayed indicia; and initiating communication with the individual or individuals associated with the selected indicia. The Reference The Examiner relies upon the following reference as evidence in support of the rejection: Adriana Vivacqua and Henry Lieberman, Agents to Assist in Finding Help, CHI Letters, Vol. 2, Issue 1 (April 2000), pgs. 65-72 (“Vivacqua”). The Rejection The Examiner rejects claims 1-18 under 35 U.S.C. § 102(b) as being anticipated by Vivacqua. ISSUE Appellants assert that Vivacqua fails to disclose “identifying one or more of the documents that include information content related to the search and . . . identifying one or more of the user profiles that include affinities to the identified documents” (App. Br. 11). Appeal 2009-003691 Application 10/341,583 4 Did Appellants demonstrate that the Examiner erred in finding that Vivacqua discloses identifying one or more of the documents that include information content related to the search and identifying one or more of the user profiles that include affinities to the identified documents? FINDINGS OF FACT The following Findings of Facts (FF) are shown by a preponderance of the evidence. 1. Vivacqua discloses that “Expert Finder verifies what constructs [a user] has used, how often and how extensively, and compares those values to the usage levels for the rest of the participating community” (pg. 66, col. 1). 2. Vivacqua discloses that a user “can see and edit her profile on the profile-editing window” (pg. 66, col. 1). 3. Vivacqua discloses that “the agent knows that sql is related to database manipulation – java.sql is a library of objects for database manipulation. From the model, the agent knows which classes are included in this library” (pg. 66, col. 1). PRINCIPLES OF LAW 35 U.S.C. § 102 In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Appeal 2009-003691 Application 10/341,583 5 Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) (citation omitted). “In other words, if granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art.” Id. (citation omitted). ANALYSIS Claim 1 recites identified documents that include information content created, edited, and/or accessed by individuals and identifying user affinities to the identified documents. The Examiner finds that “Vivacqua discloses (page 66, col. 1, lines 16-24; tables 1-2) that its system identifies one or more documents (i.e., classes, a library of objects, etc.)” (Ans. 8). Appellants argue that “a JAVA library [of Vivacqua] is not analogous to a ‘document’ [as claimed]” (Reply Br. 5) because the recited “documents” must include “‘information content’ being ‘created, edited, and/or accessed’ by users” (id.). Even if we adopt, arguendo, the Examiner’s broad interpretation that “classes” or “a library of objects” may be construed as “documents,” the Examiner has not demonstrated that the “classes” or the “library of objects” are “created, edited, and/or accessed by the individuals [for whom user profiles are maintained].” Vivacqua discloses that user profiles are created for users that indicate a level of Appeal 2009-003691 Application 10/341,583 6 expertise of each respective user with various objects (FF 3). However, the users in Vivacqua (e.g., “Jen” or “David”) do not appear to create or otherwise access the library of objects as recited in claim 1. Independent claims 2 and 3 recite similar features as claim 1. Accordingly, we conclude that Appellants have met their burden of showing that the Examiner erred in rejecting independent claims 1, 2, and 3, and claims 4-8, 9-13, and 14-18, which respectively depend therefrom. CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that Appellants have demonstrated that the Examiner erred in finding that Vivacqua discloses identifying one or more of the documents that include information content related to the search and identifying one or more of the user profiles that include affinities to the identified documents. DECISION We reverse the Examiner’s decision rejecting claims 1-18 under 35 U.S.C. § 102(b). REVERSED Appeal 2009-003691 Application 10/341,583 7 msc PILLSBURY WINTHROP SHAW PITTMAN, LLP c/o SUSAN TRADER 1650 TYSONS BOULEVARD P.O. BOX 10500 MCLEAN, VA 22102