Ex Parte Gundy et al

Board of Patent Appeals and Interferences

Apr 28, 2010

11183715 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DALE GUNDY and 8
DAVID BOHL 9
___________ 10
11
Appeal 2009-010484 12
Application 11/183,715 13
Technology Center 3600 14
___________ 15
16
Decided: April 28, 2010 17
___________ 18
19
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 20
MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE 1
Dale Gundy and David Bohl (Appellants) seek review under 35 U.S.C. 2
§ 134 (2002) of a final rejection of claims 1-22, the only claims pending in 3
the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a way of automating symptom association 10
within a solution network. Specification 1:6-7. 11
An understanding of the invention can be derived from a reading of 12
exemplary claims 7 and 18, which are reproduced below [bracketed matter 13
and some paragraphing added]. 14
7. An apparatus for automatically associating information with 15
content in a solution network comprising: 16
[1] means for identifying information used by a customer when 17
attempting to resolve an issue; 18

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed October 24, 2008) and the Examiner’s Answer (“Ans.,” mailed
January 27, 2009).
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[2] means for determining when the customer contacts a 1
customer service technician based upon the issue; and, 2
[3] means for resolving the issue using content stored on the 3
solution network; and, 4
[4] means for automatically associating the information used by 5
the customer with the content used to resolve the issue. 6
18. (Original) An apparatus for associating information with 7
content in a solution network comprising: 8
[1] means for identifying a keyword used by a customer when 9
attempting to resolve an issue; 10
[2] means for identifying an attribute associated with the 11
customer; 12
[3] means for determining when the customer contacts a 13
customer service technician based upon the issue; and, 14
[4] means for resolving the issue using content stored on the 15
solution network; and, 16
[5] means for associating the keyword used by the customer 17
with the content used to resolve the issue; and, 18
[6] means for associating the attribute associated with the 19
customer with the content used to resolve the issue. 20
THE REJECTIONS 21
The Examiner relies upon the following prior art: 22
White US 2005/0097507 A1 May 5, 2005
Enis US 2005/0096924 A1 May 5, 2005
Claims 1-6 and 13-17 stand rejected under 35 U.S.C. § 101 as directed to 23
non-statutory subject matter. 24
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Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable 1
over White and Ennis. 2
DISPOSITION OF THE APPEAL 3
The Examiner entered a new ground of rejection in the Examiner’s 4
Answer against claims 1-6 and 13-17 under 35 U.S.C. §101 as being 5
directed to nonstatutory subject matter. Answer 3-4. The Examiner 6
properly gave notice of the new ground of rejection (Answer 3) and the 7
Technology Center Director approved it (Answer 13). As the Answer 8
indicated (Answer 12), the Appellants were required to respond to the new 9
grounds within two months in either of two ways: 1) reopen prosecution (see 10
37 CFR 41.39(a)(2)(b)(1)); or 2) maintain the appeal by filing a reply brief 11
as set forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua 12
sponte dismissal of the appeal as to the claims subject to the new ground of 13
rejection.” Answer 12-13. According to the record before us, neither option 14
appears to have been exercised. 15
Accordingly, the appeal as to claims 1-6 and 13-17, subject to the new 16
ground of rejection under 35 U.S.C. §101 as being directed to nonstatutory 17
subject matter stands dismissed. 18
Given that the appeal as to claims 1-6 and 13-17 stands dismissed, the 19
rejections before us for review are reduced to as follows: 20
Claims 7-12 and 18-22 are rejected under 35 U.S.C. § 103(a) as 21
unpatentable over White and Ennis. 22
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ARGUMENTS 1
The Appellants argue these claims as a group. Accordingly, we select 2
claim 7 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 3
The Appellants contend that neither reference describes automatically 4
associating information used by a customer with content used to resolve an 5
issue. Appeal Br. 3. 6
ISSUE 7
The issue of whether the Examiner erred in rejecting claims 7-12 and 18-8
22 under 35 U.S.C. § 103(a) as unpatentable over White and Ennis turns on 9
whether the references describe automatically associating information used 10
by a customer with content used to resolve an issue. 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to the Prior Art - White 15
01. White is directed to a knowledge management system that 16
dynamically verifies knowledge within the solution network by 17
automatically associating every call with a solution that was used. 18
The solutions that pass through the automated verification process 19
are weighted both on usage and effectiveness. White’s 0011-20
0012. 21
02. An automated technician interface module provides the user 22
interface function between the technician and the solution network 23
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system. An information broker accesses information from the 1
internal repository, a repository for troubleshooting solutions. The 2
information broker determines a best answer for a user based upon 3
the user's answers to questions presented by the technician. White 4
¶ 0028. White’s Fig. 1 shows that such information access is via a 5
search engine using text. Natural language and Boolean 6
searching. Such textual searching is based on indexed words, and 7
is therefore a form of keyword searching. 8
Facts Related to the Prior Art - Enis 9
03. Enis is directed to a knowledge management system which 10
streamlines resource usage and enhances knowledge mining 11
capabilities by eliminating the need for a third party or 12
disconnected content creation group and by integrating the content 13
creation process and the call center technician phone intake 14
process. Enis ¶ 0010. 15
04. The enterprise data repository is a customer database which 16
includes histories on a customer including what system the 17
customer has purchased, the components included with the 18
system, profile history (i.e., contact information) as well as prior 19
service history, prior rendered solutions and prior web support 20
activity. This customer information is linked with the solution 21
network. Additionally, the component information is provided to 22
the solution network. Enis ¶ 0028. 23
05. A search module receives customer described issue and 24
searches the internal repository for possible solutions by 25
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converting how a customer describes an issue into searchable 1
keywords. A decision tree controls the way that branches on a 2
solution network decision tree are rendered. Enis ¶ 0030. 3
PRINCIPLES OF LAW 4
Obviousness 5
A claimed invention is unpatentable if the differences between it and 6
the prior art are “such that the subject matter as a whole would have been 7
obvious at the time the invention was made to a person having ordinary skill 8
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 9
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 10
In Graham, the Court held that that the obviousness analysis is 11
bottomed on several basic factual inquiries: “[(1)] the scope and content of 12
the prior art are to be determined; [(2)] differences between the prior art and 13
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 14
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 15
U.S. at 406. “The combination of familiar elements according to known 16
methods is likely to be obvious when it does no more than yield predictable 17
results.” Id. at 416. 18
ANALYSIS 19
The Appellants argue both claims 7 and 18. Each of these claims is 20
expressed as means plus function, and the Appellants direct us to 21
Specification 13-14 for the disclosed structure. This portion of the 22
Specification shows that the means for associating information and attributes 23
with content is via database look-ups using keywords. 24
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The Examiner found: 1
Appellant’s first argument, appearing on pages 3 and 4 of the 2
appeal brief, is that neither White et al. nor Enis et al. discloses 3
automatically associating information used by a customer with 4
content used to resolve an issue, as required by Claims 1 and 7. 5
Examiner asserts that White et al. discloses automatically 6
associating information used by a customer with content used to 7
resolve an issue by automatically associating a call from a 8
customer wherein the customer call is pertaining to an issue 9
with a solution that is provided to the customer to solve the 10
issue (Abstract). A solution to a customer's issue is determined 11
using a repository containing troubleshooting solutions 12
([0028]), wherein an information broker determines a best 13
answer for a user based upon the user's answers to questions 14
presented by the technician ([0028]). 15
Appellant’s second argument, appearing on page 4 of the 16
appeal brief, is that neither White et al. nor Enis et al. discloses 17
identifying a keyword used by a customer when attempting to 18
resolve an issue and identifying an attribute associated with the 19
customer, as required by Claims 13 and 18. 20
Examiner asserts that Enis et al. discloses identifying a 21
keyword used by a customer when attempting to resolve an 22
issue by an internal search module receiving a customer 23
described issue and searches the internal repository for possible 24
solutions; wherein the search module systematically converts 25
how a customer describes an issue into searchable keywords 26
([0030]). Enis et al. also discloses identifying an attribute 27
associated with the customer by discloses an enterprise data 28
repository that identifies the system the customer has 29
purchased, the components included with the system, customer 30
profile history, prior service history, and prior rendered 31
solutions ([0028]). 32
Ans. 11. We agree that the Examiner has identified the Appellants’ 33
arguments, and we agree with the Examiner’s findings of facts. FF 02, 04, 34
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and 05. White implicitly uses keywords to find solutions (FF 02) and Enis 1
explicitly recites using keywords for such a purpose (FF 05). 2
3
CONCLUSIONS OF LAW 4
The Examiner did not err in rejecting claims 7-12 and 18-22 under 35 5
U.S.C. § 103(a) as unpatentable over White and Ennis. 6
7
DECISION 8
To summarize, our decision is as follows. 9
• The rejection of claims 7-12 and 18-22 under 35 U.S.C. § 103(a) as 10
unpatentable over White and Ennis is sustained. 11
Upon return of the application to the Examiner, the Examiner should: 12
(1) cancel claims 1-6 and 13-17 subject to the new ground of rejection and 13
(2) notify the Appellants that the appeal as to claims 1-6 and 13-17, 14
subject to the new ground of rejection under §101, as being directed to 15
nonstatutory subject matter, is dismissed and claims 1-6 and 13-17 are 16
cancelled. 17
See Manual of Patent Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 18
7, Jul. 2008. 19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 21
22
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AFFIRMED 1
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