Ex Parte Mikami

Board of Patent Appeals and Interferences

Sep 27, 2010

10632160 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/632,160 07/31/2003 Yoshiko Mikami JP920010380US1 (279) 1909
46320 7590 09/28/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
WHIPPLE, BRIAN P
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
09/28/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YOSHIKO MIKAMI
________________

Appeal 2009-006640
Application 10/632,160
Technology Center 2400
________________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and DEBRA K.
STEPHENS, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1

1 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.
Appeal 2009-006640
Application 10/632,160

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention relates to a network system delivering content to
computers networked to a server (Spec. 1, ¶ [0001]).
Claim 1 is illustrative:
1. A method for use in a network system comprising:
storing at a host computer profile information relating to
individual users of the host computer, the profile
information for a first user and a second user identifying
host applications that the first user and the second user,
respectively, are permitted to execute,
in response to a request from the first user identifying a
list of one or more applications that the first user is
permitted to execute, storing the list in the profile of the
second user, whereby the second user is permitted to
execute the applications in the list under control of the
first user.
References
The Examiner relies on the following references as evidence in
support of the rejection:
Walker US 6,286,001 B1 Sep. 4, 2001
Gatz US 2002/0049806 A1 Apr. 25, 2002
Rejection
Claims 1-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gatz and Walker.
Appeal 2009-006640
Application 10/632,160

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ISSUES
Issue 1
Appellant “submits that the Examiner’s analysis is not based upon a
common sense rationale, as supported by the teachings of the applied prior
art . . . . [T]he Examiner’s proposed modification and asserted rationale for
the modification are essentially the same” (Reply. Br. 2-3).
Issue: Did the Examiner err in concluding that it would have been
obvious to an artisan to combine the teachings and suggestions of Gatz and
Walker?
Issue 2
Appellant argues that “[n]either Walker nor Gatz appear to teach . . .
a list of one or more application[s] that the parent is permitted to execute
since the parent (supervisor, etc.) appears to have access to the application
by default” (App. Br. 8).
Issue: Did the Examiner err in finding that Gatz and Walker would
have taught or suggested identifying a list of one or more applications that a
first user is permitted to execute and a second user that is permitted to
execute the applications in the list under control of the first user?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence:
1. Gatz discloses
[a]n access server [that] controls use of services in an
account based access server and includes a database of
users, a data structure associating users identified as
parents with parent accounts, users identified as children
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Application 10/632,160

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with child accounts and associating parent accounts with
child accounts in family accounts.
(Abst.).
2. Gatz discloses that “a holder of a child account is configured by an
access server such that the holder cannot participate in any auction,
and will not be permitted access to . . . any other area that the adult
deems inappropriate. . . . [C]ertain restrictions might be overridden
by a controlling parent” (¶ [0075]).
3. Walker discloses “[a] browser capable of accessing only web
pages previously authorized by a parent or supervisor of a user of
the browser” (Abst.).
PRINCIPLES OF LAW
Claim interpretation
“In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).
Obviousness
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. of Kansas City,
383 U.S. 1, 17-18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results,”
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KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007), especially if the
combination would not be “uniquely challenging or difficult for one of
ordinary skill in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
ANALYSIS
Issue 1
Appellant argues that the Examiner provides insufficient rationale for
finding that it would have been obvious to an artisan to combine the
teachings and suggestions of Gatz and Walker. Based on Appellant’s
arguments in the Appeal Brief, we will decide the appeal with respect to
issue 1 on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The teachings and suggestions of Gatz and Walker are both related.
Gatz relates to an access server the controls use of services based on children
accounts that are associated with parent accounts (FF 1). Walker relates to a
browser capable of accessing only web pages previously authorized by a
parent of a user of the browser (FF 3). Because the two references are
related, the teachings and suggestions of Walker would have been familiar
elements to an artisan seeking to modify Gatz, and vice versa.
Appellant does not show that the Examiner’s proposed combination of
the familiar elements of Gatz and Walker would have done anything more
than yield predictable results. Therefore, we find no error in the Examiner’s
finding that it would have been obvious to an artisan to combine the
teachings and suggestions of Gatz and Walker.
For at least these reasons, we are not persuaded of error with respect
to this issue in the Examiner’s 35 U.S.C. § 103(a) rejections of claims 1-11.
Appeal 2009-006640
Application 10/632,160

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Issue 2
Appellant argues that neither Walker nor Gatz teach a list of one or
more applications that the parent is permitted to execute. Based on
Appellant’s arguments in the Appeal Brief, we will decide the appeal with
respect to issue 2 on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that “Gatz does not explicitly teach the claimed list
of one or more application[s] that the first user is permitted to execute”
(App. Br. 5). However, Appellant later admits that “the parent (supervisor,
etc.) [in either Walker or Gatz] appears to have access to the application by
default” (App. Br. 8). Based on this admission, Walker and Gatz at least
suggest one or more applications that a first user is permitted to execute (i.e.,
that they have access by default). Gatz discloses that a controlling parent
can override restrictions on a child account’s ability to use services, such as
participating in auctions or accessing areas deemed inappropriate (FF 2).
Therefore, Gatz and Walker would have taught or suggested identifying
(overriding) a list of one or more applications (restrictions on services) that a
first user (a parent) is permitted to execute (can access by default) and a
second user (where the overriding is for a child account) that is permitted to
execute the applications (enabling the child account to access restricted
services) in the list under control of the first user (as permitted by the
controlling parent).
Appellant offers that “even if the parent inherently had access to the
applications, the parent . . . may not be permitted to use the application (e.g.,
the parent chooses not to have access to the application or the parent is
required to sign up for [the] application, in order to use[] the application, and
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the parent has not)” (App. Br. 6-7). This attempt to distinguish between
having access to an application and having permission to execute an
application is unpersuasive. The claim language does not limit the list of
applications to only include applications that the first user is permitted to
execute without any additional steps. Additional steps, such as choosing to
have access to or signing up to use, are not precluded by the claim
limitations.
For at least these reasons, we are not persuaded of error with respect
to this issue in the Examiner’s 35 U.S.C. § 103(a) rejections of claims 1-11.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we find no
evidence persuasive of error in the Examiner’s:
1. conclusion that it would have been obvious to an artisan to
combine the teachings and suggestions of Gatz and Walker (issue 1) and
2. finding that Gatz and Walker would have taught or suggested
identifying a list of one or more applications that a first user is permitted to
execute and a second user that is permitted to execute the applications in the
list under control of the first user (issue 2).

DECISION
We affirm the Examiner’s decision rejecting claims 1-11 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

Appeal 2009-006640
Application 10/632,160

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AFFIRMED

ack

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487