Ex Parte Morgen

Board of Patent Appeals and Interferences

Mar 28, 2012

11539262 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHARON DREW MORGEN
____________

Appeal 2010-006766
Application 11/539,262
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006766
Application 11/539,262

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3, and 5 to 7. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).

BACKGROUND
Appellant’s invention is directed to information handling systems, and
in particular, to navigation of websites over the Internet (Spec. 1).
Claim 1 is illustrative:
1. A process for enabling a visitor to make a criteria-
based decision when browsing a website comprising the steps
of:
providing a computer system implementing the website
and a client machine accessing the website;
presenting a first set of one or more questions to the
visitor on a webpage at the website, wherein the first set of one
or more questions assist the visitor in determining what is
missing with respect to a problem the visitor is seeking to
solve;
presenting a second set of one or more questions to the
visitor on a webpage at the website, wherein the second set of
one or more questions assist the visitor in determining why the
visitor is unable to solve the problem with resources
currently at the visitor's disposal;
presenting a third set of one or more questions to the
visitor on a webpage at the website, wherein the third set of one
or more questions assist the visitor in determining whether
an identified solution to the problem is acceptable to the
visitor when compared to the visitor's criteria;
and

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presenting a webpage at the website to the visitor
providing only information about the identified solution that
meets the visitor's criteria to provide a unique solution in
response to the visitor selecting the identified solution.

Appellant appeals the following rejections:
Claims 1, 3, and 5 to 7 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 1, 3, and 5 to 7 under 35 U.S.C. § 112, first paragraph, as
based on a disclosure which is not enabling.
Claims 1, 3, and 5 to 7 under 35 U.S.C. § 103(a) as unpatentable over
Tavor (US 6,070,149, iss. May 30, 2000) and Sharon Drew Morgen, Selling
with Integrity : Reinventing Sales Through Collaboration, Respect, and
Serving, 6-8, 23-28, 30, 32-34, 44-48, 57-62, 71-76, 78-81, 85-87, 89-92,
119-21, 135-49, 151 (1997) (hereinafter “Morgen”).

ANALYSIS
Enablement
We will not sustain the Examiner's enablement rejection. As to claim
1, the Examiner is of the view that the claims are not enabled because the
specification does not show how the answers to the questions are used to
identify a solution that meets the needs of the visitor and as such the process
claimed is unrepeatable and unpredictable and would require undue
experimentation. The Examiner also does not see how it is possible to skip
the step of determining the visitor’s criteria and identifying a solution to the
problem that is acceptable. As to claim 3, the Examiner is of the opinion
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that the disclosure does not discuss what the responses to the questions are
and how a person of ordinary skill in the art would generate/determine them.
Any analysis of whether a particular claim is supported by the
disclosure in an application requires a determination of whether that
disclosure, when filed, contained sufficient information regarding the subject
matter of the claims as to enable one skilled in the pertinent art to make and
use the claimed invention.
Factors to be considered in determining whether a
disclosure would require undue experimentation … include (1)
the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In the instant case, the Examiner has not made a complete analysis in
regard to undue experimentation. For example, the Examiner has not
addressed the quantity of experimentation, the nature of the invention, the
state of the prior art, and the relative skill of those in the art.
Therefore, we hold that the Examiner has failed to establish a prima
facie case of non-enablement.

Obviousness
We will affirm the Examiner’s rejection under 35 U.S.C. § 103(a).
We adopt the Examiner’s findings found on pages 6 to 9 of the Answer as
our own. We also adopt the Examiner’s response to the Appellant’s
arguments found on pages 13 to 17 as our own. We add for emphasis only
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that we are not persuaded by Appellant’s argument that the Examiner erred
because Tavor does not disclose presenting only information about the
solution because Tavor presents the solution itself. We agree with the
Examiner that the presentation of the solution is presentation about the
solution.
In regard to claims 5 to 7, the Examiner, noting that the prior art
references do not disclose the specific questions recited in these claims,
relies on Official Notice that it was known that a plurality of questions could
be usable in testing and research. We agree that it would have been obvious
to one skilled in the art at the time of the invention to ask a plurality of
questions regarding what is missing from the website.
We also agree with the Examiner that because the claims call for the
presentation of questions, the specific questions themselves are not
functionally related to the method itself. In this regard, we adopt the
Examiner’s response to this argument found on page 15 of the Answer.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the questions cause communications to be passed
that cause operation of the computer system because this argument is not
commensurate in scope with the claims because the claims do not recite that
the questions cause computer operations but only that the questions are
presented.
In view of the foregoing, we will sustain the Examiner’s rejection
under 35 U.S.C. § 103(a).

Appeal 2010-006766
Application 11/539,262

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DECISION
We reverse the Examiner’s § 112 rejections.
We affirm the Examiner’s § 103(a) rejection.
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).
AFFIRMED

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