Ex Parte Motoyama et al

Board of Patent Appeals and Interferences

Oct 5, 2009

09440692 (B.P.A.I. Oct. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TETSURO MOTOYAMA, AVERY FONG,
and YEVGENIYA LYAPUSTINA
__________

Appeal 2009-002470
Application 09/440,692
Technology Center 2400
__________

Decided: October 5, 2009
__________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
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, 3-9, 11-17, 19-25, and 27-32. Claims 2,
10, 18, and 26 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on September 9, 2009.

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Application 09/440,692

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The Invention
The disclosed invention relates generally to monitoring a user’s usage
of a target application and communicating the monitored information to a
desired party (Spec. 3).
Independent claim 1 is illustrative:
1. A system comprising:
a device comprising an interface, the interface comprising a
plurality of operations to be selected by a user;
a monitoring device configured to monitor data of selecting of
the plurality of operations of the interface by the user, and to encode
and store the monitored data into a log file in the device;
a communicating device configured to receive the log file of the
monitored data, to decode the stored encoded log file, to create a
message of the monitored data, and to then communicate the message
of the monitored data;
wherein the monitoring device includes a control to
automatically start the monitoring without an input from a device to
which the message of the monitored data is to be communicated, and
wherein the communicating device includes a control to
automatically communicate the message of the monitored data by a
unidirectional communication without requiring input from the device
to which the message of the monitored data is to be communicated.

The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Motoyama US 5,819,110 Oct. 06, 1998
Frantz US 6,003,070 Dec. 14, 1999
(filed Feb. 25, 1997)
Reed US 6,088,717 Jul. 11, 2000
(filed Aug. 31, 1998)
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The Rejections
1. The Examiner rejects claims 1, 5-9, 13-17, 21-25, and 29-32 under 35
U.S.C. § 103(a) as being unpatentable over Frantz and Reed.
2. The Examiner rejects claims 3, 4, 11, 12, 19, 20, 27, and 28 under 35
U.S.C. § 103(a) as being unpatentable over Frantz, Reed, and
Motoyama.

ISSUE
The Examiner finds that “Frantz’s interface comprises a plurality of
operations [activation criteria] to be selected by a user” (Ans. 8 (alteration in
original)).
Appellants assert that Frantz fails to disclose “any operations selected
by a user that are monitored” and that “the ‘activation criteria’ are not in fact
user’s selection of operations on the interface” (App. Br. 11) or that the
“activation criteria is . . . monitored and logged” (Reply Br. 2).
Did Appellants demonstrate that the Examiner erred in finding that
Frantz discloses an interface comprising a plurality of operations to be
selected by a user that are monitored and stored in a log file?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Frantz discloses an interface device that includes “an e-mail interface
. . . which connects the device 10 to the internet” (col. 4, ll. 32-33)
Appeal 2009-002470
Application 09/440,692

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and “is capable of sending and receiving standard e-mail messages”
(col. 4, ll. 34-35).
2. Frantz discloses that the interface device also includes an interpreter
that “allows information . . . to be converted into an e-mail message
. . . directed towards . . . the technician” (col. 4, ll. 37-42).
3. Frantz discloses that if messages contain activation criteria, “the E-
mail interpreter and generator queries the database for each intended
recipient’s profile . . . then sends to each of the recipients an E-mail
message containing the details of the system message” (col. 4, ll. 58-
64).
4. Frantz discloses that the “activation criteria can be set . . . where
every system message . . . is sent via E-mail [to the technician]” (col.
5, ll. 5-13).

PRINCIPLES OF LAW
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., 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.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Appeal 2009-002470
Application 09/440,692

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ANALYSIS
Claim 1 recites an interface with a plurality of operations selected by a
user, monitoring and storing the selecting and communicating a message of
the monitored and stored data. Independent claims 9, 17, and 25 recite
similar features.
The Examiner finds that Frantz discloses “a plurality of operations
[activation criteria] to be selected by a user” (Ans. 8 (alteration in original)).
While the Examiner equates the “activation criteria” of Frantz with the
claimed plurality of operations on an interface, the Examiner does not
demonstrate that Frantz also discloses or suggests that the activation criteria
of Frantz is automatically monitored and stored in a log file and that a
message is created of the activation criteria or that such a message is
communicated.
Frantz discloses, for example, that “the activation criteria can be set to
an alert mode” (col. 5, ll. 3-4) or “maintenance/repair mode” (col. 5, l. 6)
and therefore discloses setting selection criteria to a particular mode. Even
assuming that setting the activation criteria of a mode of use entails a user
selecting a plurality of operations on an interface, the Examiner has not
shown that Frantz monitors, stores, and communicates the selection of the
activation criteria in the manner claimed. Indeed, while messages of Frantz
resulting from selecting a particular mode (e.g., emergency system
messages) are arguably sent to a user, it does not appear that Frantz
communicates any messages pertaining to the selection of activation criteria
itself.
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In addition, the Examiner has not demonstrated that Reed or
Motoyama discloses or suggests the disputed features.
Accordingly, we conclude that Appellants have met their burden of
showing that the Examiner erred in rejecting independent claims 1, 9, 17,
and 25, and claims 3-8, 11-16, 19-24, and 27-32, which 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 Frantz
discloses an interface comprising a plurality of operations to be selected by a
user that are monitored and stored in a log file.

DECISION
We reverse the Examiner’s decision rejecting claims 1, 3-9, 11-17,
19-25, and 27-32 under 35 U.S.C. § 103.

REVERSED

msc

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