Ex Parte Munro

Board of Patent Appeals and Interferences

Aug 27, 2012

11025694 (B.P.A.I. Aug. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JILLIAN P. MUNRO
________________

Appeal 2010-002554
Application 11/025,694
Technology Center 2100
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Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and JENNIFER S.
BISK, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-12:
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as obvious over
Breslin (US 2004/0064436 A1; published Apr. 1, 2004) in view of Curtis
(US 2006/0111874 A1; published May 25, 2006; filed Jan. 24, 2005;
provisional application filed Sep. 30, 2004) and Mittal
(US 2005/0144062 A1; published June 30, 2005; filed Dec. 29, 2003).
Claims 6-12 stand rejected under 35 U.S.C. § 103(a) as obvious over
Breslin in view of Curtis.
We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection, rejecting claim 1 under 35 U.S.C. § 102(e) as being
anticipated by Dalby (US 7,133,901 B1; issued Nov. 7, 2006; filed Nov. 13,
2001).

STATEMENT OF CASE
Appellant describes the present invention as follows:
A business continuity (BC) system is described that
includes an asset database, a BC plan, and a BC portal. The
asset database contains a complete and up-to-date inventory of
the organization’s assets. The BC plan covers a top level
administrative unit and all administrative units reporting to the
top level administrative unit. The plan contains one or more
BC groups that are responsible for a portion of the recovery
effort and identifies of one or more mission critical applications
that are covered by the plan. The BC portal may be used to
maintain the plan, educate employees regarding BC plans, and
push information specific to the employee to the employee.
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The information may be predetermined messages or changes to
the employee’s role in the recovery effort.
(Abstract).
Independent claim 1 is illustrative:
1. A computer implemented method, comprising:
receiving a request for business continuity plan (BCP)
information from a web browser, the web browser associated
with a user of the web browser, the user being an employee of
an organization, the user having at least one role in the
organization and belonging to an administrative unit of the
organization;
automatically retrieving information from a BCP
associated with the user in an asset database; and
serving a web page to the web browser, the web page
displaying at least the retrieved information from the BCP
associated with the user in the asset database according to the
user’s at least one role and administrative unit.

CONTENTIONS
The Examiner relies on the combination of Breslin, Curtis, and Mittal
to teach “automatically retrieving information from a BCP associated with
the user in an asset database,” as recited in independent claim 1 (Ans. 2-4).
Specifically, the Examiner finds Breslin teaches “retrieving information
from a BCP” (Ans. 4 (citing Breslin, ¶ ¶ 0011, 0036, 0051)) and Curtis
teaches automatic retrieval of information “associated with the user in an
asset database” (id. (citing Curtis, ¶ ¶ 0047, 0140)). The Examiner adds
Mittal to the combination because “Breslin is not as detailed with the
requesting of information being for the business continuity plan (BCP)
information” (Ans. 5). The Examiner addresses similar limitations presented
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in independent claims 6 and 111 with the combination of Breslin and Curtis
without Mittal (Ans. 8, 9).
Appellant argues, inter alia, “the information retrieved in Curtis et al.
by the report generator is not ‘associated with a user in an asset database’
as alleged by the Office, but is instead ‘generic’ information about IT assets
based on a query” (App. Br. 7).

ANALYSIS
Appellant’s arguments are persuasive. The Examiner’s proposed
combination of Breslin, Curtis, and Mittal fails to teach or suggest
automatically retrieving, populating a web page, or displaying information
“associated with the user in the asset database,” as recited in independent
claims 1, 6, and 11, respectively.
Appellant’s invention uses an asset database to deliver business
continuity plan (“BCP”) information to users. The recited “asset database”
is described as follows:
A corporate-wide, or enterprise-wide, policy may be
implemented, documented, and its’ [sic: its] compliance
measured by encoding policies into an asset database (ADb).
ADb is a relational database that reflects the assets of the Firm,
and how those assets interrelate. Assets include employees,
hardware, software, content, and the like.
(Spec. ¶ 0033).

1 Claim 6 recites the limitation “automatically populating the web page with
information in the BCP associated with the user in the asset database,” and
claim 11 recites the limitation “automatically displaying a business
continuity plan (BCP) associated with the user in the asset database.”
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Appellant’s invention uses the information in the asset database to
automate the delivery of the BCP to the appropriate users through a web
page:
The [business continuity] BC portal may display individualized
web pages to each employee on their web browser providing
BCP information specific to that employee and new
information to educate the employee about changes in the BC
plan or policies. The BC portal may leverage the ability of
ADb to retrieve a person's chain-of-command to ensure that
information pushed to an employee is acknowledged and that
any information required from the employee is quickly
received.
(Spec. ¶ 0099). Accordingly, only the relevant information (information that
has been associated with the appropriate users or employees) is
automatically pushed to the respective web browsers of the appropriate
employees.
The Examiner fails to establish that Curtis teaches automatically
retrieving or displaying information “associated with the user in an asset
database,” as recited in independent claims 1, 6, and 11. While the cited
passages of Curtis discuss a database storing information about “business
issue request results” (¶ 0047) and a web page that permits users to create
reports (¶ 0140), the passages do not establish that the information in the
report has been “associated with the user in an asset database.”
By contrast, as Appellant has argued, the information in Curtis’ report
describes IT assets that match the user’s query (App. Br. 7 (citing Curtis,
¶¶ 0047, 0140)). Curtis’ retrieval of information matching a user’s query is
not synonymous with the claimed automatic retrieval because Curtis is
missing the claimed retrieval of BCP information that is associated with the
user. That is, the cited portions of Curtis fail to indicate that the information
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retrieved is a subset of all of the retrievable information – a subset of
information that is determined by which specific user is requesting the
information.
As such, Appellant has persuaded us that the Examiner’s reliance on
Curtis in the rejections of claims 1, 6, and 11 is an error. Moreover, the
Examiner did not further rely upon either Breslin or Mittal for the claimed
automatic retrieval of information “associated with the user in an asset
database” (Ans. 4-5). As such, the proposed combination leaves this
limitation unaddressed by the cited prior art.
Accordingly, we will not sustain the Examiner’s rejection of
independent claims 1, 6, and 11, or of claims 2-5, 7-10, and 12, which
respectively depend from these independent claims.

NEW REJECTION UNDER 35 U.S.C. § 102(e)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
grounds of rejection under 35 U.S.C. § 102(e) against claim 1. We hold that
claim 1 is anticipated by Dalby (US 7,133,901 B1; issued Nov. 7, 2006).
Principles of Law
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA
1974).
When presented with a claim including nonfunctional
descriptive material, an Examiner must determine whether such
material should be given patentable weight. The Patent and
Trademark Office (PTO) must consider all claim limitations
when determining patentability of an invention over the prior
art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The
PTO may not disregard claim limitations comprised of printed
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matter. See Gulack, 703 F.2d at 1384; see also Diamond v.
Diehr, 450 U.S. at 191. However, the PTO need not give
patentable weight to descriptive material absent a new and
unobvious functional relationship between the descriptive
material and the substrate. See Gulack, 703 F.2d at 1386. See
also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re
Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994). The burden of
establishing the absence of a novel, nonobvious functional
relationship rests with the PTO. In re Lowry, 32 F.3d at 1584.
Ex Parte Halligan, 89 USPQ2d 1355, 1367-1368 (BPAI 2008) (non-
precedential).
Interpretation of Claim 1
Claim 1 recites, inter alia, “receiving a request for business continuity
plan (BCP) information,” “retrieving information from a BCP,” and “serving
a web page to the web browser, the web page displaying at least the
retrieved information.” No functional relationship exists between the BCP
information and the claimed method steps. That is, the same receiving,
retrieving, and web page serving and displaying steps could be used to
process BCP information or some other semantically different information.
In particular, the BCP information is represented by text data, which is
conventionally processed and displayed by web browsers (see, e.g., Fig. 13).
The content of the claimed BCP information does not change how the
process steps are to be performed, though. Nor does the content of the BCP
information cause the claimed system to perform any other function. As
such, the BCP information is given only limited patentable weight in the
determination of whether claim 1 is distinguishable over the prior art.
Specifically, the claim requires the function of displaying a subset of
information or data based upon the identity of the particular user who is
requesting the information. However, no patentable weight is afforded to
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type or content of the information that is retrieved. Whether the information
is BCP information or any other type of data contained within a database is
immaterial to the question of whether the claim is unpatentable over the
prior art.
Analysis
Dalby discloses the limitations of claim 1, as interpreted above:
(i) An integration module 320 receives requests to access the community
information system 300 from the user modules 302a-302n (col. 8, ll.
53-61), where the user modules are web browsers (col. 7, ll. 37-41;
col. 8, ll. 46-52) as claimed (“receiving a request for business
continuity plan (BCP) information from a web browser”). The
claimed BCP information is non-functional descriptive material, and
as such, does not create a patentable distinction over Dalby’s
information that is provided by Dalby’s community information
system 300 and which is processed in the same manner.
(ii) Each user is represented by a web browser that is used to access the
community information system 300 (col. 7, ll. 27-44), and user
accounts are used to store information about that user to associate the
web browser with the user (col. 8, l. 65-col. 9, l. 2) as claimed (“the
web browser associated with a user of the web browser”).
(iii) Dalby’s users are employees of an organization (col. 7, ll. 31-34) as
claimed (“the user being an employee of an organization”).
(iv) The employee users have a role in the organization, such as
“president” or “sales representative” and can be attributed to a
“division or organization” (col. 4, ll. 18-21; col. 12, ll. 50-55; col. 10,
ll. 6-13) as claimed (“the user having at least one role in the
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organization and belonging to an administrative unit of the
organization”).
(v) Dalby’s system retrieves announcements from a database that are
associated with users according to employee attributes in the database
(col. 17, ll. 9-11; col.17, ll. 16-20; col. 4, ll. 18-21) as claimed
(“automatically retrieving information from a BCP associated with the
user in an asset database”). In particular, Dalby’s database 306 stores
information about the users, which are employees (col. 4, ll. 18-21;
col. 12, ll. 50-55). Likewise, the claimed “asset database” stores
“person assets” as shown in Table 2 of Appellant’s Specification. As
such, the claimed asset database reads on the Dalby’s database 306,
which also stores “person assets” of an organization and associated
attributes. Because claimed BCP information is non-functional
descriptive material, the type or content of the information does not
create a patentable distinction over the Dalby’s information that is
also retrieved in the same manner.
(vi) Dalby’s webpage 404 is served to the user’s computer running the
web browser and displayed (col. 10, ll. 47-50) as claimed (“serving a
web page to the web browser”).
(vii) The webpage displays the announcements personalized to the
employee in the database 306 (col. 17, ll. 21-22) and “web page
includes customization based on the recipient's ‘role’ in the system”
(col. 10, ll. 7-10) as claimed (“the web page displaying at least the
retrieved information from the BCP associated with the user in the
asset database according to the user's at least one role and
administrative unit”). Again, because claimed BCP information is
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non-functional descriptive material, the type or content of the
information does not create a patentable distinction over Dalby’s
information, which is also displayed in the same manner.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean that the remaining claims are necessarily patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02

DECISION
The Examiner’s decision rejecting claims 1-12 is reversed.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claim 1 under 35 U.S.C. § 102(e).
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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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)(iv).
REVERSED
37 C.F.R. § 41.50(b)

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