Ex Parte Rodriguez et al

Board of Patent Appeals and Interferences

Jun 11, 2009

09704569 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte HERMAN RODRIGUEZ, NEWTON 8
JAMES SMITH, JR., and CLIFFORD JAY SPINAC 9
___________ 10
11
Appeal 2009-000170 12
Application 09/704,569 13
Technology Center 3600 14
___________ 15
16
Decided:1 June 11, 2009 17
___________ 18
19
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 20
MOHANTY, Administrative Patent Judges. 21
22
FETTING, Administrative Patent Judge. 23
24
25
DECISION ON APPEAL26

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE 1
Herman Rodriguez, Newton James Smith, Jr., and Clifford Jay Spinac 2
(Appellants) seek review under 35 U.S.C. § 134 of a non-final rejection of 3
claims 1, 3-10, 14, 15, 18, 20-23, 25, 27, 28, 30-33, 35, and 37-41, the only 4
claims pending in the application on appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
8
We AFFIRM-IN-PART. 9
The Appellants invented a way for a travel agent to maintain a travel 10
profile so users could perform actions that a user wishes to execute while the 11
user is away from the office. These actions can be bundled into a travel 12
package that is transmitted to the user in response to the user making travel 13
arrangements. The travel agent can be an automated agent, such as an on-14
line travel agent, or a traditional brick-and-mortar travel agent that is used by 15
the traveler. The travel agent processes the user's travel request and reads 16
the user's profile for actions that the user would like to take while he is 17
away. Once the actions are combined into a travel package, they are 18
transmitted for processing. (Specification 5:2-14). 19
An understanding of the invention can be derived from a reading of 20
exemplary claim 1, which is reproduced below [bracketed matter and some 21
paragraphing added]. 22
1. A method of handling travel arrangements, said method 23
comprising: 24
[1] scheduling the travel arrangements using a computer 25
system; 26
[2] recording the scheduled travel arrangements on a 27
nonvolatile storage device connected to the computer system; 28
and 29
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[3] sending one or more automated requests corresponding to 1
the travel arrangements 2
[3a] from the computer system to one or more service 3
agents, 4
[3b] wherein the automated requests are based on a 5
traveler's user profile, and 6
[3c] wherein at least one of the service agents are 7
selected from the group consisting of 8
a delivery service agent, 9
a telephone system, 10
an electronic calendar system, and 11
a medical information system. 12
13
This appeal arises from the Examiner’s Non-Final Rejection, mailed 14
December 4, 2006. The Appellants filed an Appeal Brief in support of the 15
appeal on April 16, 2007. An Examiner’s Answer to the Appeal Brief was 16
mailed on August 2, 2007. A Reply Brief was filed on September 19, 2007. 17
18
PRIOR ART 19
The Examiner relies upon the following prior art: 20
Berman US 5,995,939 Nov. 30, 1999 21
Levine US 6,076,121 Jun. 13, 2000 22
Gershman US 6,401,085 B1 Jun. 4, 2002 23
Chong US 2002/0111845 A1 Aug. 15, 2002 24
Felger US 6,553,108 B1 Apr. 22, 2003 25
26
27
REJECTIONS 28
Claims 1, 3, 18, 20, 28, and 30 stand rejected under 35 U.S.C. § 29
102(e) as anticipated by Chong. 30
Claims 25, 35, and 41 stand rejected under 35 U.S.C. § 103(a) as 31
unpatentable over Chong and Gershman. 32
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Claims 4-10, 21-23, and 31-33 stand rejected under 35 U.S.C. § 1
103(a) as unpatentable over Chong and Levine. 2
Claims 14, 15, 27, and 37 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Chong and Berman. 4
Claims 38-40 stand rejected under 35 U.S.C. § 103(a) as unpatentable 5
over Chong and Felger. 6
7
ISSUES 8
The issue of whether the Appellants have sustained their burden of 9
showing that the Examiner erred in rejecting claims 1, 3, 18, 20, 28, and 30 10
under 35 U.S.C. § 102(e) as anticipated by Chong hinges primarily on 11
whether Chong describes sending automated requests corresponding to 12
travel arrangements to a service agent based on a user profile wherein at 13
least one of the service agents are selected from the group consisting of a 14
delivery service agent, a telephone system, an electronic calendar system, 15
and a medical information system. 16
The issue of whether the Appellants have sustained their burden of 17
showing that the Examiner erred in rejecting claims 25, 35, and 41 under 35 18
U.S.C. § 103(a) as unpatentable over Chong and Gershman hinges primarily 19
on whether it was predictable to send Chong’s automated travel request to 20
Gershman’s calendaring system. 21
The issue of whether the Appellants have sustained their burden of 22
showing that the Examiner erred in rejecting claims 4-10, 21-23, and 31-33 23
under 35 U.S.C. § 103(a) as unpatentable over Chong and Levine hinges 24
primarily on whether it was predictable to send Chong’s automated travel 25
request for services provided in relation to Levine’s postal services. 26
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The issue of whether the Appellants have sustained their burden of 1
showing that the Examiner erred in rejecting claims 14, 15, 27, and 37 under 2
35 U.S.C. § 103(a) as unpatentable over Chong and Berman hinges 3
primarily on whether it was predictable to send Chong’s automated travel 4
request to sources of medical information as in Berman. 5
The issue of whether the Appellants have sustained their burden of 6
showing that the Examiner erred in rejecting claims 38-40 under 35 U.S.C. § 7
103(a) as unpatentable over Chong and Felger hinges primarily on whether it 8
was predictable to send Chong’s automated travel request to fund an 9
electronic wallet as in Felger. 10
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
Chong 15
01. Chong is directed to a way for a meeting planner to enter 16
sensitive data in the planning of an event using facilities and 17
resources accessed through the public Internet, and yet have 18
control of the sensitive data to secure it from access by 19
unauthorized persons while being able to incorporate the sensitive 20
data with sophisticated meeting facilitation functions that are 21
accessible online to participants of the event (Chong ¶ 0011). 22
02. Possible users for the Chong’s Secure PC meeting planner node 23
include travel planning consultants, travel agencies, and incentive 24
company planners (Chong ¶ 0026). 25
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03. The planning for group events typically starts with the selection 1
of the event dates and the destination location of the meeting 2
group. The meeting location may be selected based upon 3
geographic proximity to the company or the targeted attendees, 4
travel cost data, company preferences for a particular destination, 5
hotel, or physical host site, etc. The CMP assembles the detailed 6
meeting planning data at the Secure PC node facilitated by access 7
to company personnel records, historical meeting planning 8
records, etc. The meeting planning data can include very personal 9
or sensitive employee data, such as names, home telephone 10
numbers, home addresses, email addresses, expense account 11
information, intranet passwords, personal preferences, credit card 12
numbers for non-company expenditures, medical information, 13
required medications, physical restrictions, etc. It can also include 14
company proprietary information, such as planned conference 15
proceedings, and meeting costing and budget analyses (Chong ¶ 16
0027). 17
04. Chong loads data of a tentative meeting plan including the 18
event location, physical host site, preferred airline carriers, and 19
preferred hotels (Chong ¶ 0031). 20
05. Chong generates detailed service requests for any vendor based 21
on entered data and tracks the status of service requests (Chong 22
6:Table 1, Items 4.A and B). 23
Gershman 24
06. Gershman is directed to a portable portal into the Internet. Its 25
wireless device transmits a query to a service routine which then 26
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queries the Web to find price, shipping, and availability. 1
information from various Web suppliers (Gershman 3:18-23). 2
07. Gershman describes BackgroundFinder (BF) as an agent 3
responsible for preparing an individual for an upcoming meeting 4
by helping him/her retrieve relevant information about the 5
meeting from various sources. BF receives input text in character 6
form indicative of the target meeting. The input text is generated 7
by a calendar program that includes the time of the meeting. As 8
the time of the meeting approaches, the calendar program is 9
queried to obtain the text of the target event and the agent parses 10
the input meeting text to extract its various components such as 11
title, body, participants, location, and time. Then, the system 12
queries the web for relevant information concerning the topic. 13
The system updates the calendaring system and eventually the 14
user with the best information it can gather to prepare the user for 15
the target meeting (Gershman 10:58-11:15). 16
Levine 17
08. Levine is directed to network for transporting an item between 18
points within the network (Levine 8:30-32). 19
Berman 20
09. Berman is directed to automated service request and fulfillment 21
systems, particularly systems in which requests are made and 22
fulfilled over a computer network (Berman 1:10-14). 23
Fleger 24
10. Felger is directed to payment authorization and billing 25
arrangement for products, services, and value-added 26
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telecommunication services purchased over a computer network 1
(Felger 1:46-50). 2
11. Felger describes the use of electronic wallets for payment 3
(Felger 13:64-66). 4
Facts Related To The Level Of Skill In The Art 5
12. Neither the Examiner nor the Appellants has addressed the level 6
of ordinary skill in the pertinent arts of systems analysis and 7
programming, automated messaging systems, travel services, 8
personal services, and data communications. We will therefore 9
consider the cited prior art as representative of the level of 10
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 11
1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the 12
level of skill in the art does not give rise to reversible error ‘where 13
the prior art itself reflects an appropriate level and a need for 14
testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 15
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). 16
Facts Related To Secondary Considerations 17
13. There is no evidence on record of secondary considerations of 18
non-obviousness for our consideration. 19
20
PRINCIPLES OF LAW 21
Anticipation 22
"A claim is anticipated only if each and every element as set forth in 23
the claim is found, either expressly or inherently described, in a single prior 24
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 25
628, 631 (Fed. Cir. 1987). "When a claim covers several structures or 26
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compositions, either generically or as alternatives, the claim is deemed 1
anticipated if any of the structures or compositions within the scope of the 2
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 3
Cir. 2001). "The identical invention must be shown in as complete detail as 4
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 5
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 6
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 7
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 8
Obviousness 9
A claimed invention is unpatentable if the differences between it and 10
the prior art are “such that the subject matter as a whole would have been 11
obvious at the time the invention was made to a person having ordinary skill 12
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 13
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 14
In Graham, the Court held that the obviousness analysis is bottomed 15
on several basic factual inquiries: “[(1)] the scope and content of the prior art 16
are to be determined; [(2)] differences between the prior art and the claims at 17
issue are to be ascertained; and [(3)] the level of ordinary skill in the 18
pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 406. 19
“The combination of familiar elements according to known methods is likely 20
to be obvious when it does no more than yield predictable results.” Id. at 21
416. 22
23
ANALYSIS 24
Claims 1, 3, 18, 20, 28, and 30 rejected under 35 U.S.C. § 102(e) as 25
anticipated by Chong. 26
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Claims 1, 18, and 28 are the only independent claims in the 1
application. The Appellants argue these claims 1, 3, 18, 20, 28, and 30 as a 2
group. Accordingly, we select claim 1 as representative of the group. 3
37 C.F.R. § 41.37(c)(1)(vii) (2008). 4
The Appellants contend that Chong does not describe limitation [3] of 5
sending automated requests corresponding to travel arrangements to a 6
service agent based on a user profile wherein at least one of the service 7
agents are selected from the group consisting of a delivery service agent, a 8
telephone system, an electronic calendar system, and a medical information 9
system (Br. 8:First full ¶) and, in particular, that Chong does not describe its 10
service requests as corresponding to any travel arrangements (Br. 9:Second 11
full ¶). 12
The Examiner replied that Chong described sending such service 13
requests at paragraph 0027 and Table 1 (Answer 16-17). We agree with the 14
Examiner. Chong generates detailed service requests for any vendor based 15
on entered data and tracks the status of service requests (FF 05). Since this 16
is done by Chong’s system, such sending is automatic. The Appellants 17
contend that Chong does not describe which types of requests these pertain 18
to (Br. 8:Bottom ¶). 19
We find the scope of these service requests is implied by Chong’s 20
description that such requests are for any vendor based on entered data; thus 21
such requests are for any vendors providing services. Chong states that 22
possible users include travel agencies (FF 02). Chong describes selecting a 23
meeting location based upon geographic proximity and travel cost data (FF 24
03) and loads data including the preferred airline carriers and preferred 25
hotels (FF 04). Thus, such airlines and hotels are among the vendors 26
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Chong’s system uses for the meetings based on travel cost data. Airlines are 1
known to be delivery service agents. Finally, Chong describes using a user 2
profile in the form of personnel records (FF 03). 3
Thus, we find that Chong describes sending automated requests 4
corresponding to travel arrangements to a service agent based on a user 5
profile wherein at least one of the service agents are selected from the group 6
consisting of a delivery service agent, a telephone system, an electronic 7
calendar system, and a medical information system. We accordingly find 8
the Appellants’ arguments unpersuasive. 9
10
Claims 25, 35, and 41 rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Chong and Gershman. 12
Claim 25 requires receiving the automated request at, and updating, an 13
electronic calendar with the information. The Appellants contend Gershman 14
does not describe receiving the automated requests from the independent 15
claims at a calendaring system (Br. 10). We agree with the Appellants. 16
The Examiner responds that Gershman describes updating a 17
calendaring system and then invokes KSR to find that such updating is no 18
more than combining Gershman’s calendar updating with Chong’s system 19
(Answer 18). The Examiner overlooks the fact that the independent claims 20
require that the received automated requests are those sent from the claimed 21
travel automation tool, a tool unrelated to the calendaring system. 22
Gershman’s calendar update comes from the results of a query generated by 23
the calendar program itself, not from requests for travel separate from the 24
calendar program (FF 07). While we agree with the Examiner that under 25
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KSR, an explicit description of motivation is not required to be found in the 1
references themselves, KSR does require an explicit rationale in the record. 2
Often, it will be necessary for a court to look to interrelated 3
teachings of multiple patents; the effects of demands known to 4
the design community or present in the marketplace; and the 5
background knowledge possessed by a person having ordinary 6
skill in the art, all in order to determine whether there was an 7
apparent reason to combine the known elements in the fashion 8
claimed by the patent at issue. To facilitate review, this 9
analysis should be made explicit. 10
KSR, 550 U.S. at 417-18. The Examiner provides no rationale why one of 11
ordinary skill would have found it predictable to provide such automated 12
requests to Gershman’s calendaring system, and therefore has failed to put 13
forward a prima facie case. The remaining claims contain a similar 14
limitation. 15
16
Claims 4-10, 21-23, and 31-33 rejected under 35 U.S.C. § 103(a) as 17
unpatentable over Chong and Levine. 18
Claim 4 adds the elements of "wherein the delivery service agents 19
include one or more parcel services, and wherein the automated requests 20
include one of holding packages for customer pickup, delivering packages 21
on a future date, and leaving packages with a neighbor." 22
Claim 5 adds the elements of "wherein the delivery service agent 23
includes a post office, and wherein the automated requests include at least 24
one of holding mail for customer pickup, delivering mail on a future date, 25
and forwarding mail to another address." 26
Claim 6 adds the elements of "wherein the delivery service agent 27
includes a company mailroom, and wherein the automated requests include 28
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at least one of holding mail for future pickup, delivering mail on a future 1
date, and forwarding mail to another address." 2
Claims 21 and 31 add the elements of "wherein the automated 3
requests include at least one of holding packages for future pickup, 4
delivering packages on a future date, and leaving packages at an alternate 5
location." 6
Claims 7, 22, and 32 include the additional limitation of "wherein the 7
sending automated requests include configuring instructions corresponding 8
to a telephone." 9
The remaining claims depend from these claims. 10
The Appellants contend Levine does not describe these (Br. 15-16). 11
We agree with the Appellants. The Examiner responds that these added 12
limitations are obvious over Levine because Levine is directed to postal 13
operations and these limitations are well known postal related operations 14
(Answer 19). The Examiner overlooks the fact that these limitations are for 15
requests that are automatically sent from the claimed travel automation tool, 16
a tool unrelated to the postal operations. The Examiner cites no portion of 17
Levine describing such automated requests and we are unable to find any 18
such description within Levine. The Examiner provides no rationale why 19
one of ordinary skill would have found it predictable to provide such 20
automated requests for postal services. 21
22
Claims 14, 15, 27, and 37 rejected under 35 U.S.C. § 103(a) as unpatentable 23
over Chong and Berman. 24
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All of these claims require that the automated request be related to 1
medical information or retrieve medical information. The Appellants argue 2
Berman does not describe these (Br. 18-19). We agree with the Appellants. 3
The Examiner responds that these added limitations are obvious over 4
Berman because they merely unite old elements with no change in function. 5
(Answer 21). The Examiner overlooks the fact that these limitations are for 6
requests that are automatically sent from the claimed travel automation tool, 7
a tool unrelated to the medical information. Thus, the claims are directed to 8
more than the mere combination of automated requests to vendors and 9
automated requests for medical information. They are directed to obtaining 10
such medical information requests from requests for travel. The Examiner 11
cites no portion of Berman describing such automated requests and we are 12
unable to find any such description within Berman. The Examiner provides 13
no rationale why one of ordinary skill would have found it predictable to 14
provide such automated requests for medical information. 15
16
Claims 38-40 rejected under 35 U.S.C. § 103(a) as unpatentable over Chong 17
and Felger. 18
Claim 38 requires increasing a user's electronic wallet balance and 19
decreasing a user's bank account balance. The Appellants argue that neither 20
reference describes the wallet change resulting from a travel related request 21
(Br. 19-20). 22
We agree with the Appellants. The Examiner refers to Felger’s 23
description of paying a fee which would decrease the bank account. The 24
Examiner argues that since the fee is associated with the wallet, funds were 25
transferred into the wallet (Answer 21-22). The Examiner overlooks the fact 26
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that these transactions must result from requests that are automatically sent 1
from the claimed travel automation tool, a tool unrelated to the electronic 2
wallet. Thus, the claims are directed to more than the mere combination of 3
automated requests to vendors and automated requests for updating a wallet. 4
They are directed to obtaining such wallet funding from requests for travel. 5
The Examiner cites no portion of Felger describing such automated requests 6
and we are unable to find any such description within Felger. The Examiner 7
provides no rationale why one of ordinary skill would have found it 8
predictable to provide such automated requests for wallet funding. 9
10
CONCLUSIONS OF LAW 11
The Appellants have not sustained their burden of showing that the 12
Examiner erred in rejecting claims 1, 3, 18, 20, 28, and 30 under 35 U.S.C. § 13
102(e) as anticipated by Chong. 14
The Appellants have sustained their burden of showing that the 15
Examiner erred in rejecting claims 25, 35, and 41 under 35 U.S.C. § 103(a) 16
as unpatentable over Chong and Gershman. 17
The Appellants have sustained their burden of showing that the 18
Examiner erred in rejecting claims 4-10, 21-23, and 31-33 under 35 U.S.C. § 19
103(a) as unpatentable over Chong and Levine. 20
The Appellants have sustained their burden of showing that the 21
Examiner erred in rejecting claims 14, 15, 27, and 37 under 35 U.S.C. § 22
103(a) as unpatentable over Chong and Berman. 23
The Appellants have sustained their burden of showing that the 24
Examiner erred in rejecting claims 38-40 under 35 U.S.C. § 103(a) as 25
unpatentable over Chong and Felger. 26
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DECISION 1
To summarize, our decision is as follows: 2
• The rejection of claims 1, 3, 18, 20, 28, and 30 under 35 U.S.C. § 3
102(e) as anticipated by Chong is sustained. 4
• The rejection of claims 25, 35, and 41 under 35 U.S.C. § 103(a) as 5
unpatentable over Chong and Gershman is not sustained. 6
• The rejection of claims 4-10, 21-23, and 31-33 under 35 U.S.C. § 7
103(a) as unpatentable over Chong and Levine is not sustained. 8
• The rejection of claims 14, 15, 27, and 37 under 35 U.S.C. § 103(a) as 9
unpatentable over Chong and Berman is not sustained. 10
• The rejection of claims 38-40 under 35 U.S.C. § 103(a) as 11
unpatentable over Chong and Felger is not sustained. 12
No time period for taking any subsequent action in connection with 13
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 14
15
AFFIRMED-IN-PART 16
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hh 24
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IBM CORPORATION- AUSTIN (JVL) 26
C/O VAN LEEUWEN & VAN LEEUWEN 27
P.O. BOX 90609 28
AUSTIN, TX 78709-0609 29