Ex Parte Santos et al

Board of Patent Appeals and Interferences

Aug 13, 2012

11047254 (B.P.A.I. Aug. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD A. SANTOS, PAUL A. MEYERS,
and ASHISH PISOLKAR
____________

Appeal 2010-003344
Application 11/047,254
Technology Center 2400
____________

Before SCOTT R. BOALICK, THOMAS S. HAHN, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-7 and 16-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ravin (US 2006/0047615 A1, pub. Mar. 2, 2006, filed
Aug. 25, 2004) and Koskinen (US 6,062,862, issued May 16, 2000, filed
Nov, 12, 1997). (Ans. 5).
Claims 8-15, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ravin, Koskinen, and Messina (US 2004/0172415 A1,
pub. Sept. 2, 2004, filed Dec. 1, 2003). (Ans. 9).
We reverse.

STATEMENT OF THE CASE
Background
The invention relates to a method for processing a post to a discussion
board comprising placing the post on the discussion board; performing an
entitlement check to determine whether access to an expert should be
provided to the user, wherein the entitlement check is associated with at least
one of a characteristic of the user and a characteristic of the post; and based
on the entitlement check providing access to the expert in the form of a
control. See Abstr.

The Claimed Invention
Claim 1 is illustrative of the claimed subject matter:
1. A method for processing a post to a discussion board comprising:
placing the post on the discussion board from a user;
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performing an entitlement check to determine whether access to an
expert should be provided to the user, wherein the entitlement check is
associated with at least one of a characteristic of the user and a characteristic
of the post; and
based on the entitlement check providing access to the expert in the
form of a graphical control.

REJECTION OF CLAIMS 1-7 AND 16-19 UNDER 35 U.S.C. §103
OVER RAVIN AND KOSKINEN
Issue 1: Appellants allege “Ravin in view of Koskinen fails to teach or
suggest placing a post from a user on a discussion board.” (App. Br. 6).
The Examiner finds that Ravin discloses a method for processing a
post to a discussion board comprising: placing the post on the discussion
board from a user; and performing an entitlement check to determine
whether access to an expert should be provided to the user, wherein the
entitlement check is associated with at least one of a characteristic of the
user and a characteristic of the post. (Ravin, ¶¶ [0033], [0036], [0039]; Ans.
5).
In the final rejection of claim 1 as repeated in the Examiner’s Answer,
the Examiner finds a plurality of claim limitations to be taught by the 89
lines of disclosure in Ravin’s paragraphs 33, 36, and 39. However, the
Examiner fails to provide a specific mapping of specific lines of disclosure
that teach a specific limitation.
Our review would have been facilitated had the Examiner made
specific findings. Our review of Ravin’s paragraphs 33, 36, and 39 does not
find disclosure of a “discussion board.” In his Answer, but not as part of the
Final Rejection, the Examiner finds that the requestor database of Ravin’s
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paragraph 24 is equivalent to a discussion board. (Ans. 13). Appellants
object:
Applicants’ specification clearly states the discussion board is
an online bulletin board where users can leave questions and
expect to see responses. See paragraph 1. The specification
further goes on to describe the bulletin board as an online
bulletin board where messages are posted and people reply to
the postings. See paragraph 2. Furthermore, the bulletin board
is shown in figure 2 of the specification and clearly shows the
postings 202 and 204 on the online bulletin board.
A database simply stores data. The database of Ravin is
not online and does not show postings and does not show
responses for users to see. Clearly, the Examiner is improperly
stretching the meaning of database to be outside its ordinary
meaning as is known in the art and outside the description of
bulletin board provided in the specification.
(Reply 3-4).
We agree. During examination, claim terms are to be given their
broadest reasonable interpretation as they would have been understood by
one of ordinary skill in the art, taking into account whatever enlightenment
may be provided by the Specification. (In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997)). However, in view of the Specification, we are not
persuaded that a person of ordinary skill in the art would consider a database
to be the equivalent of the claimed discussion board.
Issue 2: Appellants allege Ravin in view of Koskinen fails to teach or
suggest “performing an entitlement check to determine whether access to an
expert should be provided to the user.” (App. Br. 6-7).
Ravin’s paragraph 39 discloses:
Contractual rights may determine the type of operation to which
the requestor is entitled. For example, the requester may be a
subscriber with unlimited access to experts or have access to
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multiple experts for the same request with one expert verifying
the answer of another. . . . Budgetary considerations may
determine how and how much the requestor is to pay for the
answer. Even with contracts and QoS [quality of service]
agreements in place, the budget may vary since it is associated
not just with the requester, but with the request/requestor pair.
Although these passages were not specifically cited, we find they teach:
“performing an entitlement check to determine whether access to an expert
should be provided to the user, wherein the entitlement check is associated
with at least one of a characteristic of the user and a characteristic of the
post,” as recited in claim 1.
Issue 3: Appellants allege Ravin in view of Koskinen fails to teach or
suggest “modifying the GUI to include a feature to allow access with the
expert based on the entitlement check.” (App. Br. 8). “The Office Action
cites to Koskinen to disclose this feature at column 5, lines 5-15. However,
Koskinen fails to teach or suggest these features.” (Id.).
The Examiner finds that “Koskinen disclosed a GUI with a self-
leveling feature such that users are directed to an expert mentor according to
the users [sic] needs and abilities. Furthermore said GUI enables chat room
support and real-time feedback thus indicating the presence of a live
person.” (Ans. 15). With respect to claim 19, the Examiner notes that
“hiding the graphical controls based on a detected event/ condition/ attribute
was well-known in the networking art. It would have been obvious in the
context of GUI design to hide the graphical control in order not to clutter the
GUI with unnecessary buttons and confuse the user.” (Ans. 6).
The indicated passage of Koskinen (col. 5, ll. 5-15) is not persuasive
of hiding or modifying a GUI control:
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Conference room screen 5’ is accessed by designating the
conference room option 5 of FIG. 1. Conference room screen 5’
has a conference room A option 5A, a conference room B
option 5B, and a conference room C option 5C. These user
options are accessed according to a user knowledge level. FIG.
25 illustrates conference room A screen accessed by
designating the conference room A option of FIG. 24.
FIG. 26 illustrates beginner wall screen option 5A-1 of
conference room A accessed after accessing the conference
room A option 5A.
Presenting a user with various options does not teach or suggest modifying a
GUI control based on a criterion. To the extent the Examiner is taking
Official Notice that hiding a GUI control is known in the art, it would be
appropriate to supply a reference.
In view of the foregoing, we decline to affirm the rejection of claims
1-7 and 16-19.

CLAIMS 8-15, 20, AND 21 REJECTED UNDER § 103(A) OVER
RAVIN, KOSKINEN, AND MESSINA
With respect to claims 8-15, 20, and 21, Appellants raise essentially
the same objections as raised in conjunction with claims 1-7 and 16-19.
As discussed, above, we agree with the Examiner that Ravin teaches
“performing an entitlement check to determine whether access to an expert
should be provided to the user.” We also find Messina teaches this
limitation. (Messina, ¶ 11 (“ Another system deploys the automated posting-
and-retrieval capabilities within a webserver system that grants users data-
access rights based on their contributions or submissions to one or more
databases.”); Messina, ¶ 33 (“Users may be identified by their use of specific
access credentials, such as username and password.”)). Additionally, some
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embodiments store user-defined Boolean and natural-language queries
and/or necessary credentials and payment authorizations to access
commercial or other restricted-access databases.
As discussed above, neither Raven nor Koskinen teaches or suggests
modifying a GUI control based on a criterion. Messina is not cited for this
proposition. In view thereof, we cannot affirm the rejection of claims 8-15,
20, and 21.

DECISION
The Examiner’s decision rejecting claims 1-21 under 35 U.S.C. § 103
is REVERSED.

REVERSED

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