Ex Parte Tischer

Patent Trial and Appeal Board

Mar 6, 2014

11861435 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/861,435 09/26/2007 Steven Tischer 070072 / BLL0515US 8387
36192 7590 03/06/2014
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
03/06/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte STEVEN TISCHER 7
___________ 8
9
Appeal 2011-011821 10
Application 11/861,435 11
Technology Center 3600 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
NINA L. MEDLOCK, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2011-011821
Application 11/861,435

2

STATEMENT OF THE CASE1 1
Steven Tischer (Appellant) seeks review under 35 U.S.C. § 134 of a final 2
rejection of claims 1-20, the only claims pending in the application on 3
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 4
The Appellant invented a way of implementing personalized 5
dissemination of information (Spec., para. [0001]). 6
An understanding of the invention can be derived from a reading of 7
exemplary claim 1, which is reproduced below [bracketed matter and some 8
paragraphing added]. 9
1. A method for implementing personalized dissemination of 10
information, comprising: 11
[1] receiving, at a computer processor, 12
personal information elements 13
for a subject; 14
[2] applying, 15
via a rules engine 16
executing on the computer processor, 17
business rules 18
to the personal information elements, 19
push data elements 20
designated for publication 21
by a source of the push data elements, 22
and 23
a database of information strings, 24

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed March 7, 2011) and Reply Brief (“Reply Br.,” filed July 11,
2011), and the Examiner’s Answer (“Ans.,” mailed May 10, 2011).
Appeal 2011-011821
Application 11/861,435

3

the information strings comprising words and 1
phrases that are commonly recognized across a 2
defined populace, 3
wherein the business rules are configured to use 4
phonetics and rhyming schemes, 5
the rhyming schemes including measure, meter 6
formations, and rhythm; 7
and 8
[3] in response to the applying: 9
[4] selecting 10
one or more of the push data elements from the 11
source, 12
one or more of the personal information elements, 13
and 14
an information string from the database of 15
information strings, 16
[5] constructing a contextually relevant output string 17
relevant to the subject, 18
the output string including portions of 19
the selected information string, 20
the selected data elements, 21
and 22
the selected personal information elements, 23
wherein the information strings are altered 24
according to phonetics and rhyming 25
schemes 26
selected in response to applying the 27
business rules, 28
and 29
[5] conveying the output string to the subject. 30
The Examiner relies upon the following prior art: 31
Appeal 2011-011821
Application 11/861,435

4

Ogusu US 5,602,811 Feb. 11, 1997
Hassett US 6,807,558 B1 Oct. 19, 2004
Gray US 2005/0100157 A1 May 12, 2005
Slawson US 2008/0028036 A1 Jan. 31, 2008
Claims 1, 2, 4, 8, 9, 11, 14, 15, and 17 stand rejected under 35 U.S.C. 1
§ 103(a) as unpatentable over Gray and Ogusu. 2
Claims 3, 7, 10, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Gray, Ogusu, and Slawson. 4
Claims 5, 6, 12, 13, 18, and 19 stand rejected under 35 U.S.C. § 103(a) 5
as unpatentable over Gray, Ogusu, and Hassett. 6
ISSUES 7
The issues of obviousness turn primarily on whether patentable weight is 8
afforded the limitation “wherein the information strings are altered 9
according to phonetics and rhyming schemes selected in response to 10
applying the business rules.” 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
Facts Related to the Prior Art 15
Gray 16
01. Gray is directed to a context aware call processing architecture for 17
effecting user-defined features. Gray, para. [0001]. 18
02. Telephony features can be personalized to meet fine-grained 19
needs. The parameters that affect personalization features are 20
Appeal 2011-011821
Application 11/861,435

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considered to be part of a user’s work context and so these 1
features are called ‘context-aware’. Gray, para. [0006]. 2
03. The design of the ACD system is not restricted to any specific 3
domain of users. A flexible method of defining knowledge for a 4
user domain allows the system to be used in different domains. A 5
system administrator can define a hierarchy of the user’s location, 6
activity and time according to a domain of target users. A user 7
may choose one of two domains by clicking the corresponding 8
button in the introduction window. It sets up the necessary 9
knowledge such as the hierarchy of possible locations, the 10
relationship information and the buddy-list automatically. Gray, 11
para. [0110]. 12
04. A welcoming window provides brief information about the ACD 13
system, administrator login information, and two buttons to load 14
information for testing purposes: “An Office Worker Context Set 15
Loading”, and “A Professor Context Set Loading.” When “An 16
Office Worker Context Set Loading” button is clicked, example 17
contexts for an office worker are written into the Tspaces. For 18
testing an example of the professor’s domain, “A Professor 19
Context Set Loading” can be selected. A tester can start the server 20
without selecting a pre-defined set of information for testing a 21
customized context. The server system informs the tester that a 22
hierarchy of context should be either selected from the two 23
choices or set manually when a tester skips information loading. 24
Gray, para. [0111]. 25
Appeal 2011-011821
Application 11/861,435

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05. The user-rule Setting Window consists of three parts: the user rule 1
table, which consists of sequence numbers and user rule names, 2
UI buttons, and a Description window. Clicking on one of the 3
rules in the table allows the user to see the description of the 4
selected rule in the Description window. Clicking the “Add” 5
button in the “User-rule Setting Window” starts the creation of a 6
new rule. Adding a new user rule involves four steps. The first 7
step is to select the contexts as a part of the conditions of the rule 8
being created . The location and activity selection are made from a 9
given hierarchy tree. These hierarchies of location and activity are 10
defined by the administrator from a server. The time context is 11
selected from a pull-down menu with three choices: “any time”, 12
“meeting time” and “lunch time”. The actual time schedules are 13
set by the user through the “Schedule Setting Window.” The 14
second step is selecting a type of caller as a part of the condition. 15
One of three categories can be selected: any caller, a buddy list 16
table, and a relationship tree. These three categories are exclusive, 17
so that radio buttons are provided to select only one category. 18
When a category is selected, the user can then select items in its 19
selection window. Gray, paras. [0140]-[0142]. 20
Ogusu 21
06. Ogusu is directed to permitting display of a measure being 22
currently reproduced and selective quick access to the starting 23
point of any desired measure. Ogusu 1:18-22. 24
Appeal 2011-011821
Application 11/861,435

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ANALYSIS 1
Claim 1 recites “wherein the information strings are altered according to 2
phonetics and rhyming schemes selected in response to applying the 3
business rules.” The remaining independent claims contain similar 4
limitations. We are persuaded by the Appellant’s argument that the art 5
applied fails to describe this limitation. The Examiner applies Ogusu to 6
show some form of use of rhyming, but does not make any connection to 7
Gray, and the Examiner makes no findings as to altering the strings in Gray 8
as recited in this limitation. 9
The Examiner finds the limitation to be optional for being in a wherein 10
clause. We find no law supporting this finding. The Examiner cites MPEP 11
2111.04, but this portion states that the 12
determination of whether each of these clauses is a limitation in 13
a claim depends on the specific facts of the case. See, e.g., 14
Griffin v. Bertina, 283 F.3d 1029, 1034, 62 USPQ2d 1431 (Fed. 15
Cir. 2002)(finding that a “wherein” clause limited a process 16
claim where the clause gave “meaning and purpose to the 17
manipulative steps”). 18
The alteration recited in the instant claims clearly gives meaning and 19
purpose to the manipulative steps which combine the data element recited in 20
the wherein clause with two others to create the output. 21
CONCLUSIONS OF LAW 22
The rejection of claims 1, 2, 4, 8, 9, 11, 14, 15, and 17 under 35 U.S.C. 23
§ 103(a) as unpatentable over Gray and Ogusu is improper. 24
The rejection of claims 3, 7, 10, 16, and 20 under 35 U.S.C. § 103(a) as 25
unpatentable over Gray, Ogusu, and Slawson is improper. 26
The rejection of claims 5, 6, 12, 13, 18, and 19 under 35 U.S.C. § 103(a) 27
as unpatentable over Gray, Ogusu, and Hassett is improper. 28
Appeal 2011-011821
Application 11/861,435

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DECISION 1
The rejection of claims 1-20 is reversed. 2
3
REVERSED 4
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mls 11