Ex Parte Balchandran et al

Patent Trial and Appeal BoardAug 27, 2014

11260102 (P.T.A.B. Aug. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAJESH BALCHANDRAN and ILYA SKURATOVSKY __________ Appeal 2012-003004 Application 11/260,102 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and MICHAEL C. ASTORINO, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Rajesh Balchandran, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 14, and 21–36. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2012-003004 Application 11/260,102 2 SUMMARY OF DECISION We REVERSE.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer implemented data collection method, comprising: selecting, at an interface design server, at least one user interface type from a plurality of previously defined user interface types, wherein said previously defined user interface types include at least one interface type selected from a group consisting of a basic Web interface type, a Web interface type with an embedded Web page, a Web interface type with an uniform resource locator (URL) input field, a speech user interface type, and a multi-modal interface type, and wherein the plurality of interface types are stored as pre- defined templates in a data store of the interface design server; defining user interface parameters of the selected interface type for a particular data collection instance to provide defined user interface parameters at the interface design server, wherein said defined user interface parameters define user interface parameters of the selected user interface type and at least one of: a number of required inputs for the data collection interface, an error correction scheme, an ability for data providers to navigate between different data collection scenarios, a storage location for said data provided by the data providers, and reward distribution criteria; inputting target participant data which identifies the target participants for the particular data collection instance; 1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,” filed Jun. 14, 2011) and the Examiner’s Answer (“Ans.,” mailed Sep. 1, 2011). Appeal 2012-003004 Application 11/260,102 3 deploying a data collection interface based upon the selected interface type and defined parameters; automatically conveying messages to data providers identified by the target participant data, wherein the messages each request a data provider to participate in the data collection instance; permitting said data providers to access the deployed data collection interface; automatically storing data provided by the data providers; and using the stored data for statistical modeling purposes related to the data collection instance. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Hays US 6,865,578 B2 Mar. 8, 2005 The following rejection is before us for review: 1. Claims 1, 14, and 21–36 are rejected under 35 U.S.C. §102(e) as being anticipated by Hays. ISSUE Has a prima facie case of anticipation been made out in the first instance? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. Appeal 2012-003004 Application 11/260,102 4 ANALYSIS All the claims include a limitation to a plurality of pre-defined user interface templates. See e.g., claim 1: selecting, at an interface design server, at least one user interface type from a plurality of previously defined user interface types, wherein said previously defined user interface types include at least one interface type selected from a group consisting of a basic Web interface type, a Web interface type with an embedded Web page, a Web interface type with an uniform resource locator (URL) input field, a speech user interface type, and a multi-modal interface type, and wherein the plurality of interface types are stored as pre-defined templates in a data store of the interface design server. Emphasis added. The Examiner’s position is that the disclosure of “SPSS and Excel” at column 6, lines 60–61 of Hays expressly describe pre-defined templates as claimed. See Ans. 5 (repeated at Ans. 13). See also Ans. 14 (“it is the understanding of one of ordinary skill in the art that Excel contains pre- defined templates”) and Ans. 15 (“Hays discloses using SPSS and Excel, which contain pre-defined templates, for incorporating data tabulations into the questionnaire design (col. 8, ll. 35-53)”). Column 6, lines 60–61 of Hays discloses: “working with the most popular data analysis formats used by market researchers (i.e., SPSS and Excel).” Column 8, lines 35–53 of Hays discloses: “a data tabulation program, such as SPSS” and “a spreadsheet (e.g., Excel).” These passages make no mention of templates. Accordingly, the finding that Hays expressly describes a plurality of pre-defined user interface templates is not supported by a preponderance of the evidence. Appeal 2012-003004 Application 11/260,102 5 Though not expressly described, Hays may nevertheless anticipate the claimed subject matter if the pre-defined user interface templates as claimed are inherently described. “[A] prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005). Under principles of inherency, when a reference is silent about an asserted inherent characteristic, it must be clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). In that regard, we do not find that persons of ordinary skill would recognize pre-defined user interface templates are necessarily present in SPSS or Excel as those applications are used in Hays. SPSS and Excel are programs that are capable of being configured to include templates; templates are not an inherent characteristic of SPSS and Excel. There is insufficient evidence that the SPSS and Excel programs referred to in Hays have been configured to include templates. “Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v. Top- U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). “The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency.]” In re Oelrich, 666 F.2d 578, 581–82 (CCPA 1981). For the foregoing reasons, a prima facie case of anticipation has not been made out in the first instance. Appeal 2012-003004 Application 11/260,102 6 DECISION The decision of the Examiner to reject claims 1, 14, and 21–36 is reversed. REVERSED tkl