Ex Parte Fisher

Patent Trial and Appeal BoardApr 22, 2016

11832464 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111832,464 08/01/2007 John W. Fisher JR. 70336 7590 04/25/2016 SEED INTELLECTUAL PROPERTY LAW GROUP PLLC 701 FIFTH A VENUE SUITE 5400 SEATTLE, WA 98104 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 290110.535 6127 EXAMINER BAHL, SANGEETA ART UNIT PAPER NUMBER 3629 MAILDATE DELIVERY MODE 04/25/2016 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 BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN W. FISHER JR Appeal2013-008594 Application 11/832,464 Technology Center 3600 Before HUBERT C. LORIN, ANTON W. PETTING, and PHILIP J. HOFFMANN, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 John W. Fisher Jr (Appellant) seeks review under 35 U.S.C. Â§ 134 of a final rejection of claims 1, 5-13, and 16-22, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). The Appellant invented a "highly scalable technical support platform [that] includes client applications executing on end-user computer systems, 1 Our decision will make reference to the Appellant's Appeal Brief ("App. Br.," filed April 4, 2013) and Reply Brief ("Reply Br.," filed June 24, 2013), Appeal2013-008594 Application 11/832,464 technical support applications executing on technician computer systems, and a technical support services architecture." Specification para. 9. An understanding of the invention can be derived from a reading of exemplary claim 11, which is reproduced below (bracketed matter and some paragraphing added). 11. A method for providing technical support to a specified end user reporting a specified incident, the method comprising: [ 1] receiving, utilizing at least one processing unit, system- specific parameters characterizing a hardware and software configuration of the end user's computer system; [2] determining, utilizing the at least one processing unit, one or more possible causes of a problem exhibited by the specified end user's computer system and by searching only a set of static problem information related to one or more problems reported in other incidents, said set of static problem information having been validated for accuracy and being available for read only access; [3] filtering, utilizing the at least one processing unit, the one or more determined possible causes based on the system-specific parameters to derive one or more targeted possible causes specific to the specified end user's computer system configuration; and the Examiner's Answer ("Ans.," mailed April 24, 2013), and Final Action ("Final Act.," mailed October 3, 2012). 2 Appeal2013-008594 Application 11/832,464 [ 4] wherein a problem information is stored in a set of dynamic problem information accessible by technical support center agents but and inaccessible by a general population of users prior to validation moved to the set of static problem information after being validated by the technical support agents such that the problem information is accessible by the general population of users. The Examiner relies upon the following prior art: Asauchi US 2002/0093525 Al Jul. 18, 2002 White US 2005/0097507 Al May 5, 2005 Wood US 2005/0097396 Al M~n.r J:\ ?OOJ:\ ~Â·~~.; ~, ~~~~ Sullivan US 6,999,990 Bl Feb. 14,2006 Wing US 7,305,465 B2 Dec. 4, 2007 Beniaminy US 7,565,338 B2 Jul. 21, 2009 Elmore US 7,657,436 B2 Feb.2,2010 Claims 1, 5-13, 16, and 18-22 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sullivan, Elmore, Wing, White, Beniaminy, and Wood. Claim 17 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sullivan, Elmore, Wing, White, Beniaminy, Wood, and Asauchi. 3 Appeal2013-008594 Application 11/832,464 ISSUES The issues of obviousness tum primarily on whether the argued limitations are deserving of patentable weight, and if so, whether they are sufficiently broad to encompass the art within their scope. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Sullivan 01. Sullivan is directed to automated customer support and service in a distributed computing environment and more particularly to a method of reducing a number of "live" support calls by providing intelligent, guided self-help in such an environment. Sullivan 1:15-19. 02. Sullivan's system, as opposed to the user, develops the appropriate search strategies to enable the user to be guided to an appropriate subset of relevant support notes. Preferably, these strategies are developed automatically during a self-help session by having the system capture the live context of the user's computer. Sullivan 2:26-31. 03. When the user desires technical support, a technical support interface is launched. The user is then prompted to select a general problem area. In response to a user query, the system 4 Appeal2013-008594 Application 11/832,464 automatically serves a self-help home page (or template) to the user's interface. Preferably, the interface has a Web browser navigation metaphor to provide the user with a comfortable and intuitive interaction with the self-help system. Sullivan 2:55---62. 04. Sullivan's self-help home page includes a search field that is populated automatically with a system-supplied, self-help search string. The search string is a value that, when fed into the technical support server's search engine, should produce relevant hits. The search string is generated dynamically through the use of a diagnostic map that executes on the client machine when the self-help session is initiated. The diagnostic map examines the client system (including the existing applications, registry information and the like) and communicates with the technical support server to derive the search string as a background task. Diagnostic maps are programmable, reusable objects that allow technical support engineers (SEs) and others to write custom tools for diagnosing problems. Sullivan 2: 63-3: 12. 05. Sullivan's technical support system interacts with the user's local machine to execute diagnostic maps using a "mini Web server" process running on the client. Executing a map locally from the client browser begins by sending a special URL to the local mini Web server. The local process authenticates the user, breaks apart the URL to determine which map to run, checks to see if the map is present (and, if not, downloads the map from the system server), "executes" the instructions of the map, collects the resulting XML, and then parses the XML looking for self-service 5 Appeal2013-008594 Application 11/832,464 tags to be used for further navigation purposes. Thus, for example, the tags enable the user to navigate to a page that describes the problem or to how to fix the problem. This process is also used to generate the system-supplied search string. Sullivan 10:34--50. 06. Sullivan's technical support system has an active journal panel that contains a record of activities performed on the selected incident, along with other information placed in the journal by the support analyst. Incidents are created when a user submits a problem to the system. Sullivan 12:54--58. Elmore 07. Elmore is directed to a comprehensive electronic business support system for communications service providers. Elmore 1:8-11. 08. Elmore describes the technique of giving non-administrative users read only access. Elmore 7:52-8:4. Wing 09. Wing describes collecting information regarding a problem being experienced by an end user, accessing information regarding possible solutions to the described problem identifying specific content in the form of approved fixes or potential fixes, and collecting information regarding the efficacy of proposed fixes with respect to particular reported problems. Wing describes making content developed by a technician available in real-time or 6 Appeal2013-008594 Application 11/832,464 substantially real-time to other technicians for delivery to end users. Wing 2:37-54. 10. Wing describes maintaining administered dynamic dispositions or administered solutions to reported problems, hereinafter referred to as "approved fixes," as part of a solutions set database. Information may comprise a key indicator linking a symptom to an approved fix and/ or a potential fix. Approved fixes and potential fixes are delivered to the end user in a logical, step-by- step solution sequence. Where an approved fix for a reported problem does not appear in a database of approved fixes, a potential solution, i.e. a solution that has not been formally administered and added to the database of approved fixes, may be provided to the end-user, to resolve their issues based on the live creation of a solution set (i.e., potential solution) by the support technician. Where a potential solution is newly created by a technician, that potential solution may be added to the solutions set database (i.e., the knowledge base). Accordingly, the content that can be delivered from the knowledge base is dynamic in that the available content is changing. After an approved fix or a potential fix has been suggested or otherwise delivered to an end user, information regarding whether the approved fix or potential fix was successful in solving the reported problem is collected and the probability or success rate associated with an approved fix- problem pair or potential fix-problem pair can be updated. Data regarding potential fixes and the results of applying such fixes to problems can be placed in attention files, for ready access by a 7 Appeal2013-008594 Application 11/832,464 content developer, thereby allowing the content developer to consider the potential fix for addition to the dynamic disposition database. Wing 3:3-58. 11. Wing describes various information being used to identify key indicators in connection with the determination as to whether an automated fix is available. A key indicator may include any piece of information that allows or assists in the linking of a symptom to a solution or diagnostic process. Accordingly, a key indicator may include a selected symptom, a test result, measurement, error code, setting, selected component, combination of components, selected problem, calculation, trigger, action or other identified characteristic. For example, the identification of key indicators may comprise the application of rules associated with a particular problem or problems component reported by the end user. Key indicators may also be identified based on a problem component or combination of components identified by applying rules as part of automated procedures. Wing 8:41-9:22 White 12. White is directed to knowledge management systems for use with customer support systems. White para. 2. 13. White describes as part of resolving issues, receiving customer described issue and searching the internal repository for possible solutions. The search module systematically converts how a customer describes an issue into searchable keywords. White para. 31. 8 Appeal2013-008594 Application 11/832,464 14. wnite describes as part of resolving issues, if the issue is a new or modified issue, then the status of the issue is checked to determine whether the issue has not been proven and whether the solution was used three or more times. If the solution to the issue has been used three or more times, then the solution is identified as proven by setting a corresponding solution flag. White para. 42. Beniaminy 15. Beniaminy is directed to knowledge bases. More particularly, Beniaminy relates to capturing and sharing knowledge between the qualified personnel of a company and users or between users and qualified personnel associated with different companies. Beniaminy 1 :7-11. 16. Beniaminy's information gathered in the case (e.g., problem, dialogue, and solution, if any) is added to the KBS but flagged as not-yet-approved. Such flagged information goes through a quality control process wherein each such new information is tagged for review by appropriately-authorized experts. These experts are notified of new and as-yet-unreviewed additions to the knowledge base, and are asked to approve, reject, or edit (and then approve) each new addition. This process may use e-mail database management, version control, and/or workflow principles. The system may be set to never retrieve as-yet- unapproved knowledge except when the approved knowledge has no answer. Beniaminy 11 :62-12:8. 9 Appeal2013-008594 Application 11/832,464 Wood 17. Wood is directed to computer diagnostic systems. Wood para. 2. 18. The key to successful utilization of trouble ticket information by automated tools is to filter and condition the information. Wood para. 41. ANALYSIS Claim 11 is the broadest claim and is a method claim. Before comparing the claims to the art, we first find that claim 11 has only three actual steps recited. They are ( 1) receiving criteria labelled as parameters characterizing hardware and software that might encounter issues; (2) determining data by searching for that data, where the data are labelled as possible causes; and (3) filtering those data. These are steps every database management system having a query function performs. The bulk of step [ 1] labels the parameters as characterizing something. These parameters are used in step [3] as filter criteria, but the steps do not functionally depend on how those parameters are interpreted; they serve only as generic filter criteria. Step [2] is a database search. Step [2] recites searching only a set of static problem information. The word "only" requires that the search domain be somehow constrained, as in predefining the database that is to be searched. The content of the database is labeled as "a set of static problem information related to one or more problems reported in other incidents, said set of 10 Appeal2013-008594 Application 11/832,464 static problem information having been validated for accuracy." As with the criteria in step [ 1], this label has no functional dependence on the rest of the claim. This step also characterizes the database as being available for read only access. As the step is determining by searching, which is inherently a read- only operation, the characteristic of being available for read-only access also has no functional effect on the remainder of the claim, and is redundant with the search operation. We note for the record that although search and replace is also a known database operation that is not read-only, the replace aspect is not part of the instant claim. In any event, the step recites that the data be available for, not restricted to, read-only access. Securing data for read-only access is a primitive file system operation available in every major file system, and again a search operation is a form of read-only access. This step also recites that the database contains data having been validated for accuracy. As we found above, this is not a step but a data label. The step aspires to use data having been validated but performs no function to achieve or require that. In any event, data validation is sufficiently notorious to have been predictable. The third step is a database filter operation using the parameters from the first step as filter criteria. The data used retain the labels from the first two steps, and those labels still have no functional dependence on the remainder of the claim. The fourth limitation is a wherein clause reciting two steps, viz. storing and moving information. As these operation are on the data prior 11 Appeal2013-008594 Application 11/832,464 to step [l], it is unclear whether these steps are actually part of the claimed process or simply describe what happens prior to the claimed process. If they are not part of the process, this has no patentable weight. But assuming, arguendo, these are steps of the claimed process that proceed prior to step [ 1], then such storing and moving data to a database are part and parcel of maintaining a database. This limitation is about the attributes of the data holding pens more than the steps of getting the data into a database. The first holding pen is accessible by some but not by others and the second holding pen is accessible by those others. The some are labeled as technical support agents and the others are labeled as a general user population. As with the first three steps, these labels have no functional dependence on the steps performed. The last part of the limitation also says the move occurs after data validation. We will assume this is a step performed as well. Data labels having no functional bearing on claim are deserving of no patentable weight. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.") (citation omitted). Claim 1 is an apparatus used to perform the process in step 11. Claim 1 recites three data stores, two search modules and a filter module. The bulk of each limitation describes the data operated upon rather than the structure of the stores and modules. To the extent structure is recited, like claim 11, it is that of conventional database 12 Appeal2013-008594 Application 11/832,464 managers. The seventh limitation is not a structural limitation but only an operation that the apparatus performs. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Claim 1 requires a system that has a structure that is capable of being operated to perform database searches and filters. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional language does not confer patentability if prior art structure has capability of functioning in the same manner). "[E]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. " In re Otto, 312 F.2d 937, 940 (CCPA 1963). Thus characterizations of data have no patentable weight in a computer apparatus claim. We are not persuaded by Appellant's argument that Sullivan describes incident records rather than problem data. App. Br. 15. As we found supra, we gave no patentable weight to data labels. But even giving weight, an incident from a support call is a problem if only to the extent it resulted in a support call. We are not persuaded by Appellant's argument that Sullivan does not describe read-only access and data validation. Id. The Examiner applied Elmore for read-only access and White for data validation. Ans. 3--4. 13 Appeal2013-008594 Application 11/832,464 We are not persuaded by Appellant's argument that Elmore does not enforce read-only across all users. App. Br. 16. As we found above, a search operation as in Sullivan is read-only. Claims 1 and 11 only recite that read-only access is available rather than enforced and claim 1 being a structural claim only requires that the structure have the capacity to do so. As file security is a primitive operation across all general purpose computers, Sullivan has that capacity. Elmore describes the known practice of further enforcing read-only status by security settings. Thus, it was predictable to make Sullivan's data available for read-only access. Finally, neither claim 1 nor claim 11 recites to whom such read-only access is provided and more importantly neither provides any mechanism for enforcing such read-only status, allowing for selective enforcement with the claim scope. We are not persuaded by Appellant's argument that Elmore fails to describe data validation, Id., as the Examiner applied White for this. We are not persuaded by Appellant's argument that Sullivan teaches away from a problems store and would not want to make active journals read only because they are dynamic and active and read-only access would frustrate the purpose. Sullivan uses its active journal to look up its diagnostic map for solutions. Sullivan does not suggest actively modifying its diagnostic map. One of ordinary skill would make Sullivan's diagnostic map read only for reason similar to those in Elmore. We are not persuaded by Appellant's argument that Sullivan does not describe each solution including an indication of at least one related 14 Appeal2013-008594 Application 11/832,464 problem information. App. Br. 17. Again, this merely labels the data in all claims and is not part of the structure in the structural claims, and so is undeserving of patentable weight. This argument is inapplicable to claim 11, which has no such limitation. Further, the limitation recites neither implementation nor degree of inclusion, indication, or relation and does not narrow the manner in which information is modified by problem. Thus any solution, being a solution, is information related to a problem susceptible to that solution. For example, Sullivan's diagnostic map maps solutions to incidents and so indicates the problems related to such incidents. The Examiner further applied Wing, which describes including key indicators in diagnostic data such as a solutions store. We are not persuaded by Appellant's argument that Wing fails to actually store its key indicator in solution data. Again, no implementation for such inclusion is recited, so pointers among data sets would be within the claim scope. Appellant argues claims 18-22 similar to the arguments in support of claims 1 and 11 and are equally unpersuasive here. As to separately argued dependent claims 5, 7, 10, and 13, we adopt the Examiner's findings and analysis and reach similar legal conclusions. The remaining claims are argued on the basis of their parent claims. 15 Appeal2013-008594 Application 11/832,464 CONCLUSIONS OF LAW The rejection of claims 1, 5-13, 16, and 18-22 under 35 U.S.C. Â§ 103(a) as unpatentable over Sullivan, Elmore, Wing, White, Beniaminy, and Wood 1s proper. The rejection of claim 17 under 35 U.S.C. Â§ 103(a) as unpatentable over Sullivan, Elmore, Wing, White, Beniaminy, Wood, and Asauchi is proper. DECISION The rejection of claims 1, 5-13, and 16-22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l)(iv) (2011). AFFIRMED 16