Ex Parte Barrett et al

Patent Trial and Appeal Board

Jun 16, 2014

10888629 (P.T.A.B. Jun. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEVIN R. BARRETT and ANDREW BARNETT
____________________

Appeal 2011-002947
Application 10/888,629
Technology Center 2100
____________________

Before JEAN R. HOMERE, CARLA M. KRIVAK, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11, 13-26, 28-41, 43-56, and 58-60. We have jurisdiction under
35 U.S.C. § 6(b). Claims 12, 27, 42, 57, and 61-64 have been canceled.
We REVERSE and enter a NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).

Introduction
According to Appellants, the claims are directed to system and
method for the dynamic creation of an image of an appropriate size
(Abstract).

Exemplary Claim(s)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:

providing at least one parameter;

generating a display using said at least one parameter;

determining whether said display fits within an image;

resizing said display to fit within said image when said display
does not fit within said image, wherein said resizing said
display to fit within said image when said display does not fit
within said image comprises truncating said display when
resizing said display would cause said display to violate a
display size limit;

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generating a picture file that includes said image and said
resized display, said picture file complying with a standard
picture file format; and

making said picture file available over a network.

REFERENCES
Oppenheimer
Massengale
Liongosari
Schick
Atsumi
Evans
US 2003/0014477 A1
US 2003/0137541 A1
US 6,900,807 B1
US 2006/0192791 A1
US 2007/0237409 A1
US 2008/0126205 A1
Jan. 16, 2003
Jul. 24, 2003
May 31, 2005
Aug. 31, 2006
Oct. 11, 2007
May 29, 2008

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1, 5-9, 15, 16, 20-24, 30, 31, 35-39, 45, 46, 50-54, and
60 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Evans and Oppenheimer (Ans. 3-8).
(2) Claims 2, 4, 17, 19, 32, 34, 47, and 49 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Evans,
Oppenheimer, and Liongosari (Ans. 8-9).
(3) Claims 3, 18, 33, and 48 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Evans, Oppenheimer, and
Schick (Ans. 9-10).
(4) Claims 10, 11, 25, 26, 40, 41, 55, and 56 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Evans,
Oppenheimer, and Massengale (Ans. 10-11).
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(5) Claims 13, 14, 28, 29, 43, 44, 58, and 59 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Evans,
Oppenheimer, and Atsumi (Ans. 11-12).

ISSUE
35 U.S.C. § 103(a): Claims 1, 5-7, 9, 15, 16, 20-22,
24, 30, 31, 35-37, 39, 45, 46, 50-52, 54, and 60
Appellants assert their claimed invention is not obvious over Evans
and Oppenheimer; specifically, Appellants contend Evans does not
expressly, inherently, or implicitly teach the steps of “truncating said display
when resizing said display would cause said display to violate a display size
limit,” as claimed (App. Br. 16-22).
Thus, the issue presented by the Appellants is:
Issue 1: Has the Examiner erred in finding the combination of Evans
and Oppenheimer teaches or suggests “truncating said display when resizing
said display would cause said display to violate a display size limit,” as
recited in independent claims 1, 16, 31, and 46?

ANALYSIS
We are persuaded by the Appellants’ arguments (see App. Br. 16-22).
In particular, we find Evans does not expressly, inherently, or implicitly
teach truncating, as claimed. Furthermore, we find the proposed
combination of Evans and Oppenheimer does not render obvious the
claimed step of truncating.
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Specifically, we find Evans teaches resizing an image or text to fit
within a designated advertisement area when the image or text does not fit
within the ad area (Ans. 14). Evans also teaches establishing maximum and
minimum font sizes as upper and lower limits for resizing text (Ans. 14).
Evans does not expressly teach truncating text when resizing the text to fit
within the ad area would violate the designated minimum font size (see Ans.
14-15).
The Examiner maintains truncating Evans’ text would have been
obvious when it is necessary to reduce the size of text beyond an allowable
limit to fit the text within the designated ad area, since without truncation,
the entire textual display could not be displayed within the designated area
(Ans. 14). We disagree. “‘[R]ejections on obviousness cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We determine the
Examiner’s contention that truncating, as claimed, would have been an
obvious corollary to the teachings of resizing text and designating a
minimum font size amounts to a mere conclusory statement supported by
circular logic rather than a rational underpinning.
Additionally, the Examiner maintains truncating as claimed would
have been obvious in view of Appellants’ Specification, which teaches
truncating when a font cannot be reduced further (Ans. 15 and 19). We
disagree. This rationale relies on impermissible hindsight in establishing
obviousness of invention based solely on Appellants’ own disclosure.
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Furthermore, the Examiner relies on an “obvious to try” rationale as a
basis of obviousness, namely, that it would have been obvious to try
truncating Evans’ text because there were only a “finite number of
identified, predictable potential solutions to the recognized need or problem”
(Ans. 16). We disagree with the Examiner’s finding because there is no
evidence on the record establishing that truncating was an identified solution
to a recognized problem.
Accordingly, on the record before us, we are not persuaded the relied
upon prior art teaches truncating. Rather, the only teaching of truncating is
found in the Appellants’ specification (Spec. 30). In addition, the Examiner
has not shown Evans recognizes any problems that might be encountered
when it is necessary to resize a display beyond allowable limits.
Accordingly, based on the Examiner’s findings, we are not persuaded it
would have been obvious to try truncating, as claimed.
For these reasons, we are constrained to reverse the Examiner’s
rejections of independent claims 1, 16, 31, and 46, and associated dependent
claims, based on the combination of Evans and Oppenheimer.

NEW GROUND OF REJECTION
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 46-
56 and 58-60 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.

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35 U.S.C. § 101: Claims 46-56 and 58-60
Claim 46 recites “[a] computer recording medium including computer
executable code.” The Specification is devoid of any definition of “a
computer recording medium” that excludes a signal propagation medium or
transitory medium. Thus, interpreting “computer recording medium”
broadly, but reasonably, in light of the Specification, we determine the
recited limitation encompasses transitory propagating signals (see Ex parte
Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential)).
Signals are unpatentable under § 101. In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office
(USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. Such claims . . . should be rejected under
35 U.S.C. 101, for at least this reason.

For example, machine readable media can encompass
non-statutory transitory forms of signal transmission, such as, a
propagating electrical or electromagnetic signal per se. See In
re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007).

Manual of Patent Examining Procedures (“MPEP”) § 2106(1) (8th ed.,
2001, Rev. 2012).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of
non-transitory tangible media and transitory propagating signals
per se in view of the ordinary and customary meaning of
computer readable media . . . . When the broadest reasonable
interpretation of a claim covers a signal per se, the claim must
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be rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter.

David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (citation omitted).1
Therefore, we reject claims 46-56 and 58-60 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

DECISION
The Examiner’s rejection of claims 1, 5-9, 15, 16, 20-24, 30, 31, 35-
39, 45, 46, 50-54, and 60 under 35 U.S.C. § 103(a) as being unpatentable
over Evans and Oppenheimer is reversed.
The Examiner’s rejection of claims 2, 4, 17, 19, 32, 34, 47, and 49
under 35 U.S.C. § 103(a) as being unpatentable over Evans, Oppenheimer,
and Liongosari is reversed.
The Examiner’s rejection of claims 3, 18, 33, and 48 under 35 U.S.C.
§ 103(a) as being unpatentable over Evans, Oppenheimer, and Schick is
reversed.
The Examiner’s rejection of claims 10, 11, 25, 26, 40, 41, 55, and 56
under 35 U.S.C. § 103(a) as being unpatentable over Evans, Oppenheimer,
and Massengale is reversed.

1 See also U.S. Patent & Trademark Office, Evaluating Subject Matter
Eligibility Under 35 USC § 101 (August 2012 Update) (pp. 11-14), available
at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf
(noting that while the recitation “non-transitory” is a viable option for
overcoming the presumption that those media encompass signals or carrier
waves, merely indicating that such media are “physical” or tangible” will not
overcome such presumption).
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The Examiner’s rejection of claims 13, 14, 28, 29, 43, 44, 58, and 59
under 35 U.S.C. § 103(a) as being unpatentable over Evans, Oppenheimer,
and Atsumi is reversed.
In a new ground of rejection, we reject claims 46-56 and 58-60 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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