Ex Parte Cobb et al

Patent Trial and Appeal Board

Nov 25, 2013

11299507 (P.T.A.B. Nov. 25, 2013)

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.
11/299,507 12/12/2005 John Neil Cobb 7785-89 (EB2208) 8307
92384 7590 11/26/2013
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
JAMI, HARES
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
11/26/2013 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 NEIL COBB, YEOW LOONG LEE,
MICHAEL J. MILLARD, LEE ALAN COBB,
and KRISTEN JANE SEBASTIAN
____________________

Appeal 2011-006582
Application 11/299,507
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-22 and 29-31 (App. Br. 1). Claims 23-28 have been cancelled
(App. Br. 15). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention is directed to a content management system and
method for construction and repurposing rhetorical content, such as
advertising content, including a controller programmed to construct one or
more rhetorical and structural element from a library into an advertisement
(Abstract; Spec.¶¶ [0007] and [0018]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
l. A machine-readable storage medium in a content
management system, comprising computer instructions for:
receiving a rhetorical purpose for generating a desired
schematic expression;
according to the rhetorical purpose, constructing one or
more rhetorical topics from a rhetorical library and rhetorical
content associated with the rhetorical library according to one
or more functional attributes;
generating one or more communication units from a
combination of the one or more rhetorical topics, the
communication units being generated without user intervention,
the generation of the communication units being initiated
without user intervention; and
generating the desired schematic expression from a
combination of the one or more communication units, the
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desired schematic expression being generated without user
intervention.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tominaga US 5,311,429 May 10, 1994
Edd US 2002/0184255 A1 Dec. 5, 2002
Doyle US 2006/0235738 A1 Oct. 19, 2006

Claims 1-11, 13, 14, 16-22, 30, and 31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Doyle in view of Tominaga.
Claims 12, 15, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Doyle in view of Tominaga and Edd.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that the combination of Doyle and Tominaga teaches or would have
suggested “generating one or more communication units from a combination
of the one or more rhetorical topics, the communication units being
generated without user intervention, the generation of the communication
units being initiated without user intervention” (claim 1, emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Doyle
1. Doyle discloses a method and apparatus for multi-authoring
within a benefits content management system 100 including a content
management module 103a that manages content of one or more benefits
programs and a repository module 103b that stores the information used to
generate the content (Abstract; Fig. 1; and ¶ [0033]).
2. An indicator 2803 is displayed on the screen that alerts the user
to pending changes in content; wherein, when the user either selects the
indicator 2803 using a mouse or passes the cursor over the indicator 2803,
the system generates a description that provides information about the
pending changes in text box 2903 (Figs. 28 and 29; ¶¶ [0104] and [0105]).
The system monitors the workflow process 218 and captures certain data
from the workflow 218 to provide change descriptions shown in text box
2903 (¶ [0105]).
Tominaga
3. Tominaga discloses a natural language translation and
processing system that automatically generates sentences using sentence
generation rules, dictionary information, thesaurus, and information of other
sentences, such as hypothesis of co-occurrence relationship information
(Abstract; col. 4, ll. 6-22).

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IV. ANALYSIS
Claims 1-11, l3, l4, 16-22, 30, and 31
Appellants contend that since “Doyle intends on requiring someone’s
‘approval’ in its process,” Doyle “teaches away from the generation of
communication units being initiated without user intervention” (App. Br. 8).
Appellants assert that “[o]ne of ordinary skill in the art would be
discouraged from modifying Doyle so that a generation of communication
units is initiated without user intervention because such a modification
would obviate the use of the ‘approval’ section described above” (id.).
However, the Examiner finds that “Doyle teaches generating of
communication units by the system, without user intervention” because
Doyle discloses that “‘the system 100 generates a description that provides
information about the pending changes’” (Ans. 16) (emphasis omitted). The
Examiner finds further that Tominaga “discloses automatically generating
sentences (i.e. communication units) to generate dictionary information
which is generating communication units without the user’s intervention to
initiate the process” (id.) (emphasis omitted). The Examiner notes that
“[t]he secondary reference does not have to be bodily incorporated into the
structure of the primary reference; nor the claimed invention has to be
expressly suggested in anyone or all of the references” (id.). The Examiner
notes further that it would have been obvious to combine’s Tominaga’s
teaching of eliminating user initiation to the teachings of Doyle “to enhance
the speed and efficiency of the system and reducing the possibility of human
errors” (Ans. 17) (emphasis omitted).
Doyle discloses a benefits content management system that generates
content and displays an indicator 2803 that alerts the user to pending
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changes for the content (FF 1 and 2). The user can select the indicator
where a text box is automatically displayed containing a system generated
description that provides information about the pending changes based upon
the monitored workflow process (FF 2). We find that Doyle’s step of
generating content using the monitored workflow process to be displayed in
the text box comprises “generating one or more communication units from a
combination of the one or more rhetorical topics, the communication units
being generated without user intervention” (claim 1).
In addition, Tominaga discloses a natural language translation and
processing system that automatically generates sentences using sentence
generation rules, dictionary information, thesaurus, and information of other
sentences (FF 3). We find that Tominaga’s automatic generation of content
comprises “generation of the communication units being initiated without
user intervention” (claim 1).
We find that the combination of Doyle and Tominaga at least
suggests all the contended limitations of claim 1.
Though Appellants also contend that “Doyle teaches away from the
modification suggested by the” Examiner (App. Br. 5), our reviewing court
has held that “‘[a] reference may be said to teach away when a person of
ordinary skill, upon [examining] the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.’” Para-Ordnance
Mfg., Inc. v. SGS Importers Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995)
(alteration in original) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994)).
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Appellants have not identified persuasive support for a direction
divergent from the claimed invention since we do not find that the disclosure
in Doyle to user approval prior to generation of content would discourage
one skilled in the art from further automating the process in Doyle by using
the system initiated content generation of Tominaga to the exclusion of user
approval.
The issue we address here is not whether the system of Tominaga
could be bodily incorporated in the system of Doyle, but rather whether a
person of ordinary skill, upon reading Doyle, would be discouraged from
eliminating user initiation from the teachings of Tominaga. We see no error
with the Examiner’s explicit motivation that combining the references would
be obvious since one skilled in the art would be motivated to combine the
teaching “to enhance the speed and efficiency of the system and reducing the
possibility of human errors” (Ans. 17) (emphasis omitted). The Supreme
Court has stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
Thus, we find no error in the Examiner’s finding that the combination
of Doyle’s benefits content management system that automatically generates
content with the automatically initiated content generation feature, as
disclosed in Tominaga, produces a system that generates content without
user intervention and without user initiation which would be obvious (Ans.
16; FF 1-3).
Accordingly, we find no error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a) over Doyle in view of Tominaga. Further,
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independent claim 16 having similar claim language and claims 2-11, 13, 14,
17-22, 30, and 31 (depending from claims 1 and 16) which have not been
argued separately, fall with claim 1.
Claims 12, 15, and 29
Appellants argue that claim 12, 15, and 29 are patentable over the
cited prior art for the same reasons asserted with respect to claim 1 (App. Br.
9).
As noted supra, however, we find that the combined teachings of
Doyle and Tominaga at least suggest all the features of claim 1. We
therefore affirm the Examiner’s rejection of claim 12, 15, and 29 under
35 U.S.C. § 103 over Doyle in view of Tominaga and Edd.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-22 and 29-31 under 35 U.S.C.
§ 103(a) is affirmed.
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).

AFFIRMED

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