Ex Parte Jeffers

Patent Trial and Appeal BoardOct 12, 2016

11861357 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/861,357 0912612007 25537 7590 10/14/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Tammy V. Jeffers 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. 20070364 8263 EXAMINER CARLOS, ALVIN LEABRES ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 10/14/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAMMY V. JEFFERS Appeal2014-005628 Application 11/861,357 Technology Center 3700 Before LINDA E. HORNER, CHARLES N. GREENHUT, and MARK A. GEIER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tammy V. Jeffers (Appellant)1 seeks our review under 35 U.S.C. Â§ 134 of the Examiner's decision, as set forth in the Final Action dated June 7, 2013, rejecting claims 1-9 and 11-22 under 35 U.S.C. Â§ 103(a) as unpatentable over Bresler (US 2003/0152293 Al, published August 14, 2003), Cui (US 2006/0092480 Al, published May 4, 2006), and Luther (US 5,715,370, issued February 3, 1998). We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 Appellant identifies the real party in interest as "Verizon Services Corporation and its subsidiary companies." Appeal Br. 2. Appeal2014-005628 Application 11/861,357 We REVERSE. CLAIMED SUBJECT MATTER Appellant's claimed subject matter relates to a "text[ -]to [ -]training aid conversion system and service [that] may enable a user to convert textual material into a digital format more conducive to learning and easier to transport, format, share and access." Spec., para. 6. Claims 1, 14, and 22 are the independent claims on appeal. Independent claim 1 is reproduced below. 1. A method, comprising: receiving, via a wireless network, an image of printed material from a wireless device associated with a user; transmitting a prompt to a user to select a training aid to be generated from the image of the printed material, wherein the training aid is selected from a group of available training aids; receiving, via the wireless network, a request from the user to generate the training aid utilizing the printed material; receiving a request from the user to edit the transmitted image of printed material, wherein the request contains edits and is received after the image is received from the wireless device; generating the training aid utilizing the printed material, wherein the training aid is generated based on the user-selection of the training aid and the received edits; and providing access to the training aid to at least the user, wherein providing access includes one of transmitting the training aid to a device associated with the user or providing a notification regarding access to the training aid to a device associated with the user. 2 Appeal2014-005628 Application 11/861,357 ANALYSIS Claim 1 recites, in pertinent part, the step of "generating the training aid utilizing the printed materials, wherein the training aid is generated based on the user-selection of the training aid and the received edits." Appeal Br. 21 (Claims App.). Independent system claims 14 and 22 contain similar limitations. Id. at 24, 26. The Examiner found that although Bresler discloses a method that includes "generating the training aid utilizing the printed material," Bresler does not disclose "generating the training aid utilizing the printed material based on the user-selection of the training aid and the received edits." Final Act. 2-3; id. at 7-8, 11. The Examiner found that "Cui teaches receiving a request from the user to edit the transmitted image of printed material, wherein the request is received after the image is received from the wireless device (paragraphs 0043 and 0052) [and] generating the training aid utilizing the printed material based on the user- selection of the training aid and the received edits (paragraph 0064)." Id. at 3; see also id. at 7-8, 11. The Examiner determined that it would have been obvious "to modify Bresler's received image by incorporating Cui's teaching of utilizing an edit function in order to allow users to edit the received image as needed based from his/her preferences." Id. Appellant argues that "[i]t would not have been obvious to modify Bresler's received image by incorporating Cui's edit function since Bresler discloses indicating a desired location within the printed material to cause an associated action to be executed, which does not necessitate and would not suggest the need or desire for any editing of text." Appeal Br. 12-13 3 Appeal2014-005628 Application 11/861,357 (contending that the Examiner has relied on "impermissible hindsight"); see also Reply Br. 5-6. Bresler discloses a system that includes an authoring component and a playback component. Bresler, Fig. 1. Bresler's "[a]uthoring system keeps a database that includes the hotspots and corresponding actions by device, by program logic, by device state, etc." Id. at para. 100. The authoring system outputs a file or series of files for use by the playback system. Id. at paras. 102-108. As we understand the rejection, the Examiner appears to be relying on the playback component of Bresler to meet the limitations of claim 1. In particular, the Examiner finds: Bresler ... disclose[s] the method of allowing the user to (scan) image the page of the publication of interest, which is passed up to the server. (See FIG. 21.) The server matches the image, thus identifying the page in question. The server in tum passes to the user a "thumbnail" of the subject print page on a screen of a display device such as the Chatterbox player, a PDA, a PC, or other playback device and the user then taps a touch sensitive screen or otherwise indicates the element or area of interest to them. (See FIG. 22.) The user could select from a menu of actions at the same time, the menu options being standardized or customized to the content of the page. This information is sent to the server, which can now respond with appropriate multimedia, web or other content (paragraph 0204 ). Ans. 2-3. The Examiner proposed to modify this playback component of Bresler to allow users to perform editing, as taught in Cui, "to edit the received image as needed based from his/her preferences." Ans. 5. Bresler discloses that "[t]he Playback System enables a human reader to obtain audio information to accompany his or her reading of a printed 4 Appeal2014-005628 Application 11/861,357 page." Bresler, para. 116. Bresler describes that "once the Playback System has located the user's position[,] it can consult the appropriate database and trigger an action based on Playback System characteristics (for example, which types of multimedia content are supported), System state (for example, which "soundtrack" is selected), etc." Id., para. 133. As noted by the Examiner, Bresler discloses an embodiment in which the user can indicate an element or area of interest on a page and select from a menu of actions, and the server responds with appropriate multimedia, web or other content. Id., para. 204. We understand this portion of Bresler to disclose a system in which a user can select a particular action from among a group of possible actions (e.g., read, translate, soundtrack in different languages, etc.). See id., para. 140 (describing various possible actions taken by the server when the user identifies a word or portion of interest on a page). The Examiner has failed to provide an adequate explanation of why it would have been obvious to modify Bresler' s Playback System to permit a user to have the ability to edit the received image (e.g., the page shown in Figure 22) as needed based on user preferences, as posited by the Examiner. Rather, the Examiner provided circular reasoning that it would have been obvious to allow editing in the playback system of Bresler so that a user could edit. See Reply Br. 5 (Appellant arguing that the Examiner failed to provide an adequate reason that would have prompted a person of ordinary skill in the art to combine the elements in the manner claimed). The Examiner does not rely on the teachings of Luther in any manner that would cure the above-noted deficiency in the combination of Bresler and Cui. 5 Appeal2014-005628 Application 11/861,357 Final Act. 3 (finding Luther teaches transmitting a prompt to a user to select a training aid to be generated). For these reasons, we do not sustain the rejection of independent claims 1, 14, and 22, or their dependent claims 2-9, 11-13, and 15-21, under 35 U.S.C. Â§ 103(a) as unpatentable over Bresler, Cui, and Luther. DECISION The decision of the Examiner to reject claims 1-9 and 11-22 is REVERSED. REVERSED 6