Ex Parte Jung et al

Patent Trial and Appeal Board

Oct 22, 2012

11000736 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN, MARK A.
MALAMUD, and JOHN D. RINALDO, JR.
____________

Appeal 2010-006158
Application 11/000,736
Technology Center 2100
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/000,736

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-54. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Invention
Appellants’ invention relates to an apparatus, a method, and a system
distinct from an item, which provide user assistance for the item. See
generally Abstract. Independent claims 1, 18, and 19 are reproduced below
with the disputed elements emphasized:
1. An apparatus, the apparatus comprising:
a) an electronic device distinct from an item, the electronic device
including a first user interface associatable with an aspect of the
item, a second user interface, and a third user interface; and
b) instructions that when implemented in the electronic device
cause the electronic device to:
(i) receive a selection corresponding to an aspect of the item
through the first user interface;
(ii) receive a selection corresponding to an assistance request related
to the aspect of the item through the second user interface; and
(iii) provide an assistance correlating to the assistance request related
to the aspect of the item through the third user interface.

18. An apparatus, the apparatus comprising:
a) first associatable means distinct from an item for receiving a
selection corresponding to an aspect of the item;
b) second means distinct from the item for receiving a selection
corresponding to an assistance request related to the aspect of the
item; and
c) third means distinct from the item for providing an assistance
correlating to the assistance request related to the aspect of the item.

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19. A method for providing user assistance with an item, the method
comprising:
a) receiving a selection corresponding to the item through a first user
interface operably coupled to an electronic device and associated with
the item, wherein the item is distinct from the electronic device;
b) receiving a selection corresponding to an assistance request related
to the item through a second user interface operably coupled to the
electronic device; and
c) providing an assistance correlating to the assistance request related
to the item through a third user interface operably coupled to the
electronic device.

Because each of the claims 1-9, 11, 13-17, and 49-54 includes the identical
disputed element, we find that claim 1 is representative of claims 2-9, 11,
13-17, and 49-54. For similar reasons, we find that method claim 19 is
representative of claims 20-30 and 33-48.
The Examiner relies on the following as evidence of unpatentability:
Palmer
Makinen
US 5,825,355
US 6,920,612 B2
Oct. 20, 1998
July 19, 2005
(filed Nov. 29, 2001)

The Rejections
1. The Examiner rejected claims 1-9, 11, 13-30, and 33-54 under
35 U.S.C. § 102(b) as anticipated by Palmer.1 (Ans. 3-8.)
2. The Examiner rejected claims 10 and 12 under 35 U.S.C. § 103(a) as
rendered obvious by Palmer. (Ans. 8.)
3. The Examiner rejected claims 31 and 32 under 35 U.S.C. § 103(a) as
rendered obvious by Palmer in view of Makinen. (Ans. 8-9.)

1 Throughout this opinion, we refer to (1) the Amended Brief filed August
11, 2009 (“App. Br.”); (2) the Examiner’s Answer mailed November 13,
2009 (“Ans.”); and (3) the Reply Brief filed January 12, 2010 (“Reply Br.”).
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THE ANTICIPATION AND OBVIOUSNESS REJECTIONS
Issues
1. Under § 102, has the Examiner erred in rejecting claims 1-9, 11, 13-
30, and 33-54 by finding that Palmer discloses each and every element
of rejected claims?
2. Under § 103, has the Examiner erred in rejecting claims 10, 12, 31,
and 32 by finding that Palmer, either alone or in combination with
Makinen, discloses or suggests all of the limitations of the rejected
claims?
Analysis
A. Anticipation Rejections.
1. Claims 1-5, 8, 9, 11, and 13-17.
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative independent claim 1.

The Examiner has the initial burden to set forth the basis for
any rejection so as to put the patent applicant on notice of the reasons
why the applicant is not entitled to a patent on the claim scope that he
seeks – the so-called “prima facie case.” . . . As the Federal Circuit
has observed, “[t]he term ‘prima facie case’ refers only to the initial
examination step.” . . . The “prima facie case” serves as a procedural
mechanism that shifts the burden of going forward to applicant, who
must produce evidence and/or argument rebutting the case of
unpatentability.
. . .

The [Board’s] panel then reviews the . . . rejection for error
based upon the issued identified by appellant, and in light of the
arguments and evidence produced thereon.

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Ex parte Frye, Appeal No. 2009-006013, at 8, 2010 WL 889747 (BPAI
2010) (precedential; citations omitted). Thus, once the Examiner has
presented a prima facie case for anticipation or obviousness and satisfied this
procedural requirement, the burden shifts to Appellants to rebut the
Examiner’s case.
The Examiner rejects claim 1, stating that “Palmer teaches an
electronic device (computing system 48) distinct from an item including a
first user interface associable with an item (the help system software 130).”
(Final Rej. 2; see also Ans. 3.) The Examiner further explains that “it is
obvious through this statement that the examiner considers the computing
system 48 to be the electronic device, and the claimed item is thus
represented by the help system software 130.” (Ans. 10 (emphasis added).)
In response to the Examiner’s rejection, Appellants simply argue that:
the examiner-identified portions of Palmer do not recite the text of at
least clause (a) as recited in Independent Claim 1. For instance, clause
(a) recites “an electronic device distinct from an item, the electronic
device including a first user interface associatable with an aspect of
the item, a second user interface, and a third user interface.” Nowhere
in the examiner-identified portions of Palmer is there a recitation of
this clause.

(App. Br. 28 (emphasis in original).) Nevertheless, Appellants discuss
Palmer and placing a cursor over various features in a window (see id.),
rather than the Examiner’s relied-upon discussion in Palmer addressing the
distinct electronic device from an item. (See Ans. 3 (discussing the
computing system 48 and software 130).)
Additionally, in response to the Examiner’s rejection of claims 1-9,
11, and 13-17, Appellants argue: (a) that the Examiner fails to demonstrate
that Palmer “recite[s] the text of at least Clauses [a] and [b] of Appellants[’]
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Independent Claim 1” (App. Br. 27-29); (b) that the Examiner’s
interpretation of Palmer is based on inadvertent impermissible hindsight
(App. Br. 29-30); and (c) that, because claims 2-17 depend directly from
independent claim 1, these claims are distinguishable over Palmer in view of
Appellants’ arguments with respect to claim 1 (App. Br. 30). Nevertheless,
Appellants fail to identify specifically where the Examiner has erred in
applying the teachings of Palmer to the language of Appellants’ claim 1. As
the Examiner notes, “[n]owhere in Appellants arguments of claim 1 is there
any reference to this interpretation made by the examiner, nor is there any
mention of computing system 48 or help system 130.” (Ans. 10.)
Appellants fail to demonstrate that the Examiner erred in finding that
Palmer discloses, expressly or inherently, an electronic device distinct from
an item, as recited in Appellants’ claim 1. Appellants argue that the text of
claim 1 is not disclosed in Palmer (App. Br. 28), but the Examiner does not
contend, nor is the Examiner required to demonstrate, that the identical text
of rejected claim 1 appears in Palmer. The anticipation analysis does not
impose an ipsissimis verba test, requiring identity of terminology between
the applied reference and the rejected claim. In re Bond, 910 F.2d 831, 832
(Fed. Cir. 1990.) Thus, the Examiner concludes that Palmer discloses “an
electronic device (computing system 48) distinct from an item including a
first user interface associatable with an item (the help system software
130).” (Ans. 10.) Contrary to Appellants’ arguments, we find that the
Examiner identifies portions of Palmer that disclose “an electronic device
distinct from the item,” as those terms are recited in Appellants’ claim 1.
(Ans. 10-11; see App. Br. 28.)
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Despite their disagreement with the Examiner’s conclusion,
Appellants fail to identify error in the Examiner’s identification of elements
of Palmer which the Examiner contends correspond to Appellants’
“electronic device” and “item.” “[I]t has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).2 Instead,
Appellants simply quote the language of claim 1 and the portions of Palmer
cited in the Examiner’s remarks and declare the quoted texts to be “very
different on their faces.” (App. Br. 28.) Merely pointing out what a claim
recites and then asserting that Palmer fails to teach a particular limitation is
not considered a separate argument for patentability. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). Thus, Appellants fail to specify the
alleged error in the Examiner’s rejections. Moreover, it is well settled that
arguments of counsel cannot take the place of factually supported, objective
evidence. See, e.g., In re Haung, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In
re Blauwe, 756 F.2d 699, 705 (Fed. Cir. 1984). Therefore, Appellants
arguments are little more that general allegations that their claims are
patentable because the claim elements are not disclosed verbatim in the cited
reference. (Ans. 10.) We find such arguments unpersuasive.
We also are not persuaded by Appellants’ argument that the Examiner
relies on “impermissible hindsight” in making his anticipation rejection of
claim 1. (App. Br. 29-30.) When demonstrated, a showing of an
Examiner’s reliance on impermissible hindsight may be used to rebut an

2 We note that the Federal Circuit held that, even assuming that the examiner
failed to establish a prima facie case, the Board would not have erred in
requiring that the applicant identify “reversible error.” Jung, 637 F.3d at
1365.
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obviousness rejection. MPEP § 2145(X)(A) (citing In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971)). As the Examiner notes, however, because
claim 1 stands rejected as anticipated by Palmer, Appellants’ argument
based on “impermissible hindsight” is inappropriate here and unpersuasive.
(Ans. 12.)3
Because we find Appellants’ arguments with respect to the
anticipation rejection of claim 1 unpersuasive, we also find Appellants’
general arguments regarding the rejections to claims 2-5, 8, 9, 11, and 13-17
unpersuasive.4 (Ans. 12; see App. Br. 30.) Therefore, we sustain the
Examiner’s anticipation rejection of claims 1-5, 8, 9, 11, and 13-17 by
Palmer.
2. Claim 18.
As with the disputed element of claim 1, Appellants argue that the
Examiner fails to demonstrate that Palmer discloses “first associatable
means distinct from an item for receiving a selection corresponding to an
aspect of the item.” (App. Br. 36 (emphasis in original).) Appellants do not
provide a specific example of the “first associatable means.” (App. Br. 10
(citing Spec. pg. 57, ll. 20-28; Fig. 34).) Nevertheless, in view of the
description of first associatable means 1452 in Fig. 34, we find that the “first
associatable means” may include an interface. (See Spec. pg. 11, ll. 22-30;
pg. 12, ll. 1-21.)

3 Appellants raise this argument with respect to each of the other pending,
independent claims. (App. Br. 38 (claim 18), 44-45 (Claim 19), 56-57
(Claim 45), 62-63 (Claim 49), and 67-68 (Claim 54).) These arguments are
equally unpersuasive with respect to the other independent claims, and we
do not discuss them further.
4 We separately address the Examiner’s obviousness rejections of claims 10
and 12 by Palmer.
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Appellants argue that the Examiner fails to demonstrate that Palmer
discloses the elements of Clauses (a)-(c) of Appellants’ claim 18. (App. Br.
36-37.) As with claim 1, however, Appellants fail to identify the alleged
errors in the Examiner’s application of the teachings of Palmer to the
language of Appellants’ claim 18. Instead, Appellants simply quote the
language of claim 18 and the portions of Palmer cited in the Examiner’s
remarks and declare the quoted texts to be “very different on their faces.”
(App. Br. 37.) Thus, with respect to each clause, Appellants simply argue
that “[n]owhere in the examiner-identified portions of Palmer is there a
recitation of [that] clause.” (App. Br. 36-37.) Appellants conclude that the
Examiner fails to demonstrate that the text of rejected claim 18 appears in
Palmer.5 (App. Br. 37.) As noted above, however, this is not the test by
which an anticipation rejection is assessed.
For reasons similar to those set forth above with respect to claim 1, we
agree with the Examiner’s discussion of Palmer and the response that the
Examiner provides to the above-noted arguments presented by Appellants.
(Ans. 13.) Therefore, we sustain the Examiner’s anticipation rejection of
claim 18 by Palmer.
3. Claim 19-23, 25-30, 34, 36, 37, and 42-48.
Appellants also argue that the Examiner fails to demonstrate that
Palmer discloses the element of Clause (a) of Appellants’ claim 19. (App.
Br. 41-43.) As with the disputed element of claim 1, Appellants argue that
the Examiner fails to demonstrate that Palmer discloses “receiving a

5 We note that, although Appellants argue that the Examiner fails to
demonstrate that Palmer recites the text of Clauses (a)-(d) of claim 18, claim
18 does not include a Clause (d). (See App. Br. 37.)
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selection corresponding to the item through a first user interface operably
coupled to an electronic device and associated with the item, wherein the
item is distinct from the electronic device.” (App. Br. 42 (emphasis in
original).) With respect to this clause, again, Appellants simply argue that
“[n]owhere in the examiner-identified portions of Palmer is there a recitation
of this clause.” (App. Br. 42.) Thus, as noted above with respect to claim 1,
Appellants fail to identify the alleged errors in the Examiner’s application of
the teachings of Palmer to the language of Appellants’ claim 19. We also
refer to our previous discussion of claim 1 for details.
Instead, Appellants simply quote the language of claim 19 and the
portions of Palmer cited in the Examiner’s remarks and declare the quoted
texts to be “very different on their faces.” (Id.) Consequently, Appellants
argue that the Examiner fails to demonstrate that the text of rejected claim
19 appears in Palmer.6 (App. Br. 43.) As noted above, however, this is not
the test by which an anticipation rejection is assessed.
Because we find Appellants’ arguments with respect to the
anticipation rejection of claim 19 unpersuasive, we also find Appellants’
arguments regarding the rejections to dependent claims 20-30 and 33-44
unpersuasive.7 (Ans. 13; see App. Br. 45.) Therefore, we sustain the
Examiner’s anticipation rejection of claims 19-23, 25-30, 34, 36, 37, and 42-
44 by Palmer.

6 We note that, although Appellants argue that the Examiner fails to
demonstrate that Palmer recites the text of Clauses (a)-(d) of claim 19, claim
19 does not include a Clause (d). (See App. Br. 43.)
7 We separately address the Examiner’s obviousness rejections of claims 31
and 32 by Palmer.
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In independent claim 45, Appellants describe a computer readable
medium product having computer-executable instructions that perform the
steps of Appellants’ claim 19. Although claim 19 describes a method and
claim 45 describes an article of manufacture, the common elements that
define the subject matter of each claim are substantially similar method
steps. As with the disputed element of claim 19, Appellants argue that the
Examiner fails to demonstrate that Palmer discloses instructions to “receive
a selection corresponding to the item through a first user interface operably
coupled to an electronic device and associated with the item, wherein the
item is distinct from the electronic device.” (App. Br. 54 (emphasis in
original).) Consequently, we find that claim 19 is representative of claim 45.
Appellants’ arguments with respect to the anticipation rejections of
claims 19 and 45 are substantially the same. (Compare App. Br. 42-43
(arguments regarding Claim 19) with App. Br. 54-56 (arguments regarding
Claim 45).) Because we find Appellants’ arguments with respect to the
anticipation rejections of claims 19 and 45 equally unpersuasive, we also
find Appellants’ arguments regarding the rejections to dependent claims 46-
48 unpersuasive. (Ans. 15; see App. Br. 57.) We refer to the previous
discussion of claims 1 and 19 for details. Therefore, we also sustain the
Examiner’s anticipation rejection of claims 45-48 by Palmer.
4. Claims 49-54.
In addition, Appellants argue that the Examiner fails to demonstrate
that Palmer discloses the elements of Clause (a) of Appellants’ independent
claim 49 (App. Br. 60-61) and 54 (App. Br. 66-67). As with claim 1,
Appellants argue that the Examiner fails to demonstrate that Palmer
discloses “activating a help mode in an electronic device distinct from the
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item.” (App. Br. 60 and 66 (emphasis in original).) With respect to this
clause, Appellants again argue that “[n]owhere in the examiner-identified
portions of Palmer is there a recitation of this clause.” (Id.) Thus, as noted
above with respect to claim 1, Appellants fail to identify the alleged errors in
the Examiner’s application of the teachings of Palmer to the language of
Appellants’ independent claims 49 and 54. (Compare App. Br. 57-63
(arguments regarding Claim 49) and 63-68 (arguments regarding Claim 54)
with App. Br. 25-30 (arguments regarding Claim 1).)
Because we find Appellants’ arguments with respect to the
anticipation rejections of claims 49 and 54 equally unpersuasive, we also
find Appellants’ arguments regarding the rejections to dependent claims 50-
53 unpersuasive. (Ans. 15; see App. Br. 63.) We refer to the previous
discussion of claim 1 for details. Therefore, we sustain the Examiner’s
anticipation rejection of claims 49-54 by Palmer.

B. Anticipation Rejections of Separately-Argued Dependent Claims.
1. Claims 6 and 7.
Appellants argue that dependent claims 6 and 7 are separately
distinguishable over Palmer. (App. Br. 31-34.) As with Appellants’
arguments regarding claim 1, Appellants again attempt to distinguish the
claims over Palmer simply by comparing the text of the rejected claims to
the cited portion of Palmer. Nevertheless, Appellants again fail to identify
where the Examiner has erred in applying the teachings of Palmer to the
language of Appellants’ claims 6 and 7. Instead, Appellants argue that “on
its face, Palmer does not show the text of at least Clauses [a] and [c] of” the
dependent claims. (App. Br. 31, 33 (emphasis added).) As noted above,
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however, no ipsissimis verba test is applied to determine anticipation. Thus,
as with the foregoing rejections to claim 1, Appellants arguments with
respect to claims 6 and 7 are no more that general allegations that those
claims are patentable because each and every element of the claims is not
evident by a comparison of direct quotations from the claims at issue and the
cited portions of Palmer. (Ans. 12-13, see App. Br. 31, 33.) Also, merely
pointing out what a claim recites and then asserting that Palmer fails to teach
this limitation (see id.) is not considered a separate argument for
patentability. See Lovin, 652 F.3d at 1357. Because the arguments do not
specifically identify the alleged errors and rely on an improper standard for
assessing anticipation, we find such arguments unpersuasive.
2. Claims 24, 33, 35, and 38-41.
Appellants also argue that dependent claims 24, 33, 35, and 38 are
separately distinguishable over Palmer. (App. Br. 45-51.) Claims 39-41 are
grouped with claim 38 because they depend from this claim.
As with Appellants’ arguments regarding claim 19, Appellants again
attempt to distinguish the claims over Palmer simply by comparing the text
of the rejected claims to the cited portion of Palmer. Nevertheless,
Appellants again fail to identify specifically where the Examiner has erred in
applying the teachings of Palmer to the language of Appellants’ claims 24,
33, 35, and 38. With respect to each of these dependent claims, Appellants
argue that “on its face, Palmer does not show the text of at least Clauses [a]
and [e]” added by the dependent claim. (App. Br. 46 (Claim 24), 47 (Claim
33), 49 (Claim 35) (emphasis added); see also App. Br. 50 (Claim 38,
alleging that Palmer fails to show the text of Clause [h]).) As noted above,
however, no ipsissimis verba test is applied to determine anticipation. Thus,
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as with the foregoing rejections to claim 19, Appellants arguments with
respect to claims 24, 33, 35, and 38 are no more that general allegations that
those claims are patentable because each and every element of the claims is
not evident by a comparison of direct quotations from the claims at issue and
the cited portions of Palmer. (Ans. 13-14, see App. Br. 46, 47, 49, and 51.)
Because Appellants’ arguments do not specifically identify the alleged
errors and rely on an improper standard for assessing anticipation, we find
such arguments unpersuasive.
3. Additional Improper Standard.
Finally, with respect to claims 6, 7, 24, 33, 35, and 38-41, Appellants
argue that “the Examiner has provided no objectively verifiable evidence . . .
as to how Palmer could be modified/combined to teach at least [the allegedly
missing clause or clauses of the rejected claims].” (App. Br. 32 (Claim 6),
34 (Claim 7), 46 (Claim 24), 48(Claim 33), 50 (Claim 35), 51 (Claim 38).)
The modification or combination of references to demonstrate unpatentablity
is an element of an obviousness rejection, not an anticipation rejection. See
MPEP § 2143. Because claims 6, 7, 24, 33, 35, and 38-41 stand rejected as
anticipated, rather than rendered obvious, by Palmer; Appellants’ arguments
based on the lack of evidence to modify Palmer or to combine Palmer with
another reference are inappropriate here and are unpersuasive in response to
the Examiner’s anticipation rejections.
Therefore, for the foregoing reasons, we sustain the Examiner’s
anticipation rejections of claim 6, 7, 24, 33, 35, and 38-41 by Palmer.

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C. Obviousness Rejections.
We also sustain the Examiner's obviousness rejection of: (1) claims 10
and 12 by Palmer and (2) claims 31 and 32 by Palmer in view of Makinen.
Appellants do not argue these claims separately, and we find that Appellants
fail to identify errors in the Examiner’s reasoning to persuasively rebut the
Examiner's prima facie case of obviousness. Instead, Appellants merely rely
on the same arguments alleging deficiencies in Palmer in connection with
the anticipation rejections of independent claims 1 and 19, from which
claims 10 and 12 and claims 31 and 32, respectively, depend. (App. Br. 30
(Claims 10 and 12), 45 (Claims 31 and 32).) For the same reasons discussed
above, we are not persuaded by these arguments. Therefore, we sustain
these rejections.

CONCLUSION
The Examiner did not err in rejecting claims 1-9, 11, 13-30, and 33-54
under § 102 and claims 10, 12, 31, and 32 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-54 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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