Ex Parte Lee

Patent Trial and Appeal Board

Apr 28, 2016

13614172 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/614,172 09/13/2012
23400 7590 05/02/2016
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
FIRST NAMED INVENTOR
Eugene M. Lee
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.
l 13708.129_CON1 9914
EXAMINER
CORRIELUS, JEANM
ART UNIT PAPER NUMBER
2162
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @poszlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE M. LEE and DIETMAR C. MAY
Appeal2014-009200
Application 13/614,172
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection, mailed September 10, 2013, of claims 54--80. Claims 1-53 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The claimed invention on appeal is directed to: "methods and systems
for providing for annotating an intellectual property document; and/ or
relating, traversing, reporting, and/or viewing linked documents, document
elements, digital data and/ or individual elements therein." (Spec. 1 ).
Appeal2014-009200
Application 13/614,172
Representative Claim
54. A computer-implemented method of providing an annotated
shared document, the method being executed on a computer and
compnsmg:
retrieving, in a computer processor, a shared document from a
document data storage as document data;
[L 1] retrieving, in the computer processor, at least one
annotation to be applied to a section of said shared document from an
annotation data storage as annotation data, the annotation data
indicates a section-dependent, display-independent location within
said document data as retrieved from the document data storage to
which the annotation data is to be embedded, the shared document
having plural sections each having a user-selectable length, the plural
sections including the section of the share document within which the
annotation data is to be embedded;
[L2] embedding, in the computer processor, said annotation
data into said document data at the section-dependent, display-
independent location of the shared document to generate a marked-up
document; and
providing, in the computer processor, the marked-up document
for display at a user interface, the at least one annotation being
visually reproduced in association with the section of the shared
document.
(Emphasis and underline added regarding the contested limitations, labeled
as LI and L2).
Rejection
Claims 54--80 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combined teachings and suggestions of Rivette et al. (US 6,877, 137
Bl; issued April 5, 2005) ("Rivette"), and Eintracht et al. (US 6,687,878 Bl;
issued February 3, 2004) ("Eintracht").
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Application 13/614,172
Related Appeals
Appellants list several related appeals (App. Br. 4):
(1) Serial No. 10/692,793; Appeal 2009-014745, decided Sept. 2,
2011 (Examiner Affirmed-In-Part); Appeal 2014-002818, decided March 22,
2016 (Examiner Affirmed).
(2) Serial No. 10/891,478; pending PTAB Appeal No. 2015-000490.
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of claims 54--
80 on the basis of representative claim 54. See 37 C.F.R. § 41.37(c)(l)(iv).
Contentions
Regarding the rejection of claim 54, and contested limitations LI and
L2, Appellants particularly focus their arguments on the claim terms
"section-dependent, display-independent location":
The issue is whether Eintracht teaches to embed
annotation data into the document data at a section-dependent,
display-independent location within the document data which is
indicated by the annotation data ("the annotation data indicates
a section-dependent, display-independent location within said
document data as retrieved from the document data storage to
which the annotation data is to be embedded", "embedding, in
the computer processor, said annotation data into said document
data at the section-dependent, display-independent location of
the shared document to generate a marked-up document").
Eintracht does not have this teaching or suggestion. To the
contrary, Eintracht teaches that the annotation is pinned to a
specific location of a page in a document, and such location is
"(X,Y) coordinates in the annotated page of a document" (col.
7, line 66 to col. 8, line 3). Eintracht's (X,Y) coordinate in a
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Application 13/614,172
page of a fixed document fails to teach or suggest a "section-
dependent, display-independent location."
(App. Br. 13-14).
The Examiner disagrees (Ans. 8-11). In the statement of rejection
(Ans. 3) the Examiner finds: "Rivette does not explicitly embed, in the
computer processor, said annotation data into said document data at the
section-dependent, display-independent location of the shared document to
generate a marked-up document." The Examiner finds these contested
features are taught or suggested by the Eintracht reference (in combination
with Rivette), as follows:
Particularly, Eintracht discloses the claimed "the annotation
data indicates a section-dependent" (see col.4, lines 8-10, and
col.6, lines 37-39, as a document that contains a plurality of
pages, where each page is annotated independently from each
other, where the documents are treated independently from
each other, where section dependent referred to each page of
the plurality of pages), display-independent location within said
document data as retrieved from the document data storage to
which the annotation data is to be embedded, (see fig. lB,
dictates a note 16, where the note is independent displayed in
document as shown in screen 10 of fig. lB), the shared
document having plural sections each having a user-selectable
length (see col. IO, lines 56-65 and col.11, lines 2-3, the each
record in the database comprises a note document ID, Note
content, Note anchor, Note time stamp and Note owner ID, and
where each section has a specific size that correspond to a
specific number of bytes and the size of the record is predicted
in advance), the plural sections including the section of the
share document within which the annotation data is to be
embedded (see col.6, lines 38-41, the document contains a
plurality of pages, where each page is annotated independently,
and where the documents and associated annotations are treated
independently from each other).
(Ans. 9, emphasis added).
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Appeal2014-009200
Application 13/614,172
ISSUE
Under § 103, did the Examiner err by finding the cited combination of
Rivette and Eintracht would have taught or suggested contested limitations
LI and L2:
[L 1] retrieving, in the computer processor, at least one annotation to
be applied to a section of said shared document from an annotation
data storage as annotation data, the annotation data indicates a
section-dependent, display-independent location within said document
data as retrieved from the document data storage to which the
annotation data is to be embedded, the shared document having
plural sections each having a user-selectable length, the plural
sections including the section of the share document within which the
annotation data is to be embedded; and
[L2] embedding, in the computer processor, said annotation data into
said document data at the section-dependent, display-independent
location ofthe shared document to generate a marked-up document,
within the meaning of representative claim 54? (Emphasis added).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments. (Ans. 8-11.) However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
As an initial matter of claim construction, we conclude independent
claim 54, considered as a whole, is directed to the display of non-functional
descriptive material (NFDM) intended for human perception ("providing, in
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Appeal2014-009200
Application 13/614,172
the computer processor, the marked-up document for display at a user
interface, the at least one annotation being visually reproduced in association
with the section of the shared document."). 1
The PT AB has provided guidance in decisions regarding claims that
differ from the prior art based only on NFDM which is data. See Ex parte
Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) ("[T]he nature of
the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process."); Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
("[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art."),
aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84
USPQ2d 1272, 1274 (BPAI 2005) (informative) ("Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious."), aff'd, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36). 2
1 The MPEP guides: "where the claim as a whole is directed [to] conveying
a message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists." MPEP
§ 2111.05 (III.) (9th Ed., Mar. 2014).
2 Cf with In re Distefano, 808 F.3d 845, 851 (Fed. Cir. 2015) ("Although
the selected web assets can and likely do communicate some information,
the content of the information is not claimed. And where the information
came from, its 'origin, ' is not part of the informational content at all ...
Therefore, the Board erred in finding that the origin of the web assets
constituted printed matter in the claims at issue and erred in assigning the
origin no patentable weight under the printed matter doctrine in finding
anticipation .... ").
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Appeal2014-009200
Application 13/614,172
Assuming arguendo that our reviewing court may give patentable
weight to the informational content of the displayed document data and
annotations intended for human viewing, and to the extent the contested
"annotation data that indicates a section-dependent, display-independent
location within said document data" is functional descriptive material that
affects the manner in which the "embedding" step is performed, we agree
with the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for the following reasons:
During patent examination, a claim is given its broadest reasonable
interpretation "in light of the specification as it would be interpreted by one
of ordinary skill in the art." In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
Regarding the contested claim term "display-independent location"
(claim 54 ), Appellants have not argued a definition in the Specification, nor
is there a definition recited within the claim. As evidence, the Examiner
cites to annotation note 16 (Eintracht, Fig. lB), as being independently
displayed, and additionally cites to Eintracht (col. 6, 11. 3 8--41 ), as teaching
or suggesting the contested "display-independent location" (claim 54),
because the documents and associated annotations are treated independently
from each other in Eintracht. (Ans. 9).
Given the absence of any argued definition in the Specification for the
contested claim term "display-independent location" (claim 54), we are not
persuaded that the Examiner's reading of "display-independent" on the
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Application 13/614,172
independently displayed annotation notes, as depicted within Figure 1 B of
Eintracht, is overly broad or unreasonable. 3 4
The Examiner (Ans. 3--4) reads the claimed "sections" on "pages" as
described in Eintracht, at column 6, lines 37--41:
Each document may contain more than one page, wherein each
page is annotated independently of the other. The documents
40 and associated annotations are treated independently from
each other.
We find users in Eintracht (id.) "select" the page or "section" length
by determining the number of lines of text to display on each page. See
claim 54: "the shared document having plural sections each having a user-
selectable length .... " Additionally, the Examiner (Ans. 3) cites to
Eintracht (col. 4, 11. 8-10; col. 6, 11. 37-39), as teaching or suggesting
"section-dependent" locations within a document.
Appellants additionally contend the Examiner resorts to impermissible
hindsight reasoning in citing Eintracht. (App. Br. 12, 15). However, beyond
a conclusory statement, Appellants do not provide any substantive argument
or evidence in support.
3 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Application 13/614,172
Although we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court guides the "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, 401 (2007).
This reasoning is applicable here, given Appellants claimed
combination of familiar elements: e.g., "shared document ... annotation
data ... sections ... marked-up document .... " (Claim 54). Appellants
provide no evidence that combining the teachings of Rivette and Eintracht as
proffered by the Examiner would have been "uniquely challenging or
difficult for one of ordinary skill in the art" (Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), nor have Appellants
provided any objective evidence of secondary considerations, which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, for the reasons discussed above, and by a preponderance of
the evidence, we are not persuaded of error regarding the Examiner's
underlying factual findings and ultimate legal conclusion of obviousness.
Accordingly, we sustain the rejection of representative independent claim
54. The remaining claims on appeal, not separately argued, fall with claim
54. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/614,172
Conclusion
For the reasons discussed above, and by a preponderance of the
evidence, we are not persuaded the Examiner's interpretation of the
contested claim limitations LI and L2 is overly broad or unreasonable. 5
DECISION
We affirm the Examiner's rejection of claims 54--80 under§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
5 We note our reviewing court has repeatedly "cautioned against limiting
the claimed invention to preferred embodiments or specific examples in the
specification." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47
(Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)).
10