Ex Parte Patterson et alDownload PDFPatent Trial and Appeal BoardMar 27, 201713171130 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 13/171,130 06/28/2011 James Patterson 24207-18244 5000 62296 7590 03/29/2017 Google/Fenwick SILICON VALLEY CENTER 801 CALIFORNIA ST. MOUNTAIN VIEW, CA 94041 EXAMINER DEBROW, JAMES J ART UNIT PAPER NUMBER 2144 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): ptoc @ fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES PATTERSON, NATHAN MOODY, and SCOTT DOUGALL Appeal 2016-000261 Application 13/171,130 Technology Center 2100 Before JAMES R. HUGHES, SCOTT B. HOWARD, and JOYCE CRAIG, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s non-final decision rejecting claims 1—4, 6—8, 10-21, 23—25, 27— 30, 32-34, 37—47, 49-51, 53-56, 58-60, 62-65, 71-73, 75-77 and 203. Claims 5, 9, 22, 26, 31, 35, 36, 48, 52, 57, 61, 66-70, 74, and 78-202 have been canceled. Final Act. 2; App. Br. 3.1 We have jurisdiction under 35 U.S.C. § 6(b). 1 We refer to Appellants’ Specification (“Spec.”), filed June 28, 2011 (claiming benefit of US Provisional Patent Application 61/446,239, filed Feb. 24, 2011); Appeal Brief (“App. Br.”) filed Apr. 27, 2015; and Reply Appeal 2016-000261 Application 13/171,130 We affirm. Appellants ’ Invention The invention concerns an electronic book reading apparatus (reader), a computer program (computer program product), and method of using an electronic book, wherein the reader displays a portion of an electronic book, identifies based on the displayed portion of the electronic book curricula (a group of courses) associated with the electronic book, and displays controls allowing selection of specific course from the curricula. Spec. 2, 6—13; Abstract. Representative Claims Independent claims 1 and 203, reproduced below with key disputed limitations emphasized, further illustrate the invention: 1. An electronic book reader, comprising: a display; an annotation subsystem, configured to associate user- added content with a portion of an electronic book currently displayed on the display; and a navigation subsystem, operably connected to the annotation subsystem, and configured to identify, based on the electronic book of which the portion is currently displayed, a plurality of courses that are associated with the electronic book, and provide user controls on the display to select a specific course from among the plurality of courses identified, the navigation subsystem further configured to provide user controls on the display for selective access to the electronic book and to materials related to the specific course, the materials not being the electronic book or the user added content, said selective Brief (“Reply Br.”) filed Sept. 28, 2015. We also refer to the Examiner’s Answer (“Ans.”) mailed July 29, 2015, and Final Office Action (Final Rejection) (“Final Act.”) mailed Sept. 25, 2014. 2 Appeal 2016-000261 Application 13/171,130 access being at least in part responsive to the portion of the electronic book currently displayed on the display. 203. An electronic book reader, comprising: means for displaying a portion of an electronic book; means for selecting a specific course from a plurality of courses, the plurality of courses identified based on the electronic book of which a portion is currently displayed; and means for selectively accessing the electronic book and materials related to the specific course, the materials not being the electronic book or user added annotations, said selective access being at least in part responsive to a portion of the electronic book currently displayed. Rejections on Appeal 1. The Examiner provisionally rejects claim 1 on the ground of non-statutory obviousness-type double patenting over the corresponding claim (claim 1) of co-pending application US 13/620,346 (“’346 App.”).2 2. The Examiner rejects claim 203 under 35 U.S.C. § 102(e) as anticipated by Cho et al. (US 2012/0102395 Al, published Apr. 26, 2012 (filed Oct. 25, 2010)) (“Cho”). 3. The Examiner rejects claims 1—3, 6—8, 10-13, 19—21, 23—25, 27—29, 32—34, 37—39, 45^47, and 49—51 under 35 U.S.C. § 103(a) as being 2 The Examiner provisionally rejected claim 1 on the ground of non- statutory obviousness-type double patenting over claim 1 of the ’346 App., now abandoned (see Notice of Abandonment for US 13/620,346, mailed May 21, 2015). Accordingly, the rejection is moot and we do not address this rejection. 3 Appeal 2016-000261 Application 13/171,130 unpatentable over Christiansen et al. (US 2007/0055926 Al, published Mar. 8, 2007) (“Christiansen”) and Cho.3 4. The Examiner rejects claims 4 and 30 under 35 U.S.C. § 103(a) as being unpatentable over Christiansen, Cho, and Levisay et al. (US 2012/0077175 Al, published Mar. 29, 2012 (filed Sept. 26, 2011, claiming benefit of US 61/387,393, filed Sept. 28, 2010)) (“Levisay”). 5. The Examiner rejects claims 14—17, 40-43, 53—55, 58—60, 62— 65, 71—73, and 75—77 under 35 U.S.C. § 103(a) as being unpatentable over Christiansen, Cho, and Geidl et al. (US 2006/0182345 Al, published Aug. 17, 2006) (“Geidl”). 6. The Examiner rejects claims 18 and 44 under 35 U.S.C. § 103(a) as being unpatentable over Christiansen, Cho, Geidl, and Maxted (US 6,340,967 Bl, issued Jan. 22, 2002) (“Maxted”). 7. The Examiner rejects claim 56 under 35 U.S.C. § 103(a) as being unpatentable over Christiansen, Cho, Geidl, and Levisay. ISSUES Based upon our review of the record, Appellants’ contentions, and the Examiner’s findings and conclusions, the issues before us follow: 1. Did the Examiner err in finding that Cho discloses “means for selecting a specific course from a plurality of courses, the plurality of 3 The Examiner includes claim 36 in the statement of rejection. Claim 36, however, was canceled by Appellants in an Amendment filed Aug. 27, 2013. Accordingly, we remove claim 36 from the statement of rejection for clarity and consistency of the record. 4 Appeal 2016-000261 Application 13/171,130 courses identified based on the electronic book of which a portion is currently displayed,” as recited in Appellants’ claim 203? 2. Did the Examiner err in finding that Christiansen and Cho collectively would have taught or suggested that: a navigation subsystem . . . configured to identify, based on the electronic book of which the portion is currently displayed, a plurality of courses that are associated with the electronic book, and provide user controls on the display to select a specific course from among the plurality of courses identified, within the meaning of Appellants’ claim 1 and the commensurate limitations of claims 27 and 53? ANALYSIS The 35 U.S.C. § 102 Rejection of Claim 203 Appellants contend that Cho does not disclose the disputed features of claim 203. See App. Br. 8—9; Reply Br. 2—3. Specifically, Appellants contend “Cho makes no mention of the selection of course being based on a currently displayed electronic book” (App. Br. 8) and “[e]ven were Cho considered to disclose every element of the claim, the elements would not be ‘arranged as required by the claim’” (App. Br. 9). See also App. Br. 8—9; Reply Br. 2—3. Therefore, according to Appellants, Cho discloses a system in which a student first selects a course and then the list of corresponding reading materials (e.g., electronic books) is downloaded. Thus, the identification of the plurality of courses is not “based on the electronic book of which a portion is currently displayed.” Ergo, the arrangement of elements is inherently different from that disclosed in Cho. App. Br. 9; see also Reply Br. 3. The Examiner finds that Cho meets each limitation of Appellants’ claim 203. Final Act. 4—5; Ans. 2—3. Specifically, the Examiner finds that 5 Appeal 2016-000261 Application 13/171,130 Cho describes displaying a portion of an electronic book, selecting a particular course, and selecting material related to the course. Final Act. 4— 5; Ans. 2—3 (citing Cho 18, 22, 26). We agree with the Examiner and decline to adopt Appellants’ overly narrow construction of the recited “electronic book,” as well as Appellants’ interpretation of Cho. We find Appellants’ contentions unpersuasive of Examiner error. We give claim language its “broadest reasonable interpretation consistent with the [Specification” in accordance with our mandate that “claim language should be read 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) (citations and internal quotation marks omitted). Appellants fail to provide any explicit definition for an “electronic book,” either in the disputed claim or their Specification. Webster’s New World College Dictionary defines an “e-book” as “a written work whose text, etc. is published in digital form.” Webster’s New World College Dictionary (4th ed. 1999); see Webster’s New World College Dictionary (5th ed. 2011) available at http://www.yourdictionary.com (last visited Mar. 27, 2017) (no difference in definition); Random House Kemerman Webster’s College Dictionary (2010), available at www.thefreedictionary.com (last visited Mar. 27, 2017) (defining “e-book” as “a book in digital form”). Informed by this definition and Appellants’ Specification, we broadly but reasonably construe “electronic book” to simply mean digital data (content, e.g., text and/or images) structured or formatted to be displayed on a display device, which is consistent with Appellants’ Specification. See Spec. Tfl[ 6, 7, 9, 14, 50-52, 84. Cho 6 Appeal 2016-000261 Application 13/171,130 describes multiple instances of such an electronic book. See e.g., Cho 18, 21-27; Figs. 1-5. The Examiner explains, and we agree, that Cho describes displaying digital (electronic) media or content (an electronic book) and selecting a particular course using an electronic reading device. See Final Act. 4—5; Ans. 2—3 (citing Cho 18, 22, 26). Indeed, Cho describes publisher created content or material and E-content — including textbooks (| 22) and course descriptions (122) stored in network storage (Cho, Fig. 2, elements 230, 240) downloaded to an electronic reading device (Cho, Fig. 2, element 210). See Cho H 21—22, 25. Cho explicitly describes an online course profile corresponding to a particular class in a course of study (i.e., a course description in a course catalog) — “at step 300, an instructor, publisher, or other author provides a specified list of reading materials corresponding to a particular class or course of study; this list is stored at network storage 230, preferably as part of an online course profile.” Cho 122; see Cho, Fig. 3. Cho further describes selecting a course from the course description and list of materials — “[a]t step 310, a student selects the course using electronic reading device 210.” Cho 122; see Cho, Fig. 3. As explained by the Examiner, the courses would first be displayed in some portion of the electronic book currently displayed to the student on the electronic reading device. Applicant doesn’t specify what type of content the list of courses is displayed in (e.g. table of content, inside course content, etc ..), thus Cho implicitly teaches this feature. Ans. 2. We find no error in the Examiner’s interpretation of Cho. Cho describes “selecting a specific course from a plurality of courses” (claim 203) — the aforementioned course description in a course of study — which 7 Appeal 2016-000261 Application 13/171,130 is “identified based on the electronic book of which a portion is currently displayed” (claim 203) — the aforementioned course description and list of materials. The “electronic book” includes the course description which is part of a course of study (for example, a printed course catalog including a curricula as well as a description of courses in the curricula). Appellants seem to suggest that an “electronic book” is limited to a textbook — “For example, if users are interested in books they are reading, they can quickly determine courses covering the subject matter within the book reader environment.” (App. Br. 9; see Spec. 11 50, 52; Fig. 4). Appellants, however, do not expressly limit the “electronic book” to a textbook, nor do Appellants explain why Cho’s course description would not meet the recited “electronic book of which a portion is currently displayed.” Thus, Appellants do not persuade us of error in the Examiner’s anticipation rejection of claim 203. Accordingly, we affirm the Examiner’s rejection of 203. The 35 U.S.C. § 103 Rejections Appellants argue independent claims 1 and 27 together and do not separately argue dependent claims 2-4, 6—8, 10-21, 23—25, 28—30, 32—34, 37-47, and 49—51. App. Br. 9—11. Appellants provide nominal separate arguments for independent claim 53, but these arguments merely reiterate the contentions made with respect to claim 1. App. Br. 11. Appellants do not separately argue dependent claims 54—56, 58—60, 62—65, 71—73, and 75— 77. App. Br. 11. Accordingly, we select independent claim 1 as representative of Appellants’ arguments and grouping with respect to claims 1^1, 6-8, 10-21, 23-25, 27-30, 32-34, 37-47, 49-51, 53-56, 58-60, 62-65, 71-73, and 75-77. 37 C.F.R. § 41.37(c)(l)(iv). 8 Appeal 2016-000261 Application 13/171,130 The Examiner rejects claim 1 as being obvious in view of Christiansen and Cho. Final Act. 5—7. Appellants reiterate the argument made with respect to claim 203 {supra). App. Br. 9, 11. Appellants also contend the Examiners’ interpretation of the displayed electronic information as non-functional descriptive material — that is the displayed information merely constitutes “data types that the processing device is configured to receive/select. . . essentially nonfunctional descriptive material” (Final Act. 21) — is erroneous. App. Br. 9—11; Reply Br. 3^4. We disagree with Appellants. Appellants misconstrue the Examiner’s rejection as well as the cited precedent {Exparte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential)). The Examiner cites Nehls as support for the finding that the displayed information is non-functional and merely descriptive of different types of (labels for) displayed data. We agree. Appellants’ claim 1 recites a navigation subsystem identifying (configured to identify) a plurality of courses based on an electronic book displayed on a display device. See claim 1 and discussion of claim 203 {supra). In essence the claim requires identifying informational content (data values, specifically course names — the recited “plurality of courses”) associated with displayed data (the recited “electronic book”). Appellants do not define “electronic book” {see discussion of claim 203 {supra)) or “plurality of courses” either in their Specification or the claim. Thus, some information (data) identified by an undisclosed process as being associated with displayed data satisfies the limitation. The recited functionality, identifying associated data (courses, i.e., names of courses), remains the same regardless of what the displayed data constitutes. Appellants do not 9 Appeal 2016-000261 Application 13/171,130 claim the underlying identification process or argue any distinctions over the prior art with respect to such a process. That is, the specific process used for the identification by the navigation subsystem — how the identification occurs, i.e., how the association is determined between the data representing the “electronic book” and the data representing “the plurality of courses” recited in the claim — and how that identification is actually conveyed are not recited in the claim. Appellants argue that Nehls is inapposite to the analysis of the disputed claim limitations (App. Br. 9—11) because the difference between a data object representing a course and a data object representing a book is not non-functional descriptive material; books and courses are different entities with different properties, and thus data objects representing them are also different. In other words, data objects representing books and courses are not of the same type (App. Br. 10), and thus, the recited functionality — identifying (configured to identify) courses based on a portion of a displayed electronic book — patentably distinguishes over Cho’s disclosure of identifying reading materials corresponding to a course. App. Br. 10. We disagree because, here, the descriptive material at issue, the label of the displayed data object — the displayed portion of the electronic book — is not functionally related by the language of the instant claim limitations to either the recited plurality of courses or the display (substrate) on which the electronic book is displayed. The recited functionality of identifying does not change based on how the displayed data is labeled. While the “data objects representing books and courses” (App. Br. 10) may be of different “types,” Appellants do not recite identifying an association between various types of data objects or how such data objects are different from other data objects. Appellants, 10 Appeal 2016-000261 Application 13/171,130 instead, recite identifying an association between data displayed on a display and some other data (courses) that implicitly have a predefined and identifiable association. Appellants present no persuasive evidence distinguishing the recited functionality — configured to identify/identifying — from Cho’s functionality of identifying. Appellants merely attempt to distinguish the identification process based on the label of the displayed data object — the electronic book — and the label of the data identified —the plurality of courses. Such labels are essentially non-functional descriptive material. In other words, the recited features argued by Appellants — the “electronic book” and the “plurality of courses” based on the book — are data/information displayed on a display device. Such displayed data are essentially non-functional descriptive material. Appellants do not affirmatively recite creating the data objects (digital information), the particular characteristics of the data objects, nor do Appellants recite the procedure and/or algorithm for displaying the various types of information on the display. Further, Appellants do not affirmatively recite how the navigation subsystem distinguishes between different displayed data (functions differently based on the displayed data), Rather, Appellants attempt to distinguish the claim strictly based on the content of displayed data — the electronic book — and an association with other information (data) — the plurality of courses. The content of the data, however, does not change the functionality of the recited display or navigation subsystem. The recited functionality — “a navigation subsystem . . . configured to identify (claim 1, emphasis added) remains the same regardless of what the data constitutes, how the data may be named, or the relationship among the data 11 Appeal 2016-000261 Application 13/171,130 and do not further limit the claimed invention either functionally or structurally. The informational content of the data thus represents non-functional descriptive material, which “does not lend patentability to an otherwise unpatentable computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and communicated on distributed network did not functionally change either the data storage system or the communication system used in the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887—90 (discussing non-functional descriptive material). Even if we arguendo ascribe some patentable weight to the limitations, as explained by the Examiner (Final Act. 6—7; Ans. 3), Cho describes “identify [ing], based on the electronic book of which the portion is currently displayed, a plurality of courses that are associated with the electronic book” (claim 1). See discussion of claim 203, supra. Thus, Appellants do not persuade us of error in the Examiner’s obviousness rejection of representative claim 1. Accordingly, we affirm the Examiner’s obviousness rejections of independent claims 27 and 53 and dependent claims 2-4, 6—8, 10-21, 23—25, 28—30, 32—34, 37-47, 49—51, 54— 56, 58—60, 62—65, 71—73, and 75—77, not separately argued with particularity {supra). 12 Appeal 2016-000261 Application 13/171,130 CONCLUSIONS Appellants have not shown that the Examiner erred in rejecting claim 203 under 35 U.S.C. § 102(e). Appellants have not shown that the Examiner erred in rejecting claims 1^1, 6-8, 10-21, 23-25, 27-30, 32-34, 37-A7, 49-51, 53-56, 58-60, 62-65, 71-73, and 75-77 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 1—4, 6—8, 10—21, 23— 25, 27-30, 32-34, 37^17, 49-51, 53-56, 58-60, 62-65, 71-73, 75-77, and 203. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation