Ex Parte Patterson et al

Patent Trial and Appeal Board

Mar 27, 2017

13171130 (P.T.A.B. Mar. 27, 2017)

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