Ex Parte Patterson et al

Patent Trial and Appeal Board

May 25, 2017

13103813 (P.T.A.B. May. 25, 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.
13/103,813 05/09/2011 James Patterson 24207-18248 1003
62296 7590 05/30/2017
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
05/30/2017 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 and NATHAN MOODY
Appeal 2016-004967
Application 13/103,813
Technology Center 2100
Before JOHN A. JEFFERY, MELISSA A. HAAPALA, and
KAMRAN JIVANI, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention allows third parties to make executable
extensions or “add-ons” to electronic books available to users. In one
aspect, the extensions interact with content to provide related functionality.
See generally Abstract; Spec, 2, 73, 102. Claim 1 is illustrative:
1. An electronic book reader, comprising:
an ordering subsystem configured to obtain an electronic book and an
executable extension providing functionality relating to the electronic book,
Appeal 2016-004967
Application 13/103,813
wherein the electronic book is published by a first publisher and executable
extension is published by a second publisher that is different from the first
publisher;
an annotation subsystem, operably coupled with the ordering system,
configured to associate the executable extension with the electronic book;
and a display subsystem configured to display a portion of the electronic
book including content with which the executable extension can interact, the
display subsystem further configured to launch the executable extension,
wherein the executable extension interacts with the content to provide
functionality related to the content.
THE REJECTIONS
The Examiner rejected claims 1—6 and 8 under 35 U.S.C. § 102(e) as
anticipated by Ho (US 2011/0087955 Al; Apr. 14, 2011). Final Act. 2—5.1
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Ho and Taub (US 2008/0317346 Al; Dec. 25, 2008).
Final Act. 6.
The Examiner rejected claims 9-14, 17—23, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Ho and Pallakoff (US 2012/0147055 Al; June
14,2012). Final Act. 6-10.2
1 Throughout this Opinion, we refer to (1) the Final Rejection mailed
October 1, 2014 (“Final Act.”); (2) the Appeal Brief filed May 20, 2015
(“App. Br.”); (3) the Examiner’s Answer mailed February 26, 2016
(“Ans.”); and (4) the Reply Brief filed April 7, 2016 (“Reply Br.”).
2 There is a typographical error in the header of this rejection. Although
claims 15 and 24 are listed in the summary paragraph, the body of the
rejection does not include these claims.
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Application 13/103,813
The Examiner rejected claims 15 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Ho, Pallakoff, and Auguste (US 2012/0001844 Al; Jan. 5,
2012). Final Act. 10-11.
The Examiner rejected claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Ho, Taub, and Auguste. Final Act. 11—12.
The Examiner rejected claims 16 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Ho, Pallakoff, and Taub. Final Act. 12.
THE ANTICIPATION REJECTION
The Examiner finds that Ho’s electronic book (“e-book”) reader has
every recited element of claim 1 including the recited display subsystem
where an executable extension interacts with content to provide content-
related functionality. Final Act. 2—A. According to the Examiner, as the
reader moves to a certain page or section in Ho’s e-book, an audio file is
played automatically. Final Act. 3.
Appellants argue that Ho does not disclose an executable extension
that interacts with content to provide content-related functionality as
claimed. App. Br. 7—8; Reply Br. 2—\. According to Appellant, because Ho
displays predetermined annotations that are independent from the displayed
e-book content, they do not interact despite their simultaneous display. App.
Br. 9—10; Reply Br. 2-4. Appellants add that because Ho’s annotations and
content are “separate and static,” the content/fimctionality of each is not
changed by the presence of the other and, therefore, there is no interaction
with the content. Reply Br. 4.
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ISSUE
Under Section 102, has the Examiner erred in rejecting claim 1 by
finding that the display subsystem of Ho’s e-book reader is configured to
launch an executable extension that interacts with content to provide
functionality related to the content?
ANALYSIS
We begin by construing the key disputed limitation of claim 1
reciting, in pertinent part, that the executable extension interacts with the
content to provide content-related functionality. Our emphasis on
“interacts” underscores that this dispute turns on the meaning of this word.
The Specification does not define the term “interact,” unlike other
terms whose definitions leave no doubt as to their meaning. See, e.g., Spec.
11116—18 (defining “one embodiment,” “comprises,” “including,” “or,” “a,”
“an,” etc.). To be sure, paragraph 102 of the Specification describes various
interactions that are used between an add-on and an e-reader device
including, in various embodiments, (1) reading attributes of the current book
in which the add-on is running; (2) initial launch conditions; (3) read/write
services (e.g., optical recognition to “read” sheet music, and audio streaming
to play the corresponding audio); and (4) UI interactions. On page 8 of the
Reply Brief, Appellants refer to paragraph 35 of the Specification that
describes an embodiment where an extension reads a passage of displayed
sheet music, and provides an audio rendition of that music. Although these
various exemplary interactions inform our interpretation of the term
“interact” in the context of the disclosed invention, the term is not so limited.
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The term “interaction” is defined, in pertinent part, as “[t]he act or
state of two or more entities influencing each other.” Steven M. Kaplan,
Wiley Electrical & Electronics Engineering Dictionary 380 (2004).
Indeed, this mutual influence associated with interaction is not limited to
electrical engineering, but arises in many different situations—even patent
prosecution. See In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268,
1286 (Fed. Cir. 2015) (noting that examiners and applicants interact during
examination to define the invention to distinguish prior art).
Given this plain meaning, we see no error in the Examiner’s reliance
on Ho’s functionality in paragraph 75 that plays audio files, such as mp3
annotations, when an e-book page is read. Notably, as the reader moves to a
certain page or section, an audio file is played automatically. Ho 175.
Because the executable extension that plays the audio file is influenced by
content associated with a certain page or section by triggering playback
responsive to displaying those particular pages or sections, the extension
effectively interacts with that content. Moreover, the content associated
with a certain page or section is likewise influenced by the extension by
augmenting that content with audio annotations.
So even assuming, without deciding that Ho’s audio annotations are
predetermined and distinct from the displayed e-book content as Appellants
contend (App. Br. 8), nothing in the claim precludes their interaction under
the term’s broadest reasonable interpretation. Appellants’ arguments to the
contrary (App. Br. 7—8; Reply Br. 2 4) are unavailing and not
commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—6 and 8 not argued separately with particularity.
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THE OBVIOUSNESS REJECTION OVER HO AND PALLAKOFF
We also sustain the Examiner’s obviousness rejection of claims 9—14,
17—23, and 26 over Ho and Pallakoff. Final Act. 6—10. Because Appellants
(1) reiterate Ho’s alleged shortcomings regarding the recited extension that
interacts with the content, and (2) add that Pallakoff does not cure those
purported deficiencies (see App. Br. 8—9; Reply Br. 4—5), we are not
persuaded by these arguments for the reasons previously discussed.
THE OBVIOUSNESS REJECTION OVER HO, TAUB, AND AUGUSTE
We also sustain the Examiner’s obviousness rejection of claim 27
over Ho, Taub, and Auguste. Final Act. 11—12. Claim 27 recites that the
content with which the extension can interact is sheet music, and the
functionality related to the content is providing audio playback
corresponding to the sheet music. Despite Appellants’ arguments to the
contrary (App. Br. 9—10; Reply Br. 5—6), we see no error in the Examiner’s
reliance on the cited references’ collective teachings in this regard. As noted
previously, Ho’s system plays an audio file automatically as the reader
moves to a certain e-book page or section in paragraph 75. Moreover,
Auguste teaches that e-book readers can display sheet music in paragraphs 1
and 7.
Given these collective teachings, then, playing audio corresponding to
sheet music displayed at certain pages or sections of an e-book as the
Examiner proposes (Final Act. 12; Ans. 4) would have been at least an
obvious variation. Appellants’ arguments regarding Auguste’s individual
shortcomings in this regard (App. Br. 9—10) do not show nonobviousness
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where, as here, the rejection is based on the cited references’ collective
teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Appellants’ contentions that the cited prior art does not teach or
suggest the recited interaction (Reply Br. 5—6) are likewise unpersuasive for
the reasons previously discussed.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 7,
15, 16, 24, and 25. Final Act. 6—10, 12. Because these rejections are not
argued separately with particularity, we are not persuaded of error in these
rejections for the reasons previously discussed.3
CONCLUSION
The Examiner did not err in rejecting (1) claims 1 and 6—8 under
Section 102, and (2) claims 2—5 and 9-27 under Section 103.
DECISION
The Examiner’s decision rejecting claims 1—27 is affirmed.
3 The Examiner omits claim 16 (from which claim 15 depends) in the
rejection over Ho, Pallakoff, and Auguste, but instead rejects claim 16 over
Ho, Pallakoff, and Taub (Final Act. 12). However, these inconsistencies are
not contested and are, therefore, waived. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground
of rejection to the Board, . . . the Board may treat any argument with respect
to that ground of rejection as waived.”).
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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
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