Ex Parte Peters et al

Patent Trial and Appeal BoardAug 2, 2017

14216682 (P.T.A.B. Aug. 2, 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. 14/216,682 03/17/2014 Edwin W. Peters CAM920130004US2_8150-0497 8411 52021 7590 08/04/2017 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER GODBOLD, DOUGLAS ART UNIT PAPER NUMBER 2658 NOTIFICATION DATE DELIVERY MODE 08/04/2017 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWIN W. PETERS, SHERRY L. PLATEK, NITTY T. PULIKAN, BALAJI RANGANATHAN, LIVIU RODEAN, BALASUBRAMANIAN SIVASUBRAMANIAN, and ERIC WOODS Appeal 2016-004945 Application 14/216,682 Technology Center 2600 Before JOHN A. JEFFERY, ERIC S. FRAHM, and MELISSA A. HAAPALA, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2016-004945 Application 14/216,682 Appellants request rehearing of our decision dated April 28, 2017 (“Dec.”), in which we affirmed the Examiner’s decision to (1) provisionally reject claims 1 and 3—7 on the ground of nonstatutory double patenting over claims 8, 10-15, and 17—20 of copending Application No. 13/839,038 (“the ’038 application”), and (2) reject claims 1 and 3—7 as obvious over Kansal and Kaiser.1 Request for Rehearing filed June 28, 2017 (“Req. Reh’g”). In the Request, Appellants contend that we misapprehended or overlooked certain arguments raised in connection with the Examiner’s provisional double patenting rejection and the obviousness rejection of claim 8. For the reasons noted below, however, we deny the request to modify our decision. The Provisional Double Patenting Rejection Appellants first contend that we erred by addressing the Examiner’s provisional double patenting rejection as inconsistent with Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). Req. Reh’g 2. According to Appellants, the double patenting issue becomes ripe only after the copending ’038 application issues as a patent. Id. We disagree. To be sure, the panel in Moncla declined to reach the provisional double patenting rejection as premature, but did so under the particular circumstances of that case—circumstances that do not exist here. See Moncla, 95 USPQ2d at 1885. In Moncla, an earlier Board panel reversed the Examiner’s prior art rejections, but affirmed the Examiner’s provisional double patenting rejection—a decision that was appealed to the 1 Because these references are cited in full on page 3 of our earlier decision, we omit those citations here for brevity. 2 Appeal 2016-004945 Application 14/216,682 Federal Circuit. Id. at 1884. The case, however, was remanded back to the Board after the court granted a joint motion requesting such a remand. Id. An expanded Board panel then concluded that, in this circumstance where the only remaining rejection is a provisional non-statutory double patenting rejection, the original panel’s addressing the Examiner’s provisional rejection was premature. Id. at 1885. Therefore, the expanded panel did not reach that provisional rejection. Id. But as another expanded Board panel explained later in an informative decision citing Moncla, “[pjanels have the flexibility to reach or not reach provisional obviousness-type double-patenting rejections.” Ex parte Jerg, No. 2011-000044, 2012 WL 1375142, at *3 (BPAI 2012) (expanded panel) (informative) (emphasis added). Given this flexibility, Appellants’ contention that we erred by exercising our discretion to address the Examiner’s provisional rejection (Req. Reh’g 2) is unpersuasive. Despite Appellants characterizing the provisional rejection as “not the subject of the present appeal” (id.), the provisional rejection is nevertheless uncontested and, therefore, was properly summarily sustained on page 3 of our decision. Therefore, we are not persuaded that we erred by addressing—and summarily sustaining—the provisional rejection. The Obviousness Rejection of Claim 1 Appellants also contend that because we relied on the combination of Kansal and Kaiser to teach “the limitations at issue,” unlike the Examiner who is said to have relied solely on Kaiser in this regard, we allegedly entered an undesignated new ground of rejection. Req. Reh’g 5—6. We disagree. 3 Appeal 2016-004945 Application 14/216,682 First, claim 1 ’s last clause refers to cross-referencing the analysis of the text—the very textual analysis for which Kansal was cited. See Dec. 3, 5 (citing Ans. 3). Therefore, although the Examiner cites Kaiser in connection with the cross-referencing limitation, this cross-referencing cannot be viewed in isolation, but rather in the context of what is actually being cross- referenced, namely the textual analysis for which Kansal was cited. We noted in our opinion, however, that the Examiner acknowledged Kansal does not perform this particular cross-referencing, and relied on Kaiser’s phoneme-alignment functionality in Figure 8 for teaching this element. Dec. 5—7 (citing Ans. 3—8). That is, we acknowledged the Examiner’s reliance on Kaiser to cure Kansal’s deficiencies in connection with the cross-referencing limitation. In essence, we found no error in the Examiner’s reliance on (1) Kansal for teaching, among other things, analyzing text of plural content meeting streams to identify a key element therein, and (2) Kaiser for teaching cross-referencing the analysis of each stream’s text to identity one or more common key elements in the analysis. See Dec. 7 (“In such a case, not only would the respective audio and image streams be converted to text for analysis as taught by Kansal, but such an analysis would also be cross- referenced via the alignment matrix in Kaiser’s Figure 8.”). Our emphasis underscores that, under the proposed combination, cross-referencing via Kaiser’s technique is an adjunct to Kansal’s textual analysis and key element identification. Although this cross-referencing is with respect to the textual analysis’ associated phonemes, nothing in the claim precludes such a technique that would identify one or more common key elements, at least with respect to their associated phonemes. 4 Appeal 2016-004945 Application 14/216,682 That is, in addition to identifying key elements using KansaTs technique—elements derived from converted speech data in paragraph 42— it would have been obvious to also identify any of these key elements that are common using Kaiser’s phoneme-based approach whose purpose is to detect redundancy. See Kaiser || 75—77. Such an enhancement uses prior art elements predictably according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Appellants’ arguments to the contrary are unavailing. First, the arguments regarding the alleged shortcomings of Kansal and Kaiser (Req. Reh’g 2—7) essentially individually attack the references, rather than their collective teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Second, the arguments are not commensurate with the scope of the claim. Our decision, then, did not change the thrust of the Examiner’s rejection that cites Kaiser for the limited purpose of teaching cross- referencing, and concludes that using such a technique in conjunction with Kansal’s system that identifies key elements via textual analysis would have been obvious. See Ans. 3—8. Lastly, despite Appellants’ arguments to the contrary (Req. Reh’g 8— 9), we still find Kaiser is analogous art. On page 8 of the Request, Appellants cite Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858 (Fed. Cir. 1993) where the patents at issue stated that their inventions related to memories and, more particularly, to modular memories providing storage and retrieval of binary words. To be sure, as Appellants indicate, the court in that case limited the field of endeavor to modular memories providing 5 Appeal 2016-004945 Application 14/216,682 storage and retrieval of binary words, despite the patents indicating that the inventions also related more broadly to memories. Req. Reh’g 8—9. Nevertheless, we see no reason why the field of endeavor of virtual meetings should be limited to the narrower field of automatically taking notes within a virtual meeting as Appellants propose. Not only are the respective fields of endeavor entirely different from those in Wang, there is no persuasive evidence on this record proving that Appellants’ field of endeavor must be limited to automatically taking notes within a virtual meeting apart from mere attorney argument. Such attorney argument and conclusory statements unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). In any event, the same field of endeavor is just one alternative of a two-part test for analogous art: namely, whether the prior art is (1) from the same field of endeavor regardless of the problem addressed, or (2) reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Notably, Appellant does not squarely address—let alone persuasively rebut—our finding on page 8 of the decision that Kaiser is also reasonably pertinent to the Appellants’ problem, at least with respect to identifying common elements from multiple data sources. So even assuming, without deciding, that the field of endeavor is limited to automatically taking notes within a virtual meeting as Appellants propose (which it is not), we still find that Kaiser is reasonably pertinent to Appellants’ problem and, therefore, is analogous art. 6 Appeal 2016-004945 Application 14/216,682 Accordingly, for the foregoing reasons, we are not persuaded that we misapprehended or overlooked those points in rendering our decision. CONCLUSION For the foregoing reasons, we have granted Appellants’ request to the extent that we have reconsidered our decision, but we deny the request with respect to making any changes therein. DENIED 7