Ex Parte Rao et al

Patent Trial and Appeal Board

Oct 23, 2017

13744612 (P.T.A.B. Oct. 23, 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.
13/744,612 01/18/2013 Jayanthi Rao 83231518 9222
28395 7590 10/25/2017
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER HUANG, CHEN-LIANG
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAYANTHI RAO, THOMAS J. GIULI, and
KRISHNASWAMY VENKATESH PRASAD
(Applicant: Ford Global Technologies, LLC)
Appeal 2017-001232
Application 13/744,6121
Technology Center 2400
Before KRISTEN L. DROESCH, SCOTT B. HOWARD, and
JOYCE CRAIG, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies itself, Ford Global Technologies, LLC, as the real
party in interest. App. Br. 2.
Appeal 2017-001232
Application 13/744,612
THE INVENTION
The disclosed and claimed invention is directed to a method and
apparatus for a processor configured to receive a request to provide email
read-back and to receive audio data from a human email read-back party
corresponding to the email. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 A system comprising:
a processor configured to:
receive a request to provide email read-back;
access contact information for a human email read-back
party;
using the contact information, determine availability of the
party, by contacting the party, to read back one or more emails;
deliver the one or more emails to the party for read-back;
and
receive audio data from the party corresponding to the
delivered emails.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Hamilton US 6,981,023 B1 Dec. 27, 2005
Timmins US 2006/0023849 A1 Feb. 2, 2006
Kao US 2009/0132661 A1 May 21, 2009
Kitahara US 2011/0177795 A1 July 21, 2011
Shen US 7,999,959 B2 Aug. 16, 2011
Tan US 2013/0318177 A1 Nov. 28, 2013
2 Tan was filed on March 15, 2013, and claims benefit of a provisional
application filed on May 25, 2012.
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REJECTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2—3 and 6—7.
Claims 1, 3—5, 8, 10, 12—14, 17, and 19 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Timmins in view of
Hamilton. Final Act. 8—11.
Claims 2 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Timmins in view of Hamilton and Kitahara. Final
Act. 11-12.
Claims 6, 7, 15, and 16 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Timmins in view of Hamilton and Kao.
Final Act. 12—13.
Claims 9 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Timmins in view of Hamilton and Tan. Final Act.
14.
Claim 20 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hamilton in view of Timmins and Shen. Final Act. 15—
16.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding claims 1—20, and we
incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 2—16), and (2) the reasons and rebuttals set forth in the Examiner’s
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Answer in response to Appellant’s arguments (Ans. 2—11). We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
for emphasis as follows.
Section 101 Rejection (Claims 1—20)
The Examiner concludes claims 1—20 are directed to patent-ineligible
subject matter. Final Act. 2—3, 6—7; Ans. 2—5. Specifically, the Examiner
concludes that the pending claims are directed to the abstract idea of “a
partially computerized variation of providing a conventional email read-back
service,” which is an example of a method of organizing human activity.
Final Act. 3 (emphasis omitted); see also Final Act. 7 (identifying the
abstract idea as “a computerized variation of providing a conventional email
read-back service”) (emphasis omitted); Ans. 2—3 (identifying the abstract
idea as “a variation of an email recipient asking a third party to read received
emails”). The Examiner further concludes that “[t]he abstract idea is
described by the steps of receiving an email read-back service request,
contacting a human email read-back party, delivering the email to and
receiving audio from the read-back party.” Ans. 3.
The Examiner also determines that the claims “do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the method and system as recited is a generic
computer component that performs/automates functions (e.g., delivering
emails to different parties based on the subject or content).” Final Act. 7.
The Examiner further determines that the claims merely recite “generic
computer functions” and, “[vjiewed as a whole, these claim elements do not
provide meaningful limitations to transform the abstract idea into a patent
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eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself.” Id. The Examiner further
cites Eng,3 Bansal,4 and Friedlander5 as evidence that the step of using
contact information as recited in claim 1 “is not significantly more, but is
routine and conventional.” Ans. 4—5 (discussing references).
Appellant argues the Examiner erred in concluding the claims are
directed to an abstract idea and that the remaining steps do not account for
anything more than the judicial exception/abstract idea.6
First, Appellant argues there is no reason to perform the two-step
analysis. App. Br. 7; Reply Br. 3^4. According to Appellant, based on the
New Interim Eligibility Guidance in the Federal Register (dated Dec. 12.
2014), when the claim “clearly does not seek to tie up any judicial exception
such that others cannot practice it” a streamlined eligibility analysis can be
used. App. Br. 7 (emphasis omitted); see also Reply Br. 3 (discussing the
July 2015 update). Thus, according to Appellant, “[i]f the claim does not tie
up the identified judicial exception so that others cannot practice it, then the
claim is patent eligible.” Reply Br. 3.
Second, Appellant argues because the claims do not “actually dictate[]
any action, thought or human activity.” the claim cannot be directed to a
method of organizing human activity. App. Br. 6; see also Reply Br 2.
Third Appellant argues that the Examiner erred in concluding the
claims are directed to conventional or generic steps. App. Br. 6, 7—8.
3 US 2012/0321058 Al, publ. Dec. 20, 2012
4 US 2010/0036687 Al, publ. Feb. 11, 2010.
5 US 2009/0299766 Al, publ. Dec. 3, 2009.
6 We have reorganized Appellant’s arguments to reflect whether they are
directed to the first or second step of the Examiner’s analysis.
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Specifically, Appellant argues “that at least the steps of ‘using the contact
information, determine availability of the part[y], by contacting the
party . . is neither a routine nor conventional computer process.” App. Br.
7—8. Additionally, Appellant argues the Examiner’s reliance on prior art
evidence to demonstrate that a step is routine or conventional is not
supported by law or statute. Reply Br. 4—5.
Finally, Appellant avers “that this invention improves the field of
digital text readback, by providing readback capable of tone or context (e.g.,
par [0032] of the instant specification).” App. Br. 8.
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355.
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S. Ct., at
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1296—1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at------- , 132 S. Ct., at 1297. To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. Id., at------- , 132 S. Ct.,
at 1298, 1297. We have described step two of this analysis as a
search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.” Id., at------- , 132 S. Ct., at
1294.
Id.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent eligible under
§101, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided”).
For the reasons set forth in the Final Action and Answer, we agree
with the Examiner that the claims are directed to an abstract idea and the
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additional limitations do not recite something more so as to transform the
claim into patent-eligible subject matter. Additionally, for the reasons
discussed below, we are not persuaded by any of Appellant’s arguments that
the Examiner erred.
First, we are not persuaded by Appellant’s argument that we can
ignore the two-step framework as set forth by the Supreme Court. The
USPTO’s guidelines—which provide the bases for Appellant’s argument—
are just that, guidelines and are not binding on this Board. Cf. In re Fisher,
421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not
binding on this court.’”) (citations omitted). Instead, we are bound to follow
the precedent of the Supreme Court, such as Alice and Mayo, as well as
decisions from our reviewing court applying Supreme Court precedent.
Appellant has not identified any case law supporting the so called
“streamlined eligibility analysis.” Accordingly, we will follow the two-step
framework announced by the Supreme Court and not use any streamlined
analysis.
Moreover, although the extent of preemption is a consideration, the
absence of complete preemption is not dispositive. See, e.g.,Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”);
Ultramercial Inc. v. HuluLLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
(“[T]he Supreme Court has stated that, even if a claim does not wholly pre­
empt an abstract idea, it still will not be limited meaningfully if it contains
only insignificant or token pre- or post-solution activity—such as identifying
a relevant audience, a category of use, field of use, or technological
environment.”) (citations omitted), vacated and remanded, Wildtangent, Inv.
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v. Ultramercial LLC, 134 S. Ct. 2870 (2014) (remanding for consideration in
light of Alice, 134 S. Ct. 2347). Thus, we must, under controlling precedent,
consider the two-step framework of MayolAlice even when there is not
preemption.
Second, whether or not the claim is directed to a method for
organizing human activity, we are not persuaded by Appellant’s arguments
the Examiner erred in finding the claim is directed to an abstract idea
because the arguments do not address the Examiner’s full recitation of the
abstract idea. Although the Examiner notes that the claim is directed to a
method of organizing human activities, the Examiner specifically concludes
the abstract idea recited in the claims is “a partially computerized variation
of providing a conventional email read-back service.” Final Act. 3
(emphasis omitted).7 Appellant does not present any argument that the
Examiner’s finding was inaccurate or does not reflect an abstract idea. “If
an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.” Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Moreover, we agree with the Examiner that the claim is directed to an
abstract idea. But for the processor limitation, the claim could be performed
by a human with a telephone. Claims that can be performed by a human
mind—in this case with the assistance of a telephone—are directed to an
7 We acknowledge that the Examiner used several different formulations of
the abstract idea. Compare Final Act. 2 (discussed above), with id. at 7
(omitting the word partially for the abstract idea) and Ans 2—3 (identifying
the abstract idea as “a variation of an email recipient asking a third party to
read received emails”). However, each recitation identifies substantially the
same abstract idea.
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abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011) (“Thus, claim 3’s steps can all be performed in
the human mind. Such a method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under § 101.
Methods which can be performed entirely in the human mind are
unpatentable not because there is anything wrong with claiming mental
method steps as part of a process containing non-mental steps, but rather
because computational methods which can be performed entirely in the
human mind are the types of methods that embody the ‘basic tools of
scientific and technological work’ that are free to all men and reserved
exclusively to none.”) (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)) (footnote omitted)); SmartGene Inc. v. Adv. Bio. Labs. SA, 555 Fed.
Appx. 950 (Fed. Cir. 2014) (holding that “that section 101 covers neither
‘mental processes’—associated with or as part of a category of ‘abstract
ideas’—nor processes that merely invoke a computer and its basic
functionality for implementing such mental processes, without specifying
even arguably new physical components or specifying processes defined
other than by the mentally performable steps”).
Furthermore, the configuration of the processor does not constitute an
improvement in technology that would render the claims patent-eligible. See
Enfish, 822 F.3d at 1337 (finding claims directed to new type of database
that represented “an improvement of an existing technology” not abstract).
The Specification describes the problem addressed by the claims as allowing
the email read-back “to provide tone and context.” Spec. 132. The claims
do not improve computer technology; instead they merely invoke known
processor configurations “merely as a tool” to address this issue of tone and
context. See Enfish, 822 F ,3d at 1336; see also Broadsoft, Inc. v. Callwave
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Comm., LLC, No. 13-711-RGA, slip op. at 9-13 (D. Del. Oct. 1, 2017)
(finding claims directed to sequential dialing to solve the problem of human
unavailability to be an abstract idea).
Third, although Appellant argues the claims are not directed to
conventional steps, Appellant does not proffer any evidence in support of its
argument. It is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is
not evidence).
Moreover, unlike Appellant, the Examiner provided evidence to
support the Examiner’s determination. See Reply Br. 4—5 (Appellant argues
that it “is unaware of any law, case or statute that allows the Examiner to
‘prove’ that activity is routine and conventional merely because it is present
in prior art”). Although evidence is not required to prove an element
conventional or generic, Appellant does not cite any prohibition against
relying on the evidence. There is nothing improper with the Examiner citing
evidence to support the Examiner’s determinations.
Fourth, we are not persuaded by Appellant’s statement that the claim
is directed to a technological improvement. The entirety of Appellant’s final
argument is as follows: “Finally, Applicant points out that this invention
improves the field of digital text readback, by providing readback capable of
tone or context (e.g., par [0032] of the instant specification).” App. Br. 8.
This single sentence is not sufficient to raise an argument that the Examiner
erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37
requires “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
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elements were not found in the prior art.”); see also 37 C.F.R.
§ 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”). Appellant fails to provide sufficient, persuasive argument or evidence
regarding the so-called technological improvement.
Moreover, even if the single sentence were sufficient, it is not
persuasive. Appellant has not established that tone or context is a
technological problem. Nor is it clear how providing a human reader is a
technological improvement.
Accordingly, we sustain the Examiner’s rejection of claims 1—20 as
directed to patent—ineligible subject matter.
Section 103 (Claims 1, 3, 5, 8, 10, 12, 14, 17, and 19)
Appellant argues the Examiner erred in findings Timmins teaches “a
processor configured to use contact information” to “determine availability
of the party, by contacting the party, to read back one or more emails,” as
recited in claim 1. App. Br. 9; Reply Br. 5—6. More Specifically, Appellant
argues although Timmins “states that an operator can give information about
email message,” it does not teach “that a human entity would read back an
email.” App. Br. 9. Therefore, according to Appellant, the concept of
determining the availability of a computer is meaningless. Id. Moreover,
Appellant argues that even if Timmins teaches determining the availability
of an information assistance provider, that is different from determining the
availability of a party to read back emails. Id.
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Appellant further argues that the teachings of Hamilton (having a
person read an email) is not compatible with the teachings of Timmins
(using various computer generated voices for different types of emails). Id.
at 10.
Finally, Appellant argues “Hamilton doesn’t cure the deficiency of
Timmins with regards to the determination as to whether or not the live
person is available.'1'’ Id.
The Examiner finds Timmins teaches various limitations recited in
claim 1, including a processor configured to “receive a request to provide
email read-back,” and “access contact information for a human email read-
back party [and] and using the contact information, determine availability of
the party, by the contacting the party,” as recited in claim 1. Final Act. 8
(citing Timmins ^fl[ 3, 35, 53). More specifically, the Examiner finds
Timmins teaches that “[t]he user can call (and determine the availability of)
an information assistance provider for assistance which may include, e.g., a
human operator.” Id. (emphasis omitted) (citing Timmins || 3, 35). The
Examiner further finds that although Timmins teaches using a Text-to-
Speech engines to provide an email read-back, Hamilton teaches “a system
that provides an email read-back service to subscribers calling in.
Specifically, Hamilton teaches a system in which an email is delivered as
‘live speech’ created by an operator or human person other than the message
originator who is reading the email text out loud in real time.” Id. at 9
(citing Hamilton 4:36, 44-46); see also Ans. 5—7. The Examiner further
finds that a person of ordinary skill in the art would have “utilize[d] the
teachings of Hamilton for an operator or human person delivering email text
as ‘live speech’ to a user when requested ... in order to provide a more
personable experience of delivering emails to a user.” Final Act. 9.
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Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or ah of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Because Appellant’s arguments are directed to the references
individually and not the combined teachings of the references, we are not
persuaded by Appellant’s arguments that the Examiner erred. Instead, we
agree with the Examiner’s findings. Specifically, we find that Timmins
teaches a user determining if an information assistance operator is available
by placing a telephone call to the operator. Timmins 13. Although the
operator may be a non-human, Timmins expressly teaches that it could also
be human operator. Timmins | 35. Timmins also teaches email read-back,
albeit by a computer. Timmins H 35, 53. We further agree with the
Examiner that Hamilton teaches using a human to read-back e-mail
(Hamilton 4:36-47) and that when a human was used to read-back an email,
the person of ordinary skill in the art would have used the teaching for
Timmins to determine if the reader was available. Ans. 5—9; see also Final
Act. 9.
We are also not persuaded by Appellant’s arguments that the
teachings of the references are incompatible. If a proposed modification
would render the prior art invention being modified unsatisfactory for its
intended purpose, then there is no suggestion or motivation to make the
proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
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For example, our reviewing court held that an invention was not obvious
where the prior taught the device required rigidity for operation whereas the
claimed invention required resiliency. In re Ratti, 270 F.2d 810, 813 (CCPA
1959). However, as our reviewing court has explained, the proposition set
forth in Ratti is inapplicable where the modified apparatus will operate “on
the same principles as before.” In reMouttet, 686 F.3d 1322, 1332 (Fed.
Cir. 2012) (citing In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969)).
In this case, in discussing one aspect of the invention, Timmins uses
the word “may” to describe having different voices associated with different
types of emails: “In accordance with an aspect of the invention, a user may
select a different speech for each voice information delivery service or
function, and/or in terms of urgency, context (e.g., new versus old messages;
up versus down stock prices), etc. of the information to be voiced-delivered
to the user.” Timmins 1 53 (emphasis added). Because the use of different
voices is describes as something optional that a user may do, it is not a
mandatory feature. See also Timmins claim 18 (allowing but not requiring a
user to select a plurality of voice parameters), 48 (same). Because the use of
specific voices depending on the context is optional, we are not persuaded
that Hamilton’s use of a human email reader is incompatible with Timmins.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claims 10 and 19, which are argued on the same
grounds, and dependent claims 3, 5, 8, 12, 14, and 17, which are not
separately argued. See App. Br. 10
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Section 103 (Claims 4 and 13)
Appellant argues the Examiner erred in finding Hamilton teaches
having the read-back party be a “friend or family member of a requesting
party,” as recited in claim 4. App. Br. 10—11. Specifically, Appellant argues
Hamilton teaches that the email is read back by someone other
than the message originator. A teaching that something isn’t of
a certain nature (i.e., the readback party isn’t the message
originating party) does not automatically render all explicit
claims that the something is of a specific nature (the readback
party is specifically a friend or family member).
Id.
The Examiner finds Hamilton teaches that the reading party “is a
friend or family member of a requesting party.” Final Act. 10 (citing
Hamilton 4:36, 44-46). In support of that finding, the Examiner construes
the term friend to “include[] a janitor, a doorman, a phone operator, or
anyone who a person talks to, even if only casually, for whatever reasons—
as long as it is not in a hostile situation.” Id. at 6. The Examiner further
determines that the “a friend or family member” limitation “is a non­
functional label on the human operator and doesn’t further limit the claim.”
Ans. 11.
Appellant does not address the Examiner’s claim construction or
determination that the claim limitation is a non-functional label that acts as
mere window dressing without further limiting the claim. “If an appellant
fails to present arguments on a particular issue — or, more broadly, on a
particular rejection — the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.” Frye, 94 USPQ2d at
1075. Accordingly, we are not persuaded by Appellant’s argument that the
Examiner erred. Instead, for the reasons discussed below—along with the
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reasons set forth in the Final Action and Answer—we agree with the
Examiner.
Further, our reviewing court has affirmed the unpatentability of claims
when a limitation that is missing from the prior art is merely “window
dressing” that does not affect performance of the claimed invention.
Gardner v. TEC Sys., 725 F.2d 1338 (Fed. Cir. 1984). The Examiner finds,
and Appellant does not dispute, the use of a friend or family member is a
non-functional limitation that does not affect the performance of the claim.
Accordingly, we agree with the Examiner that claim 4 is unpatentable as
obvious. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.”); In re Rice, 341 F.2d 309, 314 (CCPA 1965)
(affirming rejection of claims when did not demonstrate that the disputed
limitation “results in a difference in function or give[s] unexpected results”).
Moreover, there are a finite number of groupings of people who can
read-back the emails, such as friends, family members, strangers,
acquaintances, and enemies. The Supreme Court has recognized that in
cases such as this,
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103
KSR, 440 at 421. Petitioner does not present evidence or persuasive
argument that the selection of a friend or family member would be “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog
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Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Accordingly, we do not consider Appellant’s
argument to sufficiently demonstrate the Examiner’s rejection is in error.
Concluding otherwise would result not only in Appellant’s identified
friend or family member distinguishing over the prior art, but equally would
distinguish every other unique grouping of people. To give effect to
Appellant’s argument, we would need to ignore our reviewing court’s
concerns with repeated patenting. See King Pharm. Inc. v. Eon Labs., Inc.,
616 F3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of
cases is preventing the indefinite patenting of known products by the simple
inclusion of novel, yet functionally unrelated limitations.”); cf. Ngai, 367
F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could continue
patenting a product indefinitely provided that they add a new instruction
sheet to the product.”). We decline to do so.
Accordingly, we sustain the Examiner’s rejection of claim 4, along
with the rejection of claim 13, which is argued on the same grounds.
Section 103 (Claims 6 and 15)
With respect to dependent claims 6 and 15, Appellant contends that
because the additional reference used in the rejections of these claims (Kao)
do not cure the shortcomings of the other references applied against claim 1,
the Examiner failed to make a prima facie case of obviousness for these
claims. App. Br. 11. Because we determine that the rejection of claim 1 is
not erroneous for the reasons discussed above, we are not persuaded by
Appellant’s argument the Examiner erred.
Appellant further argues that “the inclusion of Kao teaching sending a
text to a party to determine that party's availability makes no sense within
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the scope of Timmins, as the combination would literally teach sending a
text message to a Text To Speech processor ... to ‘check if the TTS
processor was available.[’]”. Id.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” Keller, 642 F.2d at 425. Instead, the relevant issue is “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id. “Combining the teachings of references does
not involve an ability to combine their specific structures.” In re Nievelt,
482 F.2d 965, 968 (CCPA 1973); see also Mouttet, 686 F.3d at 1332 (“It is
well-established that a determination of obviousness based on teachings
from multiple references does not require an actual, physical substitution of
elements.” (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
banc))). Moreover, as discussed above, nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See Merck, 800 F.2d
at 1097; Keller, 642 F.2d at 425.
Because Appellant’s argument is based on bodily incorporating the
text message of Kao into Timmins without considering the modifications
made in light of Hamilton, we are not persuaded that the Examiner erred.
Instead, we agree with the Examiner that a person of ordinary skill of the art
would have used the text message from Kao to notify the human read-back
reader into the previously discussed Timmins/Hamilton system.
Accordingly, we sustain the Examiner’s rejection of claims 6 and 15.
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Section 103 (Claims 2, 7, 9, 11, 16, 18, and 20)
With respect to dependent claims 2,1,9, 11, 16, 18, and 20,
Appellants merely contend that because the additional references used in the
rejections of these claims (Kitahara, Kao, Tan, and Shen) do not cure the
shortcomings of the other references applied against claim 1, the Examiner
failed to make a prima facie case of obviousness for these claims. App. Br.
11—12. Because we determine that the rejection of claim 1 is not erroneous
for the reasons discussed above, we sustain the rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—20.
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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