Ex Parte Walsh et al

Patent Trial and Appeal BoardApr 18, 2016

13033078 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/033,078 02/23/2011 Richard J. Walsh 125598 7590 04/18/2016 Concert Technology Corporation 5400 Trinity Road, Suite 303 Raleigh, NC 27607 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CT-OT0-0 l 9C/US 8155 EXAMINER FABER, DAVID ART UNIT PAPER NUMBER 2177 MAILDATE DELIVERY MODE 04/18/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD J. WALSH, MICHAEL W. HELPINGS TINE, and NETANT MISRA Appeal2014-006573 Application 13/033,078 Technology Center 2100 Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and CATHERINE SHIANG, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 1-22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. Appeal2014-006573 Application 13/033,078 fNVENTION The invention is directed to electronic readers providing a summary of narrative information at a selectable level of detail desired by a reader. (Spec. i-fi-12 and 5.) Claim 1 is illustrative and is reproduced below: 1. A method performed on a processor for presenting information about a novel, comprising: displaying a portion of the novel on a display; receiving, via user input, a selection of a first term at a first location in the novel, the first term identifying a first character or a place discussed in the novel; receiving, via user input, a selection of a second term at a second location in the novel, wherein the second term identifies a second character discussed in the novel; determining a current location within the novel, wherein the current location is subsequent to a beginning of the novel and prior to an end of the novel; determining a plurality of relationships between the first term and the second term, wherein the plurality of relationships comprises only those relationships which have been discussed in the novel prior to the current location; and displaying information describing the plurality of relationships on the display. REFERENCES Horowitz us 6,122,647 Sept. 19, 2000 Griencewic US 6,320,591 Bl Nov. 20, 2001 Kuchinsky US 7,228,302 B2 June 5, 2007 Seo US 2009/0063157 Al Mar. 5, 2009 Bullock US 2011/0261030 Al Oct. 27, 2011 2 Appeal2014-006573 Application 13/033,078 REJECTIONS AT ISSUE 1 Claims 1-21 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Kuchinsky, Griencewic, Horowitz, and Seo. (Final Act. 6-7.) Claim 22 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Kuchinsky, Griencewic, Horowitz, Seo, and Bullock. (Final Act. 14.) ISSUES Did the Examiner err by improperly combining the cited references under 35 U.S.C. Â§ 103? Did the Examiner err in finding that the combination of Kuchinsky, Griencewic, Horowitz, and Seo teaches or suggests "determin[ing] a current location within the novel" and "determin[ing] a plurality of relationships between the first term and the second term, wherein the plurality of relationships comprises only those relationships which have been discussed in the novel prior to the current location" as recited in claims 1, 9, and 17? ANALYSIS Combinability under 35 USCÂ§ 103(a) Appellants argue Kuchinsky teaches away from the claimed invention because "Kuchinsky would not want to stop the analysis of the data at a 1 The rejection of claims 3 and 11 under 35 U.S.C. Â§ 112, second paragraph was withdrawn in the Examiner's Answer page 3. The rejection of claim 21 under 35 U.S.C. Â§ 112, fourth paragraph was withdrawn in an Advisory Action dated September 13, 2013. 3 Appeal2014-006573 Application 13/033,078 point in the textual document that is prior to the end of the document." (App. Br. 11.) Teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "We will not read into a reference a teaching away from a process where no such language exists." DyStar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Nowhere do Appellants indicate where Kuchinsky teaches or suggests Appellants' assertion of not wanting to stop the analysis. (See also Ans. 7- 8.) Here, we find Kuchinsky does not criticize, discredit, or otherwise discourage the claimed invention. See Fulton, 391 F.3d at 1201. The evidence before us does not support Appellants' allegation of teaching away. Rejection of Claims 1-22 under 35 USCÂ§ 103 We select claim 1 as representative of the group of claims comprising claims 1-22 as Appellants have not argued any of the other claims in this group with particularity. Arguments not made are considered waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). We disagree with Appellants' conclusions. We adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer (Ans. 3-23) in response to Appellants' Appeal Brief (App. Br. 10-14). We concur with the conclusions reached by the Examiner. However, we highlight and address specific findings for emphasis as follows. 4 Appeal2014-006573 Application 13/033,078 Claim 1 recites "determining a plurality of relationships between the first term and the second term, wherein the plurality of relationships comprises only those relationships which have been discussed in the novel prior to the current location." Appellants argue Kuchinsky fails to teach "a current location within a novel" or determining a plurality of relationships that comprise "only those relationships which have been discussed in the novel prior to the current location." (App. Br. 11.) We broadly but reasonably construe the claim term "a current location within a novel" according to the definition provided by the claim language "wherein the current location is subsequent to a beginning of the novel and prior to an end of the novel." (Emphasis added). The Examiner finds Kuchinsky, at column 12 lines 35--42, teaches analyzing a text portion that was selected/entered for terms and their interactions with one another. (Ans. 10.) Specifically, the Examiner finds the end of the selected portion is "a current location" as recited by claim 1. (Id.) The Examiner finds, and we agree, that Kuchinsky does not analyze any other text portion besides the text entered for analysis. (See Id.) Thus, we agree with the Examiner that Kuchinsky teaches determining information comprising only information which have been discussed in the document prior to the end of the text portion that was selected for analysis. The differences between Kuchinsky and the above recited claim limitation of claim 1 are: (a) the determined information is not taught by Kuchinsky to be "relationships" between characters; and (b) the document is not taught by Kuchinsky to be "a novel." (See also App. Br. 11-12 ("The Patent Office admits that ... fail to teach [selecting terms from a novel I 5 Appeal2014-006573 Application 13/033,078 selected terms are characters.]" (citing Final Act. 8 and 10)).) However, we agree with the Examiner that Seo, at paragraph 37, teaches the analyzed information may be "determining a relationship between first and second characters of [an electronic book]." (Ans. 15; Final Act. 10.) Seo, at paragraph 48, teaches "the content may be ... an electronic book file." We find the claimed "novel" is at least suggested by Seo' s electronic book, because we conclude the particular informational content of the recited "novel" is printed matter (non-functional descriptive material) that is merely intended for human perception. 2 Further, we agree with the Examiner that Griencewic, at column 3 line 21, teaches novels for an electronic book. (Ans. 11.) Therefore, we find Kuchinsky, in view of at least Griencewic and Seo, teaches or suggests the argued limitations. Accordingly, for the above reasons, we are unpersuaded that the Examiner erred in rejecting claim 1under35 U.S.C. Â§ 103(a) as unpatentable over the combination of Kuchinsky, Griencewic, Horowitz, and Seo. Thus, we sustain the Examiner's rejection of claims 1-22. 2 See Manual of Patent Examining Procedure (MPEP) Â§ 2111.05 ("[W]here the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer- readable medium merely serves as a support for information or data, no functional relationship exists."). "The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute 'any new and useful art, machine, manufacture, or composition of matter,' or 'any new and useful improvements thereof ... . "In re Russell, 48 F.2d 668, 669 ( CCP A 1931 )(citations omitted). 6 Appeal2014-006573 Application 13/033,078 DECISION3 We affirm the Examiner's decision rejecting claims 1-22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 3 In the event of further prosecution, we direct the Examiner's attention to the question of \x1hether the claims are patent-eligible under 35 U.S.C. Â§ 101 in light of the preliminary examination guidance on patent eligible subject matter. See 2014 Interim Guidance on Patent Subject Matter Eligibility, US PTO (Dec. 16, 2014 ), http://www.uspto.gov/patents/law/exam/jan2 lforum_uspto.pdf. A question arises as to whether a person would also be capable of performing the acts of the claimed method or functions as mental steps, or with the aid of pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson [409 U.S. 63 (1972)]."). Our reviewing court further guides that "a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101." CyberSource, 654 F.3d at 1373. We leave further consideration of these Â§ 101 issues to the Examiner. Although the Board is authorized to reject claims under 37 C.F.R. Â§ 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP Â§ 1213.02. 7