HARPUR, LIAM et al.

Patent Trials and Appeals Board

Aug 18, 2020

2019003450 (P.T.A.B. Aug. 18, 2020)

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.
13/270,422 10/11/2011 LIAM HARPUR GB920100026US1_8150-0120 4232
52021 7590 08/18/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
LIN, SHERMAN L
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
08/18/2020 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 LIAM HARPUR, MARK KELLY, and JOHN RICE1
________________

Appeal 2019-003450
Application 13/270,422
Technology Center 2400
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
MICHAEL J. ENGLE, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 25–42, which constitute all claims pending in this
application. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
The Board conducts a limited de novo review of the appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential).
We AFFIRM IN PART.

1 Appellant identifies IBM Corporation as the real party in interest. Appeal
Brief filed December 11, 2018 (“Appeal Br.”), 1.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A method of handling a message comprises receiving a message
comprising content such as keywords, receiving a selection of
one or more recipients for the message, identifying that at least
one recipient is unfamiliar with a portion of the message, and
notifying the composer of the message of the portion.
Abstract.
Independent claim 25 illustrates the appealed claims:
25. A computer-implemented method, comprising:
receiving an electronic message, sent by a sending client
device in an instant messaging session, to a plurality of
recipients;
identifying, for each of the plurality of recipients, whether
the recipient is unfamiliar with a portion of the electronic
message;
calculating a total number of the plurality of recipients to
which the electronic message is directed;
calculating, for the portion of the electronic message, a
total number of the plurality of recipients who were determined
as being unfamiliar with the portion of the electronic message;
and
forwarding, to the sending client device, a notification
indicative of a total number of the plurality of recipients to which
the electronic message is directed and the total number of the
plurality of recipients who were determined as being unfamiliar
with the portion of the electronic message, wherein,
the notification causes an instant messaging client with the
client device to display a percentage,
the percentage is determined by dividing the total number
of the plurality of recipients who were determined as being
unfamiliar with the portion of the electronic message by the total
number of the plurality of recipients to which the electronic
message is directed, and
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the notification does not indicate, to the client device, an
identity of any of the plurality of recipients who were determined
as being unfamiliar with the portion of the electronic message.
Appeal Br. 21.

STATEMENT OF THE REJECTIONS
Claims 25–42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cheung (US 2006/0167992 A1; published July 27, 2006)
and Fiatal (US 2008/0298386 A1; published Dec. 4, 2008). Final Action
mailed July 12, 2018 (“Final Act.”), 4–10.

THE EXAMINER’S DETERMINATIONS
The Examiner finds that Cheung discloses receiving an electronic
message that is sent by a sending client device in an instant message session
to a plurality of recipients. Final Act. 4 (citing Cheung ¶¶ 12, 31–33;
Fig. 4). The Examiner finds that Cheung further teaches identifying, for
each of the plurality of recipients, whether the recipient is unfamiliar with a
portion of the electronic message. Id. at 5 (citing Cheung ¶¶ 31–33;
Fig. 3B).
The Examiner finds that Fiatal discloses establishing consensus on a
given issue using feedback, such as by a poll, in order to aid an origin entity
about the audience. Final Act. 5 (citing Fiatal ¶¶ 5–6). Specifically, the
Examiner finds that Fiatal teaches the steps of (1) calculating a total number
of recipients to which the electronic message is directed; (2) calculating a
total number of the recipients who were unfamiliar with a portion of the
electronic message; and (3) forwarding this information to the sending client
device. Id. at 5–6 (citing Fiatal ¶ 20). The Examiner determines that (1) the
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notification causes an instant message client with the client device to display
the percentage of recipients who were unfamiliar with the content; and
(2) the notification does so without indicating to the client device the
identities of those recipients who are unfamiliar. Id. at 6 (citing Fiatal ¶ 20).
The Examiner also determines that motivation existed to combine the
teachings of Cheung and Fiatal. Id.

CONTENTIONS AND ANALYSIS
Appellant presents multiple arguments in relation to independent
claim 25. Appeal Br. 6–16. We address them seriatim.
Appellant argues,
Fiatal does not teach determining a number of a plurality of
recipients that were determined as being unfamiliar with a
portion of an electronic message. Rather, and with reference to
the Examiner’s cited paragraph [0020], Fiatal teaches
performing a polling operation in which one or more polling
questions are submitted to a plurality of recipients. Fiatal then
determines a “percentage of correct responses for each poll
question” and “percentages of responses that are correct or
incorrect.”
Appeal Br. 10.
Appellant argues that this difference leads to two problems:
First, what is “correct or incorrect” is the answer to the
polling question - not the question itself. The polling question
itself is the message that was sent to the plurality of recipients.
Accordingly, Fiatal does not teach calculating a percentage of
recipients that were determined to be unfamiliar with the
question (i.e., the alleged electronic message). Rather, Fiatal
teaches calculating a percentage of recipients that submitted the
incorrect answer (i.e., a reply message separate from the polling
question).
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A second problem with the Examiner’s analysis is that
Fiatal does not teach determining a percentage for a portion of
the message. Each polling question[] is a separate and distinct
message. According, even if the polling question itself of Fiatal
could be considered comparable to the claimed message, what a
recipient is unfamiliar with is the entire polling question - not a
portion thereof. Along the same lines, the teachings of Fiatal do
not recognize a difference between a portion of a message and
the entire message, which is an important part of the claimed
invention. Consequently, Fiatal fails to teach or suggest the
limitations for which Fiatal alone is being relied upon to teach.
Appeal Br. 10–11.
These arguments are unpersuasive because Appellant essentially is
arguing that Fiatal’s invention cannot be bodily incorporated into the
invention of Cheung. Appeal Br. 10–11. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see
also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). Rather, “if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Here, we understand the Examiner’s position to be, and we agree, that
Cheung discloses an instant-messaging protocol between a sender and one or
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more recipients that addresses the problem of recipients not understanding a
specific term. Cheung ¶¶ 12, 31, cited in Final Act. 4–5. Furthermore,
Cheung addresses this problem by (1) allowing recipients to select non-
understood terms for translation, and (2) sending feedback to the sender that
the recipient is having difficulty understanding a term and is requesting
annotation. Id. at 33, cited in Final Act. 5.
We further understand the Examiner not to be relying on Fiatal for its
specific polling protocol, but more generally for its teaching that feedback
from a plurality of recipients of text communications can be tallied and the
results provided to the sender of the text communication, whereby the sender
can be informed of the percentage of people who are having difficulty
understanding a concept. Fiatal ¶¶ 5, 6, 20, cited in Final Act. 5–6.
Appellant further argues, “the Examiner has not alleged that Cheung
teaches any portion of the limitations at issue. . . . [T]he Examiner admits
that Cheung fails to teach these limitations. Instead, the Examiner relies
upon Fiatal alone.” Appeal Br. 11. We understand Appellant’s reference to
“the limitations at issue” to mean the claim requirements of “calculating a
total number of the plurality of recipients to which the electronic message is
directed” and calculating, for the portion of the electronic message, a total
number of the plurality of recipients who were determined as being
unfamiliar with the portion of the electronic message.” Appeal Br. 9–10.
Appellant then argues,
the Examiner has not presented any explanation, with regard to
the limitations at issue, as to why the combination of Cheung and
Fiatal would teach anything different than what Fiatal teaches
alone with regard to the limitations at issue. Therefore, the
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Examiner has not established that the combination of Cheung
and Fiatal teaches the limitations at issue.
Appeal Br. 11.
This argument is unpersuasive for the reasons set forth above. The
Examiner has not relied upon Fiatal alone. Furthermore, the Examiner has
established that Fiatal teaches the limitations for which Fiatal is relied
upon—determining a number of a plurality of recipients that were
determined as being unfamiliar with content of a message. To the extent
Appellant disputes whether “unfamiliar” or “portion” are broad enough to
include Fiatal’s “incorrect” answers to the “entire” question, we note that the
Examiner relies on Cheung, not Fiatal, for teaching “identifying . . . whether
the recipient is unfamiliar with a portion.” Ans. 4–5.
Appellant argues that the Examiner’s Response to Arguments in the
Final Action does not sufficiently respond to arguments Appellant made in a
prior Request for Reconsideration. Appeal Br. 11. We do not address this
argument as we do not address on appeal, arguments contained in a prior
Request for Reconsideration. We address arguments that Appellant presents
in the Appeal Brief. “Except as provided for in §§ 41.41, 41.47, and 41.52,
any arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal.” 37 C.F.R.
§ 41.37(c)(1)(iv); see also 37 C.F.R. § 41.41 (discussing the requirements of
the Reply Brief); § 41.47 (discussing the requirements of oral hearings);
§ 41.52 (discussing the requirements of Rehearings).
Appellant argues that the Examiner’s motivation to combine the
references, as stated in a prior Office Action, are improper. We do not
address arguments concerning findings or determinations of prior Office
Actions, as we are reviewing the findings and determinations of the Office
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Action from which the present Appeal is taken. 37 C.F.R. § 41.31.
Appellant further argues that the Examiner’s Final Action from which
the present appeal is taken, sets forth the following motivation: “it would
have been obvious to make the combination ‘in order to aid in establishing
consensus on a given issue using feedback, for example in a poll, to aid in a
decision or inform an origin . . . entity about the entity’s audience.’” Appeal
Br. 14 (citing Final Act. 6). Appellant argues, “the Examiner’s analysis begs
the question as why ‘establishing consensus on a given issue using
feedback,’ is relevant to the teaching of Cheung.” Id. Appellant also argues
that “Cheung does not involve gathering information about the entity’s
audience.” Id. at 15.
We disagree with this last assertion. As explained above, Cheung
specifically discloses that the messing protocol entails gathering information
about the message sender’s audience and providing this information to the
sender:
When the recipient selects text for translation as just
described, feedback may be provided to the sender to notify the
person or group of people that the recipient has difficulty
understanding and requested annotation. This allows the sender
to adjust the writing style to cater to the recipient better. The
annotation may also provide for correction of spellings or other
typographical errors and the addition of punctuation or other
letters or figures within the text.
Cheung ¶ 33, cited in Final Act. 4–5.
Furthermore, we understand the Examiner’s stated motivation of
“establishing consensus on a given issue using feedback” to mean that
providing the speaker with feedback that includes objective statistics on the
number of recipients who are having difficulty understanding portions of the
message helps the speaker better understand how widespread the
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communication gap is and how to best address this communication gap. We
further understand the Examiner’s position to be, then, and we agree, that
providing Cheung’s sender with feedback that additionally includes
objective statistical data constitutes combining prior art elements according
to known methods to yield predictable results. MPEP § 2143 I (A)
(describing an exemplary rationale that may support a conclusion of
obviousness). Providing this functionality also constitutes the use of a
known technique to improve a similar method in the same way (MPEP
§ 2143 I C) or constitutes applying a known technique to a known method
ready for improvement to yield predictable results (MPEP § 2143 I D).
For the foregoing reasons, Appellant does not persuade us of error in
the Examiner’s obviousness rejection of independent claim 25. We,
therefore, affirm the Examiner’s rejection of that claim and of claims 26, 27,
and 30–42, which Appellant does not argue separately. Appeal Br. 9–16;
see 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same
ground of rejection are argued as a group or subgroup by appellant, the
Board may select a single claim from the group or subgroup and may decide
the appeal as to the ground of rejection with respect to the group or subgroup
on the basis of the selected claim alone.”).

CLAIM 28
The Claimed Subject Matter
Appellant presents separate arguments for dependent claim 28.
Claim 28 depends from claim 26, which in turn, depends from claim 25.
Claims 26 and 28 read as follows:
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26. The method of claim 25, wherein
a particular recipient from the plurality of recipients is
identified as being unfamiliar with the portion of the electronic
message based upon an agent within a computer device being
accessed by the particular recipient.
28. The method of claim 26, wherein the agent is configured
to:
identify a keyword being within the portion of the
electronic message, and
identify the keyword being used in a communication
application separate from the communication application in
which the electronic message is received by the computer device
being accessed by the particular recipient.
Findings and Contentions
The Examiner finds that Cheung teaches the additional language of
claims 26 and 28. More specifically, the Examiner interprets Cheung as
teaching the last limitation of claim 28: “[Cheung uses] subculture terms
identified to determine sender and recipient culture as taught/suggested by
analyzing sender and recipient subculture terms; potentially determined on a
server in Cheung.” Appeal Br. 7 (citing Cheung ¶¶ 21, 32).
Appellant argues,
The claims contemplate the keyword being used (“being
used” is present tense, which means a contemporaneous action)
in “a communication application separate from the
communication application in which the electronic message is
received.” However, neither the Examiner’s analysis nor
paragraphs [0021] and [0032] of Cheung refers to a separate
communication application in which the keyword is being used.
Also not referred to by Cheung is that an agent identifies this
keyword being used by the separate communication application.
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Thus, Cheung fails to teach the limitations in claim 28 for which
Cheung alone is being relied upon to teach.
Appeal Br. 17.
The Examiner responds,
the cited prior art suggests the claimed limitations because
Cheung appears to disclose program modules, servers,
sender/receiver-side systems for performing a portion or all of
the automated translation of unfamiliar terms and therefore at
least a programming module separate from the communications
application used to receive a message. . . .
Applicant discloses an agent separate from an e-mail client
intended for use in scanning content in the background. . . .
Cheung discloses server, sender/recipient system may perform
all or a portion of the functionality, automatically identify
subculture terms based on learned differences between sender
and recipient to automatically provide translation . . . . Cheung
acknowledges that any combination of program modules and
entities can perform some or all of the functions in Cheung.
Therefore, the prior art suggests that computer implemented
functions can be practiced as any number of separate program
modules. Furthermore, the plugins and program modules can
each perform the role of an agent performing the functionality in
the background.
Examiner’s Answer mailed Mar. 27, 2019 (“Ans.”), 12 (emphasis added)
(citing Cheung ¶¶ 32, 34, 42).
The Examiner finds that there is no antecedent basis in the
specification for “separate communications application.” Ans. 13. As the
Examiner makes this finding as part of the Examiner’s support for the
obviousness rejection, and not as part of any written-description rejection,
we understand the Examiner to be noting that the Appellant has not acted as
a lexicographer or disavowed claim scope, and thus supporting the rejection
as using the broadest reasonable interpretation of the term. See id.; Phillips
v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005); MPEP 2111.01 IV.
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Analysis
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262
(CCPA 1974). During examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004); In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969).
We, therefore, review Appellant’s Specification to determine the
meaning of the following language of claim 28: “identify the keyword being
used in a communication application separate from the communication
application in which the electronic message is received by the computer
device being accessed by the particular recipient.” That is, we first consider
what constitutes a separate communication application within the meaning
of claim 28.
Appellant’s Specification indicates that the current invention is
directed to a messaging application that involves either instant messaging or
emailing. See, e.g., Spec. ¶ 3 (discussing the functionality of instant
messaging application); id. ¶ 6 (discussing emails messages); id. ¶ 13
(discussing multiple-person conversations held by either email or instant
messaging); id. ¶ 14 (discussing notifications associated with
“mail/message”). As such, we understand the claim term “electronic
message” to be generic and include either an instant-messaging or email
message.
Appellant explains the following point about the invention in the
BRIEF SUMMARY section of the Specification:
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Advantageously, the step of identifying that at least one
recipient is unfamiliar with a portion of the message comprises
identifying that the recipient has not previously received the
portion. For example, the step of identifying that the recipient
has not previously received the portion comprises accessing a
record of keywords and/or phrases for the recipient. The
information passed to the composer of the message does not have
to be generated in response to an explicit action by a recipient of
the message. For example, there may be in existence electronic
resources that can be checked to see if a recipient is familiar with
a keyword or phrase. Such a resource may take the form of a
record of keywords and phrases that are commonly found in
messages received by the recipient, which is generated in the
background as a user interface[] with their email client. The
absence of a keyword contained in a message from such a record
may be taken to indicate that the intended recipient is unfamiliar
with the keyword. Such a record may be accessed before the
message has even been sent, or may be accessed locally once the
message has been received by the recipient.
Spec. ¶ 16 (emphasis added).
Appellant re-explains this functionality in the DETAILED
DESCRIPTION section of the Specification:
Alternatively [to realizing that the recipient is unfamiliar
with a portion of a message by identifying explicit actions of a
recipient], the step S3 of identifying that at least one recipient is
unfamiliar with a portion of the message can comprise
identifying that the recipient has not previously received the
portion, for example by accessing a record of keywords and/or
phrases for the recipient. As discussed above, with respect to
Figure 4, for example, an agent on the recipient’s computer could
make a check against a record to see whether any of the terms
used in the message are unknown to the recipient and feed this
information back to the creator of the message. This could take
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place in the background without the knowledge of the recipient
of the message.
Spec. ¶ 37; see also id. ¶ 36 (discussing the alternative method in which the
recipient expressly indicates unfamiliarity with a term).
Based on this disclosure, we find that this claim language means what
it says—keywords being used are identified from a separate communication
application, not merely earlier messages from the same communication
application. Furthermore, independent claim 25, from which claim 28
depends, recites, “receiving an electronic message, sent by a sending client
device in an instant messaging session, to a plurality or recipients.” Appeal
Br. 21 (emphasis added). As such, the separate communication application
recited in claim 28 cannot be the same instant-messaging application that
carries out the method of claim 25. Consistent with the express language of
the claim, the separate communication application must be some other
messaging application, such as an email application that contains prior email
records.
Turning to the rejection, the most relevant portion of Cheung that the
Examiner cites reads as follows:
Another aspect of the invention relates to automatic
learning by the system. In this regard, the system may monitor
the dialog in the instant messaging session. Using active
learning techniques known to those of skill in the art, the system
may identify differences in the writing or speaking patterns of
the sender and the recipient. The system may be able to identify
the sender is a teenager who is using subculture jargon in the
dialog. This may be accomplished for example by the use of
subculture terms such as “brb” and “lol”. This may also be
accomplished by the use of certain emoticons in the dialog.
Similarly, the system may identify that the recipient does not use
such terms, or uses different subculture terms, wherein the
system can learn or infer differences between the sender and
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recipient. If the system is set to utilize an automatic learning
mode, the system then could automatically provide a translation
and or adaptation to the text exchanged between the sender and
the recipient. It is contemplated, that a feedback option is
available wherein the sender or recipient may confirm that
translation and annotation is desirable.
Cheung ¶ 34 (emphasis added), cited in Ans. 13.
Appellant’s arguments are persuasive, then, because the cited portions
of Cheung merely disclose that “the system may monitor the dialog in the
instant messaging session” and that the system may employ program
modules. Cheung ¶¶ 32, 34. The cited passages of Cheung do not teach
identifying keywords that are being used specifically in separate
communication applications. Cheung appears to be silent as to what sources
or methods that system uses to learn or infer language differences or whether
information from separate applications may be gathered and analyzed. As
such, the Examiner has not established a prima facie case of obviousness in
relation to claim 28.

CLAIM 29
The Claimed Subject Matter
Appellant also presents separate arguments for dependent claim 29.
Claim 29 also depends from claim 26. Claim 29 read as follows, with
formatting modified:
29. The method of claim 26, wherein the agent is configured to:
identify a keyword being within the portion of the electronic
message, and
detect information regarding the keyword is being gathered
by the computer device being accessed by the particular recipient.
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Determinations and Contentions
The Examiner interprets Cheung as teaching this claim language:
“[Cheung teaches] gathering information on a keyword as taught/suggested
by defining a keyword by gathering information from internet.” Final Act. 8
(citing Cheung ¶ 29). The Examiner further reasons,
Cheung discloses that the recipient can select the text[,] which
may request a link to web data based on the selected text. . . .
Based on the selection of the text for translation, feedback is
provided to the sender. Clearly, Cheung has determined that the
user and/or computing device is attempting to gather more
information on the selected terms because the feedback is
responsive to an explicit user action regarding the unfamiliar
text.
Ans. 14 (citing Cheung ¶ 32).
Appellant argues,
While the Examiner’s cited passage refers to “use of
standard HTML links such as a button for more
information 326,” which could be considered as a mechanism for
gathering information, the claims requires that the agent detects
both the keyword and the gathering of information regarding the
keyword. The fact that information is gathered does not
necessarily (i.e., inherently) require that an agent detects this
keyword and the gathering. Thus, Cheung fails to teach the
limitations in claim 29 for which Cheung alone is being relied
upon to teach.
Appeal Br. 17–18.
Analysis
The relied upon passage of Cheung reads as follows:
Also shown in window 302 in FIG. 3B, is a description of
the medicine from which is shown Ultram and all hydrochloride
330. Furthermore, the system in this example has accessed the
Internet, and queried the Internet to produce information
presented in the form of data from the webMD.com Website 324.
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This information may be tailored by the data base and presented
to the recipient and such a manner is to assist in understanding
the jargon or abbreviation typed in by the doctor. The use of
standard HTML links such as a button for more information 326
may also be employed. Therefore, the recipient may engage in a
multimedia interactive experience as part of the dialog.
. . . .
The recipient may also select how the translations and or
annotation occurs. For example, the recipient may be an adult
and in the course of an instant messaging session may see
subculture abbreviations that the recipient does not understand.
There may be an option presented wherein the recipient can
request a translation and annotation [that] instructs the system to
make a translation of those subculture terms. This may involve
the recipient identifying what terms are unfamiliar wherein the
system automatically identifies the difference between the sender
and the recipient. In this regard if the recipient identifies the term
“lol” as being unfamiliar, the system may be able to infer that the
sender is a teenager and a recipient is an adult and make
translations accordingly. The request by the recipient (or the
sender) may be requested explicitly and interactively regarding
what is to be annotated. For example, the recipient can select the
text that requires annotation and press a button or click an icon
on the user interface to achieve the annotation or translation.
The recipient may also request a link to web data based on the
selected text.
Cheung ¶¶ 29, 32 (emphasis added), cited in Final Act. 8; Ans. 14.
These cited passages of Cheung do not merely teach that the recipient
may perform an internet search for an unknown term. Rather, these
passages further teach that the recipient clicks on buttons, icons, or
hyperlinks that are provided by the system, and the system performs an
internet search for the recipient. Cheung ¶¶ 29, 32. Furthermore, the system
then provides the information to the system, optionally doing so after
tailoring the information with the aid of information stored in the system’s
database. Id. ¶ 29.
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Accordingly, Appellant has not established error in the Examiner’s
obviousness rejection of dependent claim 29.

CONCLUSIONS
We affirm the obviousness rejection of claims 25–27, 30–42.
We affirm the separately argued obviousness rejection of dependent
claim 29.
We reverse the separately argued obviousness rejection of dependent
claim 28.2

2 We decline to exercise our discretionary authority under 37 C.F.R.
§ 41.50(b) to issue a new ground of rejection under 35 U.S.C. § 101 on the
basis of the claims being directed to an exception to patent-eligible
subjection matter (an abstract idea) without reciting significantly more. Our
decision declining to exercise our discretionary authority should not be
viewed, though, as an implicit determination that the claims integrate the
recited abstract ideas into a practical application within the meaning of the
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance. 84 Fed.
Reg. 50 (Jan. 7, 2019), updated by USPTO, October 2019 Update: Subject
Matter Eligibility (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf). Upon any further prosecution on the
merits, the Examiner may wish to consider whether the claims, particularly
including claims 25 and 28, recite and merely are directed to various abstract
ideas such as (1) certain methods of organizing human activity including
interactions between people that entail teaching and (2) mathematical
concepts that entail mathematical calculations. See, e.g., Elec. Power Grp.
v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (holding that
abstract ideas include the concepts of collecting information, analyzing the
information, and displaying the results). The Examiner also may wish to
consider whether the additional elements beyond the abstract idea merely
constitute insignificant extra-solution activity such as gathering and
transmitting data using well-understood, routine, and conventional computer
components.
Appeal 2019-003450
Application 13/270,422

19
DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRM IN PART

Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25–42 103 Cheung, Fiatal 25–27,
29–42
28