PowerNotes LLC

Patent Trials and Appeals BoardAug 23, 2021

2020003977 (P.T.A.B. Aug. 23, 2021)

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. 14/215,843 03/17/2014 Wilson Tsu 545902-6 8784 24628 7590 08/23/2021 HUSCH BLACKWELL LLP HUSCH BLACKWELL SANDERS LLP WELSH & KATZ 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER NORRIS, BENJAMIN J ART UNIT PAPER NUMBER 2177 MAIL DATE DELIVERY MODE 08/23/2021 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 WILSON TSU and SRUJANI PAGIDIPATI _____________ Appeal 2020-003977 Application 14/215,843 Technology Center 2100 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and BETH Z. SHAW, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final rejection of claims 1–10 and 12–22, which constitute all the claims pending in this application. Claim 11 is canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this appeal is the “PowerNotes LLC.” See Br. 2. Appeal 2020-003977 Application 14/215,843 2 STATEMENT OF THE CASE 2 Introduction Embodiments of Appellant’s claimed subject matter relate generally to “computer-aided data summary systems and methods that assist users with analyzing data and, more particularly, to a method and system for obtaining, analyzing, labeling, organizing, combining, modifying, and/or summarizing data using single- and multi-action operations.” See Spec. ¶ 2. Illustrative Claim 1 1. A data summary system comprising: at least one user device including at least one user device processor and at least one user device non-transitory computer readable medium; at least one system server including at least one system processor and at least one system non-transitory computer readable medium; a communication link that operatively connects the at least one user device and the at least one system server; program instructions stored on at least one of the at least one system non-transitory computer readable medium and the at least one user device non-transitory computer readable medium; and [L] a unique identifier selection box displayed on the user device only after text has been selected, the unique identifier selection box comprising a plurality of unique identifiers, wherein the program instructions being executable by at least one of the at least one system 2 We herein refer to the Non-Final Office Action, mailed July 5, 2019 (“Non-Final Act.”); the Appeal Brief, filed October 1, 2019 (“Br.”); and the Examiner’s Answer, mailed March 4, 2020. No Reply Brief was filed. Appeal 2020-003977 Application 14/215,843 3 processor and the at least one user device processor that, when executed, cause the data summary system to perform steps of: receiving a dataset, the dataset including user-identified information, unique identifiers that have been selected from the plurality of unique identifiers of the unique identifier selection box and that are associated with the user-identified information, and a user identifier; storing the user-identified information and the selected unique identifiers; and automatically generating a summary including the user- identified information and a listing of each of the selected unique identifiers that are associated with the user- identified information, wherein each of the plurality of unique identifiers comprises a respective topic or category associated with legal research. Br. 18. Claims App. (disputed claim limitation bracketed as “L” and emphasized). Patent Prior Art Evidence Relied Upon by the Examiner Name Reference Date Richards et al. (“Richards”) US 2002/0145626 A1 Oct. 10, 2002 Shaw et al. (“Shaw”) US 2006/0026495 A1 Feb. 2, 2006 Chang et al. (“Chang”) US 2007/0266342 A1 Nov. 15, 2007 Singh et al. (“Singh”) US 8,655,404 B1 Feb. 18, 2014 Wallis et al. (“Wallis”) US 2014/0281936 A1 Sept. 18, 2014 Appeal 2020-003977 Application 14/215,843 4 Non-Patent Prior Art Evidence Relied Upon by the Examiner Name Reference Date PC World Internet Publication Oct. 7, 2008 Miller Miller, Sterling, “How to Select Text in Microsoft Word” (VIDEO EVIDENCE) https://www.youtube.com/watch?v=zNXZD 0cS0VM On or before 2011 (ten years ago) Microsoft Community Internet Publication May 19, 2011 Table of Rejections Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1–3, 5, 7, 8, 10, 12, 14, 16, 17, 21, 22 103 Chang, Miller, Wallis B 4, 13 103 Chang, Miller, Wallis, 3 Richards 3 We note that the Examiner has not included the Wallis reference in Rejection B of claims 4 and 13, but the Wallis reference is required because it was used to reject each of independent claims 1 and 10, from which claims 4 and 13 directly depend, respectively, and each dependent claim includes all the limitations of the claim(s) from which it depends. See 35 U.S.C. § 112(d). We have made appropriate correction to Rejection B above in the Table of Rejections. Similarly, the Examiner has erred by not including Singh in the rejection of claim 21, because claim 21 depends directly from independent claim 19 that was rejected under Rejection E over Chang, Appeal 2020-003977 Application 14/215,843 5 C 6, 15 103 Chang, Miller, Wallis, PC World D 9, 18 103 Chang, Miller, Wallis, Microsoft Community E 19 103 Chang, Miller, Wallis, Singh F 20 103 Chang, Miller, 4 Wallis, Singh, Shaw ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited or waived.5 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion, Miller, Wallis, and Singh. Thus, the Examiner should have rejected dependent claim 21 under Rejection E instead of Rejection A. See Non- Final Act. 3, 11. 4 We note the Examiner substitutes the reference name “Murray” instead of “Miller” in Rejection F, as set forth on page 15 of the Non-Final Action. We consider this as a typographical error and have made appropriate correction above in the Table of Rejections. 5 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (some internal citation omitted): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can Appeal 2020-003977 Application 14/215,843 6 we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A of Claim 1 Appellant contends: Miller is a video directed to different methods of selecting text in Microsoft Word (a word processing program), and that the narrator of the video does not directly address or describe the pop up menu in any way, despite it occasionally being displayed throughout the video. The appearance of the pop up menu in Miller’s video appears to be incidental to Miller’s demonstration of how text can be selected in Microsoft Word. Additionally, because the pop up menu is never directly described, Miller fails to explicitly show or suggest that the pop up menu is displayed “only after selection of text,” as recited in claim 1 (emphasis added). Miller is silent as to the factors required to display the pop up menu, and does not describe whether the pop up menu is displayed only after selection of text, or if other circumstances could predicate display of the pop up menu. See Br. 9; see also Claim 1. have different consequences for challenges raised on appeal, id. at 733–34, and for that reason, it is worth attending to which label is the right one in a particular case. Appeal 2020-003977 Application 14/215,843 7 The Examiner’s Response in the Answer The Examiner responds that “Appellant seems to be asserting that the pop up [(in Miller)] isn’t described enough.” Ans. 4. The Examiner disagrees with Appellant, and finds that Miller’s YouTube video “shows a user highlight a text and then the pop up appears after the highlighting allowing for manipulation of the selected text.” Id. The Examiner provides two screenshots of the video. See Non-Final Act. 7; see also Ans. 4–5. Issue: Under 35 U.S.C. § 103, did the Examiner err by finding that the combination of Chang, Miller, and Wallis teaches or suggests the disputed claim 1 temporal limitation L: “a unique identifier selection box displayed on the user device only after text has been selected, the unique identifier selection box comprising a plurality of unique identifiers?” (emphasis added). Availability of Miller YouTube Video as Prior Art At the outset, we consider the threshold issue of whether the Miller YouTube video is available as prior art, because the video is neither a patent nor an application for patent published or deemed published under § 122(b), nor is the YouTube video a description in a printed publication.6 We note Appellant does not dispute the date of publication provided by the Examiner for the Miller YouTube Video, as being “Aug 25, 2010.” Non-Final Act. 3. In reviewing the record, we find the Miller YouTube video relied upon by the Examiner as evidence was “otherwise available to the public 6 See AIA 35 U.S.C. §§ 102(a)(1) and 102(a)(2). Appeal 2020-003977 Application 14/215,843 8 before the effective filing date of the claimed invention” (i.e., before March 17, 2014) under AIA 35 U.S.C. § 102(a)(1), as further clarified by the following USPTO training materials, publically available at: https://www.uspto.gov/sites/default/files/aia_implementation/fitf_comprehe nsive_training_prior_art_under_aia.pdf See Slide 15: Accordingly, we find the Miller YouTube video may be relied upon by the Examiner as prior art evidence under 35 U.S.C. § 102(a)(1). We have viewed the Miller video on YouTube. Consistent with its title, the video demonstrates various ways of selecting text (e.g., by character, word, line, or paragraph) in Microsoft Word. At various points in the video, a font type menu (similar to the one shown below) appears and disappears above the selected text: Appeal 2020-003977 Application 14/215,843 9 As for the Examiner’s mapping7 of the disputed claim 1 limitation L to the corresponding features found in the cited references, the Examiner reads the claimed “unique identifier selection box” of claim 1 on items 402 and 406 in Chang’s Figures 4A and 4B. See Non-Final Act. 5 (first full paragraph). The Examiner reads the “plurality of unique identifiers” recited in claim 1 on Chang’s item 414 in Figure 4B (i.e., depicting “Kohler Faucets” and “Kitchen Sinks”). See Non-Final Act. 5. The Examiner finds that Miller’s YouTube video teaches (at 9 seconds) “a user selecting text and a pop menu appearing only after the user made a selection.” Non-Final Act. 6, last paragraph (emphasis added). After viewing the Miller video, we find a preponderance of the evidence supports Appellant’s contentions regarding the disputed temporal limitation L of claim 1, e.g., “because the pop up menu is never directly described, Miller fails to explicitly show or suggest that the pop up menu is displayed ‘only after selection of text,’ as recited in claim 1.” Br. 9 (emphasis added). After viewing the video, we agree with Appellant’s contentions that “Miller is silent as to the factors required to display the pop 7 We note the mapping rule specifically requires: “When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. §1.104(c)(2) (emphasis added). See also the notice requirement under 35 U.S.C. § 132(a) (“Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.”). Appeal 2020-003977 Application 14/215,843 10 up menu, and does not describe whether the pop up menu is displayed only after selection of text, or if other circumstances could predicate display of the pop up menu.” Id. (emphasis added). Further supporting the Appellant’s contentions (id.), we observe that that there are alternative ways of displaying the aforementioned font type menu: for example, the font type menu may be accessed directly from the home menu in Microsoft WORD, or by merely right clicking on a blank area of a page. We also note that the function of the aforementioned Microsoft font type menu generally pertains to selecting particular font types and font sizes and/or formatting text (e.g., selecting bold and/or italic fonts). Thus, the identifiers in Miller’s font type menu have no association with any “user- identified information,” as recited in Appellant’s claim 1. Therefore, on this record, we find a preponderance of the evidence supports Appellant’s contentions that the Examiner has not shown that Miller teaches or suggests the disputed “only after” temporal limitation of claim 1. Nor has the Examiner fully developed the record to show that Chang or Wallis overcome the aforementioned deficiency found in Miller regarding the temporal claim 1 limitation: “a unique identifier selection box displayed on the user device only after text has been selected, the unique identifier selection box comprising a plurality of unique identifiers.” (emphasis added). Accordingly, for essentially the same reasons argued by Appellant in the Appeal Brief, we are constrained on this record to reverse the Examiner’s Rejection A of independent claim 1. For the same reasons, we also reverse the Examiner’s Rejection A of claims 2, 3, 5, 7, 8, and 22, which each depend directly from claim 1. Appeal 2020-003977 Application 14/215,843 11 Rejection A of independent Claim 10 and Rejection E of independent Claim 19 We note that remaining independent claims 10 and 19 are silent regarding the argued “only after text has been selected” language of claim 1, and thus we conclude claims 10 and 19 are broader in scope with respect the disputed temporal limitation. (emphasis added). Independent claim 10 recites in pertinent part: “the at least one user device displaying a unique identifier selection box comprising a plurality of unique identifiers upon a user selecting text within a source document;” Independent claim 19 recites in pertinent part: “displaying a first unique identifier selection box in response to a user selecting first user- identified information by performing a mouse click to select highlighted text, the unique identifier selection box comprising a plurality of unique identifiers;”8 (emphasis added). To the extent that Appellant’s arguments regarding the “only after” temporal language of claim 1 are not commensurate in scope with the broader temporal language recited in independent claims 10 and 19, we 8 We find sufficient support for the broader temporal limitations recited in independent claims 10 and 19 in paragraph 34 of the Specification: “In this example, once the user-identified information 302 is selected by the user a unique identifier selection box 304 is displayed by the user device 102.” (emphasis added). However, in the event of further prosecution, including any review prior to allowance, we leave it to the Examiner to review the originally-filed Specification, original drawings, and original claims for written description support under 35 U.S.C. § 112(a) for the claim 1 “only after” temporal limitation that was added by amendment during prosecution. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. Appeal 2020-003977 Application 14/215,843 12 nevertheless are persuaded by Appellant’s additional contentions that “no logical reasoning has been provided as to why it would have been obvious to a person of ordinary skill in the art to combine Chang and Miller as proposed by the Office at the time of the invention [regarding] the cited references.” Br. 10. In the Non-Final Action, the Examiner found that an artisan would have been motivated to modify the teachings of Chang with the font type menu of Miller “for a predictable result, of allowing for a user [to] save space on the screen so that the surf along menu is only displayed after a selection of text.” Non-Final Act. 8 (emphasis added). However, based upon our review of the record, we find Appellant’s specific contentions are supported by a preponderance of the evidence: In the present case, if Chang's surf-along window 402 were somehow modified to be displayed only after selection of text, as allegedly taught by Miller, this would frustrate its intended purpose as a “surf-along” window (i.e., a window that is displayed as a user “surfs”, i.e., navigates, through web pages). Further, Chang describes the surf-along window 402 as being “shown persistently” in the browser on a user's computer system. Chang, ¶¶ [0018], [0100] and [0101]. If the surf-along window 402 were only shown after selection of text, it would no longer be “shown persistently” in the browser, as taught by Chang, and would therefore frustrate the purpose of Chang's surfalong window 402. Appeal Br. 11 (emphasis added). “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), Appeal 2020-003977 Application 14/215,843 13 quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appellant additionally urges that the Examiner has relied upon impermissible hindsight in formulating the rejections. App. Br. 10. For the reasons discussed supra, we find a preponderance of the evidence supports Appellant’s assertion. Cf. “‘It is wrong to use the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve [a desired result].” Monarch Knitting Mach. Corp. v. Sulzer Marat Gmbh, 139 F.3d 877, 882 (Fed. Cir. 1998) (quoting Orthopedic Equip. co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Regarding independent claims 1, 10, and 19, the Examiner has not shown how the aforementioned deficiencies regarding the base combination of Chang and Miller are overcome, as argued by Appellant regarding the improper combination of the Chang and Miller base references. See Br. 11. For essentially the same reasons argued by Appellant in the Appeal Brief (9–11), we find the Examiner has not provided sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Accordingly, we are constrained on this record to also reverse the Examiner’s Rejection A of independent claim 10 (over Chang, Miller, and Wallis), and Rejection E of independent claim 19, over the cited combination of Chang, Miller, Wallis and Singh. Appeal 2020-003977 Application 14/215,843 14 Rejections B, C, D and F under § 103 of the Remaining Dependent Claims In light of our reversal of Rejection A of independent claims 1 and 10, and our reversal of Rejection E of independent claim 19, for essentially the same reasons argued by Appellant, as discussed supra, we also reverse Rejections B, C, D and F of all remaining dependent claims. On this record, the Examiner has not shown how the additionally cited secondary references overcome the aforementioned deficiencies of the base combination of Chang and Miller, as discussed above regarding Rejection A of independent claims 1 and 10, and Rejection E of independent claim 19. CONCLUSION The Examiner erred in rejecting claims 1–10 and 12–22 under 35 U.S.C. § 103 over the collective teachings and suggestions of the cited combinations of references. Appeal 2020-003977 Application 14/215,843 15 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 7, 8, 10, 12, 14, 16, 17, 21, 22 103 Chang, Miller, Wallis 1–3, 5, 7, 8, 10, 12, 14, 16, 17, 21, 22 4, 13 103 Chang, Miller, Wallis, Richards 4, 13 6, 15 103 Chang, Miller, Wallis, PC World 6, 15 9, 18 103 Chang, Miller, Wallis, Microsoft Community 9, 18 19 103 Chang, Miller, Wallis, Singh 19 20 103 Chang, Miller, Wallis, Singh, Shaw 20 Overall Outcome 1–10, 12–22 REVERSED