Tamabo Inc.

Patent Trials and Appeals BoardApr 1, 2021

2021001194 (P.T.A.B. Apr. 1, 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. 15/586,574 05/04/2017 Armin Moehrle TAM01RI 5095 107299 7590 04/01/2021 Alan R. Loudermilk 511 N. Washington Ave Marshall, TX 75670 EXAMINER DAWSON, GLENN K ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 04/01/2021 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 ARMIN MOEHRLE Appeal 2021-0011941 Application 15/586,574 Patent US 6,599,130 B2 Technology Center 3900 ____________ Before MICHELLE R. OSINSKI, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant2 appeals the Examiner’s rejection of claims 19–25, 81, 83, 86, and 87 under 35 U.S.C. § 102. We REVERSE and ENTER a new ground of rejection under 35 U.S.C. § 112.3 1 This application seeks reissue of US 6,599,130 B2. 2 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the inventor or all of the joint inventors”). The real party in interest is identified as “Tamabo, Inc.” (Appeal Br. 1.) 3 We have jurisdiction/authority under 35 U.S.C. §§ 6(b) and 134(a), and 37 C.F.R. §41.50(b). Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 2 THE APPELLANT’S INVENTION The Appellant’s invention relates to a “teaching” method in which “images or portions of images may be selected, and labeled, and concurrent image-specific commentary applied to the visual image to create a teaching session” for “later study.” (Spec. c1:7–9.) INDEPENDENT CLAIMS ON APPEAL4 19. A method of producing a teaching session with in- motion video comprising: a. displaying frames or inserted frames of full motion image data; b. selecting and recording subframe portions of the image data; c. appending comments to the selected subframe portions of the image data; steps “a”, “b”, and “c” making a session; d. recording the session; and e. indexing the session. 25. A diagnostic and teaching aid method including the steps of: a. displaying a sequence of images; b. selecting a portion of one image of the sequence of images via gestures of a diagnostician; c. recording a commentary of the diagnostician concerning the image portion selection; d. linking a recorded commentary concerning an image portion selection to an image portion selection; e. recording a sequence of a plurality of image portion selections to create a teaching session; f. indexing at least one of the commentary and image portion selections so as to make the teaching session retrievable through an index; and 4 The claims are reproduced without brackets and/or underlining. Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 3 g. playing back the sequence of images while displaying the plurality of image portion selections and commentary concerning the image portion selections, the play back including the sequence of image portion selections. 86. A diagnostic and teaching aid method including the steps of: a. displaying a sequence of images: b. selecting a portion of one image of the sequence of images via gestures of a diagnostician; c. recording a commentary of the diagnostician concerning the image portion selection, wherein in association with the selecting of the image portion selection the diagnostician is prompted to record concurrent indexable commentary via a window being opened for recording of the concurrent indexable commentary; d. linking a recorded concurrent indexable commentary concerning an image portion selection to an image portion selection; e. recording a sequence of a plurality of image portion selections to create a teaching session; f. indexing at least one of the concurrent indexable commentary and image portion selections so as to make the teaching session retrievable through an index; and g. playing back the sequence of images while displaying the plurality of image portion selections and concurrent indexable commentary concerning the image portion selections, the play back including the sequence of image portion selections. THE EXAMINER’S REJECTION The Examiner rejects claims 19–25, 81, 83, 86, and 87 under 35 U.S.C. § 102 as anticipated by Manohar.5 (Final Action 3.) 5 Replay by Reexecution: a paradigm for asynchronous collaboration via record and replay of interactive multimedia sessions; Nelson Manohar, Atul Prakash; 1994. Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 4 Analysis Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single prior art reference in order for it to anticipate the claim. (In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).) To determine if a claim is anticipated, the claim must first be correctly construed to define the scope and meaning of each contested limitation. (See, e.g., In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994).) Here, the limitation at issue is “indexing.”6 According to the Examiner, something is “indexed” when it is saved as a “database object[]” that is “searchable” by its contents. (Final Action 3–4.) According to the Appellant, something is indexed via “a database construct” that includes an ordered reference list of its contents that can be called upon for retrieval. (Appeal Br. 8.) We share the Appellant’s sentiment that, when the claim language is “read in light of the [S]pecification as it would be interpreted by one of ordinary skill in the art” (In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), the claims on appeal require more than a database object having searchable contents. The Specification discusses “indexed” comments being “linked to a database of similar topics” (Spec. Abstract), “[a]dditional database access though the index” (id.), “a teaching session which is indexable for later 6 Independent claim 19 requires the step of “indexing the session,” independent claim 25 requires the step of “indexing at least one of the commentary and image portion selections so as to make the teaching session retrievable through an index,” and independent claim 86 requires the step of “indexing at least one of the concurrent indexable commentary and image portion selections so as to make the teaching session retrievable through an index.” (Appeal Br., Claims App.) Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 5 study, creation of further sessions, or research” (id. c1:11–12), “match[ing] an image data base with appropriate indexing to the diagnostic abilities of [a] human data interpreter” (id. c1:42–44), commentaries that are “indexed for easy retrieval and for cross-reference to images bearing on a similar topic” (id. c2:34–36), “gestures” and “commentary” that are “indexed appropriately” (id. c2:62–64), “linking through the index” to “access any number of data bases” (id. c3:3–5), a depiction of recalling “index topics from a data base” (id. c3:23–24, Fig. 6), all commentary being “indexed” (id. c4:8–10), “an indexing application” for “indexing of commentary or images selected within a session” (id. c4:26–28), a “concept map” for “eas[y] indexing” (id. c5:5–8) and for “additional association, recordation, and indexing of a session” (id. c5:20–21), the indexing of “natural language commentary” (id. c5:24), the retrieval of “small format images” from the “indexed database” (id. c5:36–37), and an “indexing protocol” (id. c5:55). These discussions cumulatively convey to one of ordinary skill in the art that the claimed “indexing” is not satisfied by a database object having content that is simply searchable. Although dictionary definitions are not necessarily dispositive on claim-interpretation issues (see Phillips v. AWH Corp. 415 F.3d 1303, 1307 (Fed. Cir. 2005)), here both general and technical dictionary definitions align with the Appellant’s position. For example, general dictionary definitions of the word “index” include: “(in a nonfiction book, monograph, etc.) a more or less detailed alphabetical listing of names, places, and topics along with the numbers of the pages on which they are mentioned or discussed, usually included in or constituting the back matter” (https://www.dictionary.com/ Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 6 browse/index); and “a list (as of bibliographical information or citations to a body of literature) arranged usually in alphabetical order of some specified datum (such as author, subject, or keyword)” (https://www.merriam- webster.com/dictionary/index). Even more telling is the technical definition of the word “index” in the realm of electronic computation: “[a]n ordered reference list of the contents of a file or document, together with keys or reference notations for identification or location of those contents.” (The Authoritative Dictionary of IEEE Standard Terms, Seventh Edition (2000).) The Examiner’s rejection under 35 U.S.C. § 102 is premised upon Manohar disclosing “indexing” because its sessions are “saved” in a database that is “searchable.” (Final Action 3–4.) But such saving of a searchable database would not satisfy the indexing step required by the claims on appeal. Thus, on the record before us, we cannot sustain the Examiner’s rejection under 35 U.S.C. § 102. OUR NEW GROUND OF REJECTION We enter a new ground of rejection rejecting claims 19–25, 81, 83, 86, and 87 under 35 U.S.C. § 112, as failing to comply with the written description requirement. As indicated above, the Specification discusses, in detail, the results achieved and the advantages gained via the Appellant’s indexing. (See Spec. Abstract, c1:11–12, c1:39–42, c2:9–13, c2:34–36, c2:62–64, c3:2–5, c4:8–10). But “[t]he written description requirement is not met if the specification merely describes a ‘desired result.’’’ (Vasudevan Software, Inc. v. MicroStrategy, Inc. 782 F.3d 671, 682 (Fed. Cir. 2015).) Thus, in applying this standard to the computer-implemented functional claims at Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 7 issue, the ‘‘question is whether the specification shows possession by the inventor of how [the claimed function] is achieved.’’ (Id. at 683.) Here, the Specification fails to provide any insight on how the Appellant’s indexing is actually achieved. (See Vasudevan, 782 F.3d at 683.) Although the Specification mentions an “indexing application” (Spec. c4:26), a “concept map” (id. c5:5–9, see also Fig. 4), “indexed database” (id. c5:37–39, see also Fig. 5) and an “indexing protocol” (id. c5:55–56, see also Fig. 6), no hardware/software details are provided. Lacking such insight or explanation, the Specification does not show possession of the claimed “indexing.” Because Appellant’s disclosure, as originally filed, does not convey to one of ordinary skill in the art that the Appellant had possession of “indexing” a session or one of a commentary and image portion selections, independent claims 19, 25, and 86 do not have sufficient written description support to satisfy 35 U.S.C. § 112. As such, these independent claims, as well as the claims depending therefrom, are unpatentable under 35 U.S.C. § 112 for failure to satisfy the written description requirement. Accordingly, we enter a new ground of rejection of claims 19–25, 81, 83, 86, and 87 as unpatentable under 35 U.S.C. § 112 because they do not comply with the written-description requirement. Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 8 CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 19–25, 81, 83, 86, 87 102 Manohar 19–25, 81, 83, 86, 87 19–25, 81, 83, 86, 87 112 Written Description 19–25, 81, 83, 86, 87 Overall Outcome 19–25, 81, 83, 86, 87 19–25, 81, 83, 86, 87 FINALITY AND RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2021-001194 Application 15/586,574 Patent US 6,599,130 B2 9 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new [e]vidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same [r]ecord. REVERSED; 37 C.F.R. 41.50(b)