Ex Parte Cooley

Patent Trial and Appeal Board

Nov 19, 2013

10747422 (P.T.A.B. Nov. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MATTHEW B. COOLEY
__________

Appeal 2011-006947
Application 10/747,422
Technology Center 2600
__________

Before DEMETRA J. MILLS, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for lack of written description and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
1. A method for image captioning, comprising:
receiving voice data on a microphone integrated into a printing
device;
translating the voice input data into text data on the printing device;
associating the same text data with each of a plurality of images:
editing of the text data on the printing device using naturally spoken
voice data and a keyboard integrated into the printing device to visually,
orally and manually edit text data, wherein the edited text data is updated
automatically for each of the plurality of images the same text is associated
with:
providing a preview of at least one of the plurality of images prior to
printing with the text data on a display integrated into the printing device:
and
printing the plurality of images with the text data.

31. A computer readable medium having a set of computer executable
instructions thereon for causing a printing device to perform a method the
method comprising:
receiving voice data on a microphone integrated into a printing
device:
receiving image data files on the printing device;
selecting a group of image data files;
associating a single text data file with the group of image data files;
editing the single text data file on the printing device using naturally
spoken voice data and a keyboard integrated into the printing device to
visually, orally and manually edit text data to the image, wherein the edited
single text data is updated fix each image in the group of image data files the
single text data is associated with;
providing a preview of the image prior to printing with the text data
on a display integrated into the printing device; and
printing the group of image data files with the single text data file.

Cited References

Tatsuta US 5,692,113 Nov. 25, 1997
Dietz US 6,175,820 B1 Jan. 16, 2001
Lewis et al. US 6,314,397 B1 Nov. 6, 2001
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Tsuji US 2001/0051874 A1 Dec. 13, 2001
Tanaka et al. US 2002/0032911 A1 Mar. 14, 2002

Grounds of Rejection
Claims 1-4 and 7-11 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, 4, 7-10, 14-17, 23-29, 31, 33-35, 37-41, and 43 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Tsuji in view
of Lewis.
Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsuji in view of Dietz.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsuji in view of Tatsuta.
Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tsuji in view of Lewis and Tanaka.
Claims 20, 21, 36, and 42 is rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tsuji in view of Lewis and well-known prior art.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-
26.

Discussion Written Description
ISSUE
The Examiner concludes that
In claim 1, page 2, lines 7-8, there is no support in the
[S]pecification for “wherein the edited text data is updated
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automatically for each of the plurality of images the same text
is associated with”.
The closest support in the [S]pecification seen by
Examiner recites: “The edited text can then be associated with
one or more image files ...”, at page 13, line 1 and “[p]reviously
edited and/or newly received voice data and/or audio file data
can be associated with images and/or groups of images” in page
14, lines 7-12 of the Applicant’s Specification dated 29
December 2003.

(Ans. 4.)
Appellant argues that, “support for the added claim recitations is
found in the [S]pecification as originally filed, e.g., at para. [0017]-[0019],
and [0036] of the published application. Section 112 does not require
verbatim support in the [S]pecification for the claim recitations.” (Reply Br.
3.)
The issue is: Does the Specification as filed support/describe the
pending claim scope?

PRINCIPLES OF LAW
As stated in TurboCare Div. of Demag Delaval Turbomachinery
Corp. v. General Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001):
The written description requirement and its corollary, the new
matter prohibition of 35 U.S.C. § 132, both serve to ensure that
the patent applicant was in full possession of the claimed
subject matter on the application filing date. When the
applicant adds a claim or otherwise amends his specification
after the original filing date . . ., the new claims or other added
material must find support in the original specification.

The test for determining whether a specification is sufficient to
support a particular claim “is whether the disclosure of the application relied
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upon ‘reasonably conveys to the artisan that the inventor had possession at
that time of the later claimed subject matter.’” Ralston Purina Co. v. Far-
Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (quoting In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983)).
Thus, “[i]t is not necessary that the application describe the claim
limitations exactly, but only so clearly that persons of ordinary skill in the
art will recognize from the disclosure that appellants invented processes
including those limitations.” In re Wertheim, 541 F.2d 257, 262 (CCPA
1976) (citation omitted); see also Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.”).

ANALYSIS
We are not persuaded by the Examiner that the pending claim scope is
not supported by the written description, as filed.
We begin with claim interpretation. The claim language in question
is, “wherein the edited text data is updated automatically for each of the
plurality of images the same text is associated with.” We interpret the term
“updated” to mean edited, consistent with the desired function performed
and with the Specification page 4, [0036], for example. We did not find the
term “automatically” in the Specification, or any specific definition of this
term argued or provided for in the Specification. Thus we give the term
“automatically” its ordinary meaning. The term “automatically” means
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“[a]cting or done as if by machine.”1 The pending Specification describes
methods, devices and systems for text editing on a printing device, with the
printer (a machine) performing the editing function. Therefore, the pending
claim language is supported by the original disclosure which reasonably
conveys to the artisan that the inventor had possession at that time of the
later claimed subject matter.
The written description rejection is reversed.

Obviousness
ISSUE
The Examiner finds that each element claimed is described by Tsuji
except that, “Tsuji does not expressly disclose receiving voice data on a
microphone integrated into a printing device.” (Ans. 6.) In addition, “Tsuji
does not expressly disclose editing of the text data on the printing device
using naturally spoken voice data and a keyboard integrated into the printing
device to visually, orally and manually edit text data wherein the edited text
data is updated automatically for each of the plurality of images the same
text is associated with.” (Id. at 6-7.)
The Examiner relies on Lewis to make up for these deficiencies.
In particular, the Examiner finds that
Lewis et al teach[es] a method for correcting speech
recognition wherein text can be corrected by speaking the error
text word and using a keyboard and a mouse 21 for editing, col.
4, line 59 - col. 5, line 9. In addition, Lewis teaches of editing
text by using a “Replace All” button 66 to update all text

1 http://www.thefreedictionary.com/automatically
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instances that should be edited. As such, Examiner articulates
that a plurality of image frames received by Tsuji can have text
edited for all images with the same text.

(Ans. 7.)
Appellant contends that, “a ‘Replace All’ function to replace all
instances of a word in a text document is not the same as editing text data
(e.g., a file) and having that edited text data (e.g., the file) updated for each
of a plurality of different images it is associated with.” (App. Br. 11.)
The dispositive issue is whether the cited prior art discloses that, “the
edited text data is updated automatically for each of the plurality of images
the same text is associated with,” as claimed.

FACTS
The Examiner’s findings of fact are set forth in the Answer at pages 5-
26. The following facts are highlighted.
1. Tsuji discloses, at paragraph [0051] (emphasis added):
In the present embodiment, the printer has an
auxiliary construction for recording the text to a recording
surface of the print in addition to the printing of the text data
recorder 57. If the text is desired to be recorded to the
recording surface, the text data from the text data input unit
50 or the speech/text convertor 52 is sent to the image
processing unit 12. The image processing unit 12 effects
synthesis to combine the text image with the frame image.
In the image synthesis, it is possible to record the text
directly beside a speech bar code instead of inserting the text
in the image frame.

2. Lewis et al teach[es] a method for correcting speech recognition
wherein text can be corrected by speaking the error text word and
using a keyboard and a mouse 21 for editing, col. 4, line 59 - col.
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5, line 9. In addition, Lewis teaches of editing text by using a
“Replace All” button 66 to update all text instances that should be
edited. As such, Examiner articulates that a plurality of image
frames received by Tsuji can have text edited for all images with
the same text.

(Ans. 7.)

PRINCIPLES OF LAW
Merely stating the different limitations of dependent claims does not
constitute separate argument. See 37 C.F.R. § 1.192(c)(7); In re Dance, 160
F.3d 1339, 1340 n.2 (Fed. Cir. 1998) (“Although Dance mentions the
content of the dependent claims, he does not argue their merits separately
from those of independent claim 33, or attempt to distinguish them from the
prior art. Nor were the dependent claims argued separately before the
Board. Therefore, all claims stand or fall together with claim 33.”).
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
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issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellant’s arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the argument
set forth in the Answer.
Appellant contends that, “a ‘Replace All’ function to replace all
instances of a word in a text document is not the same as editing text data
(e.g., a file) and having that edited text data (e.g., the file) updated for each
of a plurality of different images it is associated with.” (App. Br. 11.)
We are not persuaded. Tsuji discloses in paragraph [0051] (emphasis
added) that, “[i]f the text is desired to be recorded to the recording surface,
the text data from the text data input unit 50 or the speech/text convertor 52
is sent to the image processing unit 12. The image processing unit 12 effects
synthesis to combine the text image with the frame image.” Therefore Tsuji
discloses captioning an image with text using a printer which receives voice
input data. The pending claims further require a step of editing
automatically (by machine, in this case a printer) image text data. Lewis
discloses that it is well-known to use a speech recognition algorithm to have
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a machine edit text data, for example, using a “[r]eplace [a]ll” function.
(App. Br. 11.)
We agree with the Examiner that it would have been obvious
[T]o a person of ordinary skill in the art to add the speech
recognition correction of text method of Lewis et al to the
printing method of Tsuji in order to obtain a method of
correcting the text entered by naturally spoken voice data using
voice, keyboard and a mouse. The motivation for doing so
would be to help a customer or a user achieve satisfactory
display and/or print results, as taught at paragraph 0056 in Tsuji
to correct images that are integrated with voice-to-text data.

(Ans. 7.)
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, 550 U.S. at 421. In the present case, a predictable solution to plural
(automatic or machine) editing is the “[r]eplace [a]ll” function. (App. Br.
11.) We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art to couple a well-known voice controlled machine
text editing function to edit a plurality of image texts.
On pages 11-15 of the Brief, Appellant essentially argues that the
dependent claims are allowable for the reasons argued for claims 1 and 31.
Having found no deficiencies in the Examiner’s rejection of claims 1 and 31,
we also affirm the remaining obvious rejections. Appellant has not rebutted
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the Examiner’s prima facie case of obviousness by a preponderance of the
evidence. We affirm the obviousness rejections for the reasons of record.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections.
The written description rejection is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

Notice of References Cited

Application/Control No.

10/747,422
Applicant(s)/Patent Under
Reexamination
Matthew B. Cooley
Examiner

Thomas Lett
Art Unit

2600

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**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16
automatically - definition of automatically by the Free Online Dictionary, Thesaurus and Encyclopedia.
file:///S|/...20automatically%20by%20the%20Free%20Online%20Dictionary,%20Thesaurus%20and%20Encyclopedia_.htm[11/19/2013 4:02:53 PM]
thefreedictionary.com
au·to·mat·ic (ô t -m t k)
adj.
1.
a. Acting or operating in a manner essentially independent of external influence or control: an automatic light switch;
a budget deficit that triggered automatic spending cuts.
b. Self-regulating: an automatic washing machine.
2.
a. Acting or done without volition or conscious control; involuntary: automatic shrinking of the pupils of the eyes in
strong light. See Synonyms at spontaneous.
b. Acting or done as if by machine; mechanical: an automatic reply to a familiar question.
3.
a. Capable of firing continuously until ammunition is exhausted or the trigger is released: an automatic rifle.
b. Semiautomatic: an automatic pistol.
n.
1. An automatic machine or device.
2.
a. An automatic firearm.
b. A semiautomatic firearm.
3. A transmission or a motor vehicle with an automatic gear-shifting mechanism.
4. Football See audible.
Idiom:
on automatic
Functioning by or as if by automatic machine or device.
[From Greek automatos : auto-, auto- + -matos, willing; see men-1 in Indo-European roots.]
au to·mat i·cal·ly adv.
au to·ma·tic i·ty (-m -t s -t ) n.
Word History: The words automatic pilot or automatic transmission bring to mind mechanical devices that operate with
minimal human intervention. Yet the word automatic, which goes back to the Greek word automatos, "acting of one's own
will, self-acting, of itself," made up of two parts, auto-, "self," and -matos, "willing," is first recorded in English in 1748 with
reference to motions of the body, such as the peristaltic action of the intestines: "The Motions are called automatic from
their Resemblance to the Motions of Automata, or Machines, whose Principle of Motion is within themselves." Although the
writer had machines in mind, automatic could be used of living things, a use we still have. The association of automatic
chiefly with machinery may represent one instance of many in which we have come to see the world in mechanical terms.
The American Heritage® Dictionary of the English Language, Fourth Edition copyright ©2000 by Houghton Mifflin Company. Updated in 2009. Published by Houghton
Mifflin Company. All rights reserved.
Thesaurus Legend: Synonyms Related Words Antonyms
Adv. 1. automatically - in a reflex manner; "he answered automatically"
2. automatically - in a mechanical manner; by a mechanism; "this door opens mechanically"
mechanically