Ex Parte CooleyDownload PDFPatent Trial and Appeal BoardNov 19, 201310747422 (P.T.A.B. Nov. 19, 2013) Copy Citation 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). Appeal 2011-006947 Application 10/747,422 2 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 Appeal 2011-006947 Application 10/747,422 3 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 Appeal 2011-006947 Application 10/747,422 4 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 Appeal 2011-006947 Application 10/747,422 5 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 Appeal 2011-006947 Application 10/747,422 6 “[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 Appeal 2011-006947 Application 10/747,422 7 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. Appeal 2011-006947 Application 10/747,422 8 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 Appeal 2011-006947 Application 10/747,422 9 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 Appeal 2011-006947 Application 10/747,422 10 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 Appeal 2011-006947 Application 10/747,422 11 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 Page 1 of 1 U.S. PATENT DOCUMENTS * DOCUMENT NO. DATE NAME CLASS SUBCLASS DOCUMENT SOURCE ** APS OTHER A B C D E F G H I J K L M FOREIGN PATENT DOCUMENTS * DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS DOCUMENT SOURCE ** APS OTHER N O P Q R S T NON-PATENT DOCUMENTS * DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages) DOCUMENT SOURCE ** APS OTHER U http://www.thefreedictionary.com/automatically V W X *A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).) **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 Copy with citationCopy as parenthetical citation