Ex Parte GopalakrishnanDownload PDFPatent Trial and Appeal BoardSep 11, 201411423252 (P.T.A.B. Sep. 11, 2014) Copy Citation 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. 11/423,252 06/09/2006 Kumar C. Gopalakrishnan 42P40920X2 5487 45209 7590 09/11/2014 Mission/BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER OWYANG, MICHELLE N ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 09/11/2014 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 KUMAR C. GOPALAKRISHNAN __________ Appeal 2011-011808 Application 11/423,252 Technology Center 2100 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and MICHAEL W. KIM, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kumar C. Gopalakrishnan (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM.1 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed Mar. 3, 2011) and the Examiner’s Answer (“Ans.,” mailed Apr. 25, 2011). Appeal 2011-011808 Application 11/423,252 2 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method comprising: receiving a visual imagery at a system server from a client device, wherein the system server comprises a text recognition engine and the visual imagery comprises a plurality of words; extracting the plurality of words from the visual imagery using the text recognition engine; creating a set of contexts based on the plurality of words, wherein the set of contexts comprises a first word from the plurality of words; querying an information service using the set of contexts; and generating and displaying a list of textual search results based on the query, wherein the list of textual search results are not stored in a file at the client device before display. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Lev Nastar Boncyk Neven, Sr. US 2002/0102966 A1 US 2002/0184203 A1 US 2006/0002607 A1 US 2006/0012677 A1 Aug. 1, 2002 Dec. 5, 2002 Jan. 5, 2006 Jan. 19, 2006 The following rejections are before us for review: 1. Claims 1 and 3–26 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appeal 2011-011808 Application 11/423,252 3 2. Claims 1–16 and 21–25 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention. 3. Claims 1–3, 12, 14, 15, and 21–24 are rejected under 35 U.S.C. § 102(e) as being anticipated by Boncyk. 4. Claims 4–11, 16, and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Nastar. 5. Claims 13 and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Lev. 6. Claims 17–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Neven, Sr. ISSUES Does the Examiner err is rejecting claims 1 and 3–26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement? Does the Examiner err in rejecting claims 1–16 and 21–25 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention? Does the Examiner err in rejecting claims 1–3, 12, 14, 15, and 21–24 under 35 U.S.C. § 102(e) as being anticipated by Boncyk; claims 4–11, 16, and 26 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Nastar; claims 13 and 25 under 35 U.S.C. § 103(a) as being unpatentable Appeal 2011-011808 Application 11/423,252 4 over Boncyk and Lev; and, claims 17–20 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Neven, Sr.? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 1 and 3–26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. “To satisfy [the written description requirement of 35 U.S.C. § 112, first paragraph], the specification must describe the invention in sufficient detail so ‘that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.’” In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). See also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005); Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir. 1995). Id. The Examiner takes the position that the Specification fails to provide an adequate written description of the claim limitations extracting the plurality of words from the visual imagery [comprising a plurality of words] using the text recognition engine; creating a set of contexts based on the plurality of words, wherein the set of contexts comprises a first word from the plurality of words (claim 1, emphasis added). Ans. 3–4. According to the Examiner, the Specification (citing ¶¶ 46–47) discloses extracting textual information from Appeal 2011-011808 Application 11/423,252 5 a visual image to construct a plurality of context. Id. at 4. “However, it appears that contextual information is different from words.” Id. Compliance with the written description requirement is a question of fact. Ralston Purina Co. v. Far-Mar-Co, 772 F.2d 1570, 1575 (Fed. Cir. 1985). The fact is that the Specification discloses, “[f]or instance, a phone number or text from the visual imagery of a video on a television screen may be extracted and used to provide an interactive television viewing experience.” Spec. ¶ 104. This sentence indicates that “text” may be extracted. Text is normally composed of words. “[T]he specification must contain an equivalent description of the claimed subject matter.” Lockwood, 107 F.3d at 1572. But “the prior application need not describe the claimed subject matter in exactly the same terms as used in the claims . . . .” Eiselstein, 52 F.3d at 1038. Because text is normally composed of words, the Specification’s disclosure of extracting “text” is considered an equivalent description of the claimed extraction of “words.” Accordingly, we do not sustain the rejection of claims 1 and 3–26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The rejection of claims 1–16 and 21–25 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention. The Examiner’s position is that the claim limitations querying an information service using the set of contexts; and Appeal 2011-011808 Application 11/423,252 6 generating and displaying a list of textual search results based on the query, wherein the list of textual search results are not stored in a file at the client device before display. (claim 1) “are not clearly understood rendering the claim indefinite.” Ans. 4. The Examiner also finds the claim limitation “different from the first information service” (claim 5) “not clearly understood rendering the claim indefinite.” Id. at 5. The difficulty with the Examiner’s position is that it lacks a claim construction analysis. Cf. S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001) (“The question of whether the claims meet the statutory requirements of § 112 ¶ 2 is a matter of construction of the claims . . . .”) (citations omitted). The Examiner finds that the claims are “not clearly understood.” Ans. 5. But a determination that a claim is indefinite is not based on whether a claim is confusing to an Examiner. It is a determination based on the broadest reasonable interpretation of the claims in light of the Specification as it would be interpreted by one of ordinary skill in the art. That determination requires a construction of the claims according to the familiar canons of claim construction. Only after a thorough attempt to understand the meaning of a claim has failed to resolve material ambiguities can one conclude that the claim is invalid for indefiniteness. All Dental Prodx, LLC v. Advantage Dental Prods. Inc., 309 F.3d 774, 780 (Fed. Cir. 2002). A prima facie case of indefiniteness has not been made out in the first instance. We do not sustain the rejection of claims 1–16 and 21–25 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Appeal 2011-011808 Application 11/423,252 7 The rejection of claims 1–3, 12, 14, 15, and 21–24 under 35 U.S.C. § 102(e) as being anticipated by Boncyk. The Appellant’s sole argument is that Boncyk is not applicable as prior art because it was filed on August 15, 2005, after the August 31, 2004 filing date of the Appellant’s provisional application (60/606,282) to which this application on appeal claims priority benefit. App. Br. 1415. The argument is not persuasive as to error in the rejection. The Appellant does not dispute that Boncyk describes the subject matter claimed. There is no dispute that Boncyk is an application for patent, published under section 122(b), and one of the two types of documents that, according to § 102(e)2, if it describes the invention, a person shall not be entitled to a patent. 2 35 U.S.C. § 102 states: A person shall be entitled to a patent unless — . . . . (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language. Appeal 2011-011808 Application 11/423,252 8 The Appellant does not mention it, but there can be no dispute that Boncyk (¶ 13) claims priority to a number of applications, filed either under 35 U.S.C. § 119(e) or § 120, whose filing dates go back as far as the November 6, 2000, filing date of provisional application No. 60/246,295 a date earlier than the arguedover August 31, 2004 filing date of the instant application. The question is whether the Boncyk’s filing date may reach back that far and thereby antedate the August 31, 2004 effective filing date of the instant application. In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010) provides the answer. The short answer is “yes.” Section 102(e) codified the “history of treating the disclosure of a U.S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.” Giacomini, 612 F.3d 1380 at 1385. Thus, Boncyk’s filing date may reach back as far as the November 6, 2000, filing date of provisional application 3 Boncyk states: [0001] This application is a continuation-in-part of Ser. No. 09/992942 filed Nov. 5, 2001, which claims priority to provisional application No. 60/317521 filed Sept. 5, 2001 and provisional application No. 60/246295 filed Nov. 6, 2000; and also claims priority to provisional application No. 60/630524 filed Nov. 22, 2004 and provisional application No. 60/625526 filed Nov. 4, 2004, and utility application 10/492243 filed May 20, 2004, which claims priority to PCT/US02/35407 filed Nov. 5, 2002, which claims priority to utility application 09/992942 filed Nov. 5, 2001. . . . Boncyk ¶ 1. Appeal 2011-011808 Application 11/423,252 9 No. 60/246,295 and thereby antedates the filing date of the instant application. However, “[a]n important limitation is that the provisional application must provide written description support for the claimed invention.” Id. at 1383. But the Appellant has not challenged any of Boncyk’s earlier-filed applications to which priority was claimed because of a failure to provide written descriptive support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below. Id. at 13831384 (citations omitted). Given that Boncyk may be entitled to at least the November 6, 2000, filing date of provisional application No. 60/246,295, which antedates the August 31, 2004 filing date for this application, and the Appellant does not argue that said provisional application fails to provide written descriptive support for the claimed invention, we see no error in the rejection. For the foregoing reasons, the Appellant’s argument that Boncyk is not applicable as prior art because it was filed on August 15, 2005, after the August 31, 2004 filing date of the Appellant’s provisional application (60/606,282) to which this application on appeal claims priority benefit, is unpersuasive as to error in the rejection. We do not reach the Declaration Under 37 C.F.R. § 1.131 filed on November 12, 2009, by the inventor. It states that “[t]he invention as embodied in the pending claims of this patent application was reduced to practice on or before August 31, 2004.” We need not decide the sufficiency of that statement as evidence to show completion of the invention prior to Appeal 2011-011808 Application 11/423,252 10 August 31, 2004 because Boncyk may be entitled to at least the November 6, 2000, filing date of provisional application No. 60/246,295, which antedates the August 31, 2004 filing date for this application. There being no other arguments, we sustain the rejection of claims 1– 3, 12, 14, 15, and 21–24 under 35 U.S.C. § 102(e) as being anticipated by Boncyk. The rejection of claims 4–11, 16, and 26 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Nastar. The rejection of claims 13 and 25 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Lev. The rejection of claims 17–20 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Neven, Sr.. The only argument raised against these rejections is the one addressed above about Boncyk’s filing date. App. Br. 68. The discussion above fully addresses the argument. Thus, for the same reasons the argument is unpersuasive as to error in these rejections. We sustain these rejections. CONCLUSIONS The rejection of claims 1 and 3–26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is reversed. The rejection of claims 1–16 and 21–25 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention is reversed. The rejection of claims 1–3, 12, 14, 15, and 21–24 under 35 U.S.C. Appeal 2011-011808 Application 11/423,252 11 § 102(e) as being anticipated by Boncyk is affirmed. The rejection of claims 4–11, 16, and 26 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Nastar is affirmed. The rejection of claims 13 and 25 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Lev is affirmed. The rejection of claims 17–20 under 35 U.S.C. § 103(a) as being unpatentable over Boncyk and Neven, Sr. is affirmed. DECISION The decision of the Examiner to reject claims 1–26 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED llw Copy with citationCopy as parenthetical citation