Ex Parte Gopalakrishnan

Patent Trial and Appeal Board

Sep 11, 2014

11423252 (P.T.A.B. Sep. 11, 2014)

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).
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Application 11/423,252
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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.
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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
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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
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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
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Application 11/423,252
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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.
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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. 1415.
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.
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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 arguedover 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.
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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 13831384 (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
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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. 68. 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.
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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

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