Ex Parte URUNGA

Patent Trial and Appeal Board

Jul 25, 2018

14254514 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/254,514
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
FILING DATE
04/16/2014
07/27/2018
Germantown, MD 20874
FIRST NAMED INVENTOR
CANDASURUNGA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TUP18975 4879
EXAMINER
CASILLAS, ROLAND J
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
07/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair@sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CANDAS URUNGA
Appeal2018-000897
Application 14/254,514
Technology Center 2100
Before ROBERT E. NAPPI, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Introduction
Appellant appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1--44. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 According to Appellant, CANDAS URUNGA is the real party in interest.
App. Br. 2.
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Application 14/254,514
Invention and Exemplary Claims
The invention is directed to systems and methods of guiding a user to
achieve a task using one or more software products. Abstract; Spec. 2:28-
30. Specifically, the invention details using a User Guidance (UG)
application having a User Interface (UI) framework to either generate and/or
implement a UG file. Spec. 5:22-25. The UG file is implemented by
opening a saved file and clicking a play button. Spec. 11 :3-12. The UG file
stores data related to instructions that a user can follow by performing the
related interactions on highlighted UI elements to achieve the desired task.
Spec. 5:25-26; 6:9-13. The UG file is also disclosed as being editable by
the UG Programming capability of the UG application. Spec. 12:27-13:3;
13: 17-26. Independent claim 7 is exemplary of the disclosed invention, and
reads as follows ( with the disputed portion of the claim emphasized and
bracket lettering added):
7. A method for guiding a user to let the user achieve
a task while using one or more software, wherein the method is
computer-implemented, the method comprising:
taking a UG file as an input, wherein the [A] UG file is
editable;
implementing the UG file;
achieving the task by following guidance based on the
implementing.
Examiner's Rejections
(1) The Examiner rejected claims 1--4, 6-26, 29-33, and 36--44 under
35 U.S.C. § I03(a) as being obvious over Adkins et al. (US 2006/0053372
Al; published March 9, 2006; hereinafter "Adkins") in view of Gough et al.
(US 2005/0210445 Al; published Sep. 22, 2005; hereinafter "Gough").
Final Act. 4--24; Ans. 4.
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(2) The Examiner rejected claims 5 and 27-28 under 35 U.S.C.
§ I03(a) as being obvious over Adkins in view of Gough and further in view
of Bagley et al. (US 2005/0102322 Al; published May 12, 2005; hereinafter
"Bagley"). Final Act. 24--26; Ans. 4.
(3) The Examiner rejected claims 34--35 under 35 U.S.C. § I03(a) as
being obvious over Adkins in view of Gough and further in view of
Hintermeister et al. (US 2007/0226650 Al; published Sep. 27, 2007;
hereinafter "Hintermeister"). Final Act. 26-27; Ans. 4.
Appellant's Contentions
Appellant contends (App. Br. 8-13) that the Examiner erred in
rejecting claims 1--4, 6-26, 29-33, and 37--44 under 35 U.S.C. § I03(a).
Specifically, Appellant contends that the claims were rejected in error
because nothing in the combination of Adkins in view of Gough amounts to
a "UG file that is editable" as recited in independent claim 7 (see limitation
[A] recited in claim 7 supra), and similarly recited in the remaining
independent claims 1, 12, 31, 40, and 44. App. Br. at 8-9. Based on
Appellant's arguments, and because independent claims 1, 7, 12, 31, 40, and
44 contain the same salient limitation concerning a UG editable file, we
select claim 7 as representative of the group of claims 1--4, 6-26, 29-33, and
36--44. See 37 C.F.R. § 4I.37(c)(l)(iv) ("\Vhen multiple claims subject to
the same ground of rejection are argued as a group or subgroup by appellant,
the Board may select a single claim from the group or subgroup and may
decide the appeal as to the ground of rejection with respect to the group or
subgroup on the basis of the selected claim alone.").
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Application 14/254,514
Principal Issue on Appeal
Based on Appellant's arguments (App. Br. 8-13), the following issue
is presented:
Did the Examiner err in rejecting claims 1--4, 6-26, 29-33, and 36--44
under 35 U.S.C. § 103(a)because Adkins in view of Gough fail to disclose
limitation [A] as recited in representative claim 7 supra? 2
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 4--24) in light
of Appellant's arguments in the Appeal Brief that the Examiner has erred
(App. Br. 8-13), as well as the Examiner's response to Appellants'
arguments in the Appeal Brief (Ans. 4--6). Appellant's conclusions with
regard to the obviousness rejection of representative claim 7 are not
persuasive of error. We agree with and adopt as our own the Examiner's
findings of facts and conclusions as set forth in Final Rejection and the
Answer (Final Act. 4--24; Ans. 4--6), and we provide the following
explanation for emphasis.
Appellant argues that the combination of Adkins in view of Gough
fails to disclose the limitation [A] of representative claim 7 supra. App. Br.
8-13. Specifically, Appellant contends that Adkins modified by Gough does
not teach a recorded user input is editable nor that the recorded user input is
edited before the script for the UG file is generated. App. Br. 8-12.
2 Separate patentability is not argued for claims 5, 27-28, and 34--35. As to
these claims, Appellant relies upon the arguments presented as to the
combination of Adkins in view of Gough (see App. Br. 8-13).
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Application 14/254,514
Appellant describes Adkins as teaching a recording component that is used
to capture and record user input, and a script formulation component that
creates the script based on the recorded user input. App. Br. 10-11. Gough
is characterized as disclosing a script that may be input into an editor so that
it may be edited. App. Br. 11-12. Therefore, Appellant concludes that the
combination of Adkins and Gough "can only achieve that the script is
editable" and that "neither [teaches] that the recorded user input is editable
nor that the recorded user input is edited before the script is formulated."
App. Br. 12.
We agree with the Examiner (Ans. 5) that the claims as presented
are not so limited as to require the editing of the file to be performed prior to
the generation of the file. Unless the steps of a method actually recite an
order in which the step must be performed, the steps are not ordinarily
construed to require one. Interactive Gift Exp., Inc. v. CompuServe, Inc.,
256 F.3d 1323, 1342 (Fed. Cir. 2001). Representative claim 7 supra does
not require that the step of "the UG file is editable" be performed prior to the
recited steps of the UG file being an input or implementing the UG file.
Therefore, the limitation is broad enough to read on Gough' s disclosure at
paragraph [0064] describing editing a file that is input into to a script editor.
See Baldwin Graphic Sys. Inc. v Siebert, Inc., 512 F.3d 1338, 1345 (Fed.
Cir. 2008) ("[ A ]lthough a method claim necessarily recites the steps of the
method in a particular order, as a general rule the claim is not limited to
performance of the steps in the order recited, unless the claim explicitly or
implicitly requires a specific order.") ( citation omitted).
Based on the record before us we agree with the Examiner (Ans. 4--6)
that Adkins in combination with Gough recite a system and method to edit a
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UG file. Gough recites a system that allows a user to create a new script file
or import a previously created script file into a command editor which
displays the list of commands found in the script file in a scrolling window
from which the user may select a command that requires editing. Gough Jrlr
64, 66-67. Therefore, the combination of Adkins and Gough would result in
the recorded script file of Adkins being editable as taught in Gough.
Appellant at pages 11 through 12 of the Appeal Brief has also acknowledged
this reading of Gough, and acquiesced to the combination teaching the
claimed limitation [A] as recited in representative claim 7 supra.
Specifically, Appellant recited that the combination of "Adkins modified by
Gough can only achieve that the script is editable." App. Br. 12.
As a result, Appellant has not sufficiently shown the Examiner erred
in rejecting claim 7 for obviousness, and Appellant's contention that the
combination of Adkins in view of Gough fails to disclose, teach, or suggest
limitation [A] of representative claim 7 are not persuasive. Accordingly, we
sustain the Examiner's obviousness rejection of representative claim 7, and
claims 2--4, 6-26, 29--33, and 36--44 grouped therewith.
Based on Appellant's failure to address the Examiner's prima facie
case of obviousness, Appellant has failed to show that the Examiner erred in
determining that the various combinations of Adkins, Gough, Bagley, and
Hintermeister teach or suggest the a UG editable file as recited in claims 5,
27-28, and 34--35. Accordingly, we will sustain the Examiner's
obviousness rejections of these claims proforma and for the same reasons as
representative claim 7. See 37 C.F.R. § 4I.37(c)(l)(iv) (requiring a
statement in the briefs as to each ground of rejection presented by Appellant
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for review and stating that arguments not presented in the briefs will be
refused consideration).
CONCLUSION
The Examiner did not err in rejecting claims 1--4, 6-26, 29--33, and
36--44, as being obvious over Adkins in view of Gough because Gough
discloses limitation [A] set forth in representative claim 7.
DECISION
(1) The Examiner's rejection of claims 1--4, 6-26, 29--33, and 36--44
under 35 U.S.C. § 103(a) as being obvious over Adkins in view of Gough is
affirmed.
(2) The Examiner's rejections of (i) claims 5 and 27-28 under
35 U.S.C. § 103(a) as being obvious over Adkins in view of Gough and
further in view of Bagley, and (ii) claims 34--35 under 35 U.S.C. § 103(a) as
being obvious over Adkins in view of Gough and further in view of
Hintermeister are affirmed, proforma, based on the Appellant's failure to
present any arguments as to these rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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