INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Mar 2, 2022

2021000496 (P.T.A.B. Mar. 2, 2022)

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. 16/423,085 05/27/2019 Jonathan Dunne CAM920130086US03_8150-932 2889 112978 7590 03/02/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER NGUYEN, LE V ART UNIT PAPER NUMBER 2143 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JONATHAN DUNNE, PAUL B. FRENCH, JAMES P. GALVIN JR, and PATRICK J. O’SULLIVAN ___________ Appeal 2020-000496 Application 16/423,085 Technology Center 2100 ____________ Before CARL W. WHITEHEAD JR., JASON V. MORGAN and NABEEL U. KHAN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 is appealing the final rejection of claims 21-38 under 35 U.S.C. § 134(a). See Appeal Brief 1. Claims 21, 27 and 33 are 1 Rather than reiterate Appellant’s arguments and the Examiner’s determinations, we refer to the Appeal Brief (filed April 29, 2020), the Reply Brief (October 23, 2020), the Final Action (mailed December 12, 2019) and the Answer (mailed September 18, 2020), for the respective details. 2 Appellant refers to “applicant” as defined in 37 C.F.R. 1.42(a). (“The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.”). Appellant identifies IBM Corporation as the real party in interest. Appeal Brief 1. Appeal 2021-000496 Application 16/423,085 2 independent. Claims 1-20 are canceled. See Appeal Brief 2; Final Action 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Introduction According to Appellant: One aspect of the present invention can include a system for dynamically adjusting content for an interaction impairment. Such a system can include a data provider, an end-user electronic device, a user identification module, and a data adjustment module. The data provider can be capable of providing access to electronic data. One or more characteristics of the electronic data can be incompatible with an impairment of an impaired user, adversely affecting the ability of the impaired user to utilize the electronic data. The end-user electronic device can be configured to allow the impaired user to interact with electronic data. The user identification module can be configured to identify an identity of the impaired user and/or the impairment of the impaired user. The data adjustment module can be configured to automatically adjust incompatible characteristics of the electronic data prior to presentation by the end-user electronic device. This adjustment can increase the ability of the impaired user to utilize the electronic data with the end-user electronic device. Specification ¶5. Representative Claim3 (disputed limitations emphasized) 21. A computer-implemented method within an end-user electronic device, comprising: 3 Appellant does not argue independent claims 21, 27 and 33 individually. See Appeal Brief 9 (“claims 21, 26-27, 32-33, and 38 stand or fall together with independent claim 21”). Accordingly, we select independent claim 21 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by Footnote continued on the next page. Appeal 2021-000496 Application 16/423,085 3 identifying an impairment that is (i) associated with a user of the end-user electronic device and (ii) defined within an impairment profile associated with the impaired user that includes: acceptable limit values for a plurality of data characteristics incompatible with the impairment, and a type of processing for handling a particular one of the plurality of incompatible data characteristics; receiving, from a data provider, electronic data of which a portion is incompatible with the impairment; automatically processing, using the type of processing included within the impairment profile, the portion of the electronic data to adjust at least one incompatible characteristic of the portion of the electronic data; and providing the processed electronic data to the user for interaction, wherein the user is not required to make an additional modification to the processed electronic data to compensate for the impairment. References Name4 Reference Date Rosen US 2004/0186852 A1 September 23, 2004 Scott US 2006/0189278 A1 August 24, 2006 Tedesco US 8,630,633 B1 January 14, 2014 Rejections on Appeal Claims 21, 23, 24, 26, 27, 29, 30, 32, 33, 35, 36 and 38 stand rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Tedesco. Final Action 3-4. 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.”). 4 All reference citations are to the first named inventor only. Appeal 2021-000496 Application 16/423,085 4 Claims 22, 28 and 34 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tedesco and Rosen. Final Action 5. Claims 25, 31 and 37 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tedesco and Scott. Final Action 5-6. ANALYSIS Appellant states, “Independent claim 21 recites, in part, the limitations of ‘receiving, from a data provider, electronic data of which a portion is incompatible with the impairment.’” Appeal Brief 10; claim 21. The Examiner finds Tedesco teaches “receiving, from a data provider, electronic data of which a portion is incompatible with the impairment (col. 11, line 55 - col. 12, line 3: electronic data from a data provider via Web browser).” Final Action 3. The Examiner does not specify specifically within the noted citation where Tedesco teaches the disputed limitation. Appellant argues: Tedesco teaches that “preexisting data regarding any sensory deficits associated with a user” are electronically transferred (i.e., imported) into the system. However, this is information that describes the sensory deficits. Notably, this is not electronic data in which a portion of it is incompatible with the impairment. Consequently, Tedesco fails to identically disclose the limitations at issue. Appeal Brief 10 (citing Tedesco, column 11, lines 57-58.). The Examiner responds in the Answer by citing various sections of Tedesco to support the Examiner’s determination that Tedesco teaches the disputed limitation. See Answer 7. Note, Tedesco’s original section cited by the Examiner in the Final Action is not listed among the various sections cited in the Answer. See Final Action 3. The Examiner states, “Tedesco teaches transmitting of incompatible electronic data of an image type provided by sensors of an optical camera/data provider such as ‘an object[/EXIT sign] Appeal 2021-000496 Application 16/423,085 5 detected by . . . camera 60.’” Answer 7 (citing Tedesco’s Figures 4, 6; column 8, lines 2-41). Tedesco’s Figures 27A-C are reproduced below: In the fourth example, illustrated by FIGS. 27A-C, a caregiver configures the software such that when a particular image is recognized by an optical camera communicatively coupled to the mobile terminal 10, a translatory tactile output is produced that describes the imaged. Tedesco Column 24, lines 24-28. Tedesco further teaches: As shown by FIG. 27A, a caregiver may begin by identifying an image, such as one stored within the memory of the mobile terminal that should be used as a benchmark to which a detected image may be compared. In this example, the caregiver has identified an image called “EXIT.GIF,” which depicts a common EXIT sign. The caregiver also supplies text to describe the image e.g., the caregiver uses a physical or virtual keyboard to type “EXIT”), and saves the Appeal 2021-000496 Application 16/423,085 6 configuration. Turning to FIG. 27B, the mobile terminal 10 is given to a disabled user, who also dons a pair of glasses 58a including an optical camera 60 (i.e., the glasses are worn as a fashionable, outward-facing camera, and are not necessarily used to enhance vision). Sure enough, a detected image 78 of an EXIT sign above a door way matches a benchmark image 80 saved in memory of the device, causing a criterion to be satisfied and an assistive output to be produced. In this example, turning now to FIG. 27C, a tactile assistive output is produced, in the form of a pattern of raised portions of a touch screen 16. As shown, the pattern of raised portions of touch screen 16 represents the word “EXIT” in Braille. Tedesco, column 24, lines 30-50. Appellant argues: The claims require that the electronic data received from the data provider be “automatically process[ed], using the type of processing included within the impairment profile, . . . to adjust at least one incompatible characteristic of the portion of the electronic data.” However, no adjustment of the image of the “EXIT sign” is made. Additionally, the claims require that “the processed electronic data [is provided] to the user for interaction.” However, the data that is provided to the user is not the electronic data that was processed. Rather, what is being provided to the user is saved data (i.e., in the form of pattern of raised portions of touch screen 16 represents the word “EXIT” in Braille). As such, the data being provided by the camera does not identically disclose the claimed “receiving, from a data provider, electronic data of which a portion is incompatible with the impairment.” Reply Brief 4 (emphasis added). Appellant’s arguments are persuasive of Examiner error. As articulated by the Federal Circuit, “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Here, Tedesco does not teach “receiving, from a data provider, electronic data of which a portion is Appeal 2021-000496 Application 16/423,085 7 incompatible with the impairment” as recited in claim 21. Tedesco teaches, “Selection of such an option would allow the electronic transfer of preexisting data regarding any sensory deficits associated with a user.” Tedesco, column 11, lines 56-58. Tedesco’s preexisting data refers to the user’s sensory deficits and not incompatible electronic data from a data provider as claim 21 requires. The anticipation rejection of independent claims 21, 27 and 33, commensurate in scope, is reversed, as well as the anticipation rejection of dependent claims 23, 24, 26, 29, 30, 32, 35, 36 and 38. The obviousness rejections of dependent claims 22, 25, 28, 31, 34 and 37 are also reversed for neither Rosen nor Scott address the noted deficiency of Tedesco. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 23, 24, 26, 27, 29, 30, 32, 33, 35, 36, 38 102(a)(1) Tedesco 21, 23, 24, 26, 27, 29, 30, 32, 33, 35, 36, 38 22, 28, 34 103 Tedesco, Rosen 22, 28, 34 25, 31, 37 103 Tedesco, Scott 25, 31, 37 Overall Outcome 21-38 REVERSED