Ex Parte Daniel et al

Board of Patent Appeals and Interferences

Jun 22, 2012

10317200 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANNY B. DANIEL
and DEBRA A. LEE
____________________

Appeal 2010-002614
Application 10/317,200
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, DEBRA K. STEPHENS, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-20 and 26-46. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 21-25 were cancelled.
We AFFIRM.
Introduction
According to Appellants, the invention relates to a system and method
for computer aided instruction and electronic publishing that employ
modular design approaches (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A method for compiling and distributing electronic
publications, said method comprising:
creating a library containing a plurality of electronic
content objects, each of said electronic content objects
comprising self-contained and independent units encapsulating
informational content relating to a single topic or subtopic and
defining how to navigate among said content encapsulated
within the electronic content object in a predefined manner that
maintains independence of the electronic content object;
creating an electronic topical outline designating topical
levels for a desired publication, said topical outline detailing the
order of one or more desired topics or desired subtopics in said
desired publication according to said designated topical levels;
selecting a subset of electronic content objects relevant to
said desired topics and desired subtopics;
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assembling said selected electronic content objects using
said topical outline to create said desired electronic publication;
and
publishing said desired electronic publication, wherein
said topical outline defines a presence and relative sequence of
assembled informational content presented in said electronic
publication, said publishing comprising electronic delivery of
said publication to an end user such that navigation by said end
user among informational content within a given selected
electronic content object during electronic delivery is limited to
said predefined manner of said given selected electronic content
object, and navigation by said end user between different
selected electronic content objects is controlled by said different
selected electronic content objects are sequenced by said topical
outline.

Prior Art
Alcorn US 6,988,138 B1 Jan. 17, 2006
Owens US 6,315,572 B1 Nov. 13, 2001
Freeman US 6,301,462 B1 Oct. 9, 2001

Rejection
Claims 1-20 and 26-46 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Alcorn, Freeman, and Owens.

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GROUPING OF CLAIMS
Based upon Appellants’ arguments, we select representative claim 1
to decide this appeal for the group consisting of claims 1-20 and 26-46. (See
App. Br. 5-15).1
We accept Appellants’ grouping of the claims. We have only
considered those arguments that Appellants actually raised in the Briefs.
Arguments Appellants could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2009).

ISSUE
35 U.S.C. § 103(a): claims 1-20 and 26-46
Appellants assert their invention is not obvious over Alcorn, Freeman,
and Owens (App. Br. 5-15). Specifically, Appellant argues “electronic
topical outline” should not be broadly construed as “course catalog,” “course
contents,” or “course outline” (Reply Br. 3; App. Br. 9-11). Appellants
assert these files are nothing more than a text file or traditional document
(App. Br. 11). Even if the term were broadly construed, Appellants argue,
the combination does not teach or suggest an electronic topical outline used
to assemble electronic content objects to create a desired electronic
publication (Reply Br. 3). Further, Appellants assert Alcorn does not teach a
topical outline that designates topical levels for a desired publication and

1 We note the Claim Appendix of Appellants’ Appeal Brief is missing claim
3. We take this to be an inadvertent mistake and consider claim 3 as still
pending and appealed.
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details the order of topics in the desired publication according to the
designated topical levels (id.).
Appellants additionally contend Freeman does not teach modules
being assembled and sequenced in an order specified by a predetermined
outline prepared by an author, but instead allows a user to access the
modules according to the user’s needs (Reply Br. 3; App. Br. 13-14).
Appellants also argue Owens states once the author provided enough
topics and relations to the objects, a concept outline is generated from the
information input by the author (Reply Br. 4). According to Appellants,
Owen’s teaching of creating an outline from topics and relations does not
constitute assembling selected electronic content objects using a topical
outline (Reply Br. 4; App. Br. 15). Indeed, according to Appellants, Owens
does not disclose electronic content objects, an electronic topical outline
(id.). Instead, Owens depicts a “concept outline 810” that enables the user to
view the relationship of the key terms/ideas defined in the context database
that is being used for question generation (see col. 14, lines 10-30).
However, Owens does not teach a topical outline that defines a presence and
relative sequence of assembled informational content presented in said
electronic publication or otherwise control navigation between objects
(Reply Br. 4).

Issue : Has the Examiner erred in finding the combination of Alcorn,
Freeman, and Owens would have taught or suggested creating an electronic
topical outline designating topical levels that detail the order of desired
topics and that define a presence and relative sequence of assembled
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information; the electronic content objects comprising self-contained and
independent units encapsulating informational content relating to a single
topic or subtopic; assembling selected electronic content objects using the
topical outline to create a desired electronic publication and navigation
among the content encapsulated within the electronic content object in a
predefined manner that maintains independence of the electronic content
object and of the selected electronic content object; and navigation by the
end user between ” as recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal
Brief. However, as outlined infra, we highlight and address specific
findings and arguments regarding claim 1 for emphasis.
Initially we note Appellants have not explicitly defined the term
“electronic topical outline” in their Specification. Appellants have not
presented any persuasive evidence or argument that the Examiner’s
interpretation (Ans. 69) is unreasonable and in error. Therefore, we adopt
the Examiner’s interpretation.
Appellants argue that Alcorn does not teach assembling electronic
content objects to create said desired electronic publication (Reply Br. 3);
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however, we agree with the Examiner that Alcorn teaches or suggests a
topical outline – an outline of courses offered (Ans. 69).
Appellants’ argument that Freeman does not teach self-contained
modules is unpersuasive as Freeman teaches modules to allow for updating
and customization (See Reply Br. 3 and Ans. 71). Appellants’ argument that
Freeman does not teach accessing the modules in a predetermined order
(Reply Br. 3-4.) is also unpersuasive as the Examiner relies on Owens for
placing information in a predetermined order (Ans. 70-72).
Appellants argue that Owens does not teach assembling selected
electronic content objects using a topical outline (Reply Br. 4). We agree
with the Examiner’s findings and reasoning (Ans. 71-72). We further
emphasize Owens teaches or suggests that most computer programs present
a section of information and then test the individual based on information
presented (col. 2, ll. 40-43). Although Owens characterizes this type of
system as being very inflexible since it does not allow the user to determine
the presentation order of information (col. 2, ll. 49-52), Owens nonetheless
teaches or suggests navigation among the content being limited to a
predefined manner.
Appellants appear to be attacking the references individually. We are
not persuaded by any of Appellants’ arguments that attack the references
separately, because the Examiner’s obviousness rejection is based upon the
combination of Alcorn, Freeman, and Owens. We note that each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show
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nonobviousness by attacking references individually where the rejections are
based on combinations of references.). “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference” but rather “what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
We conclude the proffered combination is no more than a simple
arrangement of old elements, with each performing the same function it had
been known to perform, yielding no more than one would expect from such
an arrangement. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” Id. at 420-21. Appellants have
presented no evidence that combining the techniques of Freeman and Owens
into the system of Alcorn was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19
(2007)).
Accordingly, the Examiner did not err in finding the combination of
Alcorn, Freeman, and Owens would have taught or suggested the invention
as recited in independent claim 1; commensurately recited in independent
claim 33; and in dependent claims 2-20, 26-32, and 34-46, not separately
argued. Nor did the Examiner err in concluding combining the techniques of
Alcorn, Freeman, and Owens would have been obvious to one of ordinary
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skill in the art at the time of the invention. Therefore, the Examiner did not
err in rejecting claims 1-20 and 26-46 under 35 U.S.C. § 103(a) for
obviousness over Alcorn, Freeman, and Owens.

DECISION
The Examiner’s rejection of claims 1-20 and 26-46 under 35 U.S.C.
§ 103(a) as being obvious over Alcorn, Freeman, and Owens 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)(1)(iv) (2010).

AFFIRMED

msc