10364704 (B.P.A.I. Aug. 17, 2012)

Ex Parte Davis et al

Board of Patent Appeals and InterferencesAug 17, 2012

10364704 (B.P.A.I. Aug. 17, 2012)

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. 10/364,704 02/10/2003 Joel A. Davis 02416; 190206-1700 5988 38823 7590 08/17/2012 AT&T Legal Department - TKHR Attn: Patent Docketing One AT&T Way Room 2A-207 Bedminster, NJ 07921 EXAMINER SAINT CYR, LEONARD ART UNIT PAPER NUMBER 2626 MAIL DATE DELIVERY MODE 08/17/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JOEL A. DAVIS, LARRY G. KENT, JR., W. TODD DANIELL, and BRIAN K. DAIGLE ________________ Appeal 2010-002714 Application 10/364,704 Technology Center 2600 ________________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. Concurring Opinion filed by JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002714 Application 10/364,704 2 SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-4, 6, 7, 11, 13-16, and 18-21: Claims 1-4, 6, 7, 11, 15, 16, and 18-21 stand rejected under 35 U.S.C. § 103(a) as obvious over Trudeau (US 5,987,401; issued Nov. 16, 1999) in view of Burg (US 7,039,040 B1; issued May 2, 2006; filed June 7, 1999). Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious over Trudeau in view of Burg in view of Curry (US 6,993,474 B2; issued Jan. 31, 2006; filed May 17, 2001). We reverse. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection. We reject claims 1-4, 6, and 7 under 35 U.S.C. § 112, ¶ 1, as lacking adequate written description. Additionally, we reject claims 1-4, 6, and 7 under 35 U.S.C. § 112, ¶ 2, as being indefinite. STATEMENT OF CASE Appellants describe the present invention as follows: Systems for translating text messages in an instant messaging system comprise a translation engine for translating text messages into a preferred language of a recipient of the text messages. The systems are preferably configured to send and receive the text messages and to determine whether the text messages that are received in a source language are in the preferred language of the recipients so that the text messages are displayed in the preferred language of the recipients of the text messages. (Abstract). Appeal 2010-002714 Application 10/364,704 3 Independent claims 1 and 11 are illustrative: 1. A method for translating text messages, comprising: receiving a text message in a source language; accessing a storage device on a client processing device to obtain language preferences of a plurality of users; determining whether the source language is similar to a preferred destination language; translating the text message into the preferred destination language when the source language is not similar to the preferred destination language; outputting the text message in the preferred destination language for display in a transcript window; sending a reply text message in the preferred destination language; determining whether the reply text message is in the same language as the preferred language of the reply text message recipient; translating the reply text message into the preferred language of the reply text message recipient when the reply text message language is not the same as the preferred language of the reply text message recipient; displaying the translated reply text message on a display device of the reply text message sender; and receiving and providing authorization information for accessing the user’s IM account, wherein all messages in the transcript window are displayed in the preferred destination language. 11. A method for establishing language preferences, comprising: accessing a storage device on a server processing device to identify language preference for a plurality of users and to Appeal 2010-002714 Application 10/364,704 4 identify a preferred language from a particular user of the plurality of users; saving an indication of the preferred language; and receiving and providing authorization information for accessing the user’s IM account. CONTENTIONS The Examiner finds that Trudeau implicitly teaches the step of “accessing a storage device on a client processing device to obtain language preferences of a plurality of users” as recited in independent claim 1 (Ans. 3). The Examiner relies on an embodiment of Trudeau’s invention where a user sends a text message to other users in a conversation and “[t]he message could be translated into a plurality of languages depending on the users logged into the conversation” (Ans. 11-12 (citing Trudeau, col. 12, ll. 1-7)). The Examiner reasons that, according to this embodiment, the “users profiles information [sic] have to be stored within the client side in order to determine languages of the users based on their [login] information” (Ans. 11). The Examiner relies on the same portions of Trudeau to reject similar limitations found in independent claims 11 (Ans. 6) and 16 (Ans. 7-8). The language preferences recited in claims 11 and 16 are required to be stored on a device in a server. In rejecting claims 11 and 16, the Examiner finds that “users profiles information [sic] have to be stored within the server side in order to determine preference language for each particular user based on his/her [login] information” (Ans. 12-13). That is, the Examiner relies on the same passage for implicit support of two mutually exclusive features that are respectively contained within the two claimed embodiments. Appeal 2010-002714 Application 10/364,704 5 Appellants contend, inter alia, “there is no disclosure in Trudeau of anything being stored on a client processing device, not to mention language preferences of a plurality of users” as recited in claim 1 (App. Br. 8). Likewise, Appellants contend “nowhere in Trudeau is there even a suggestion of accessing a storage device to obtain language preferences of a plurality of users” as recited in claim 11 or 16 (App. Br. 9, 11). In responding to each rejection, Appellants argue, “one can only assume that, at best, Trudeau discloses that the user’s machine translates a message into a format for that user” (App. Br. 8, 10, 12 (citing Trudeau, col. 12, l. 5)). ANALYSIS Appellants’ arguments are persuasive. The Examiner’s proposed combination of Trudeau in view of Burg fails to teach or suggest the limitations of accessing a storage device to obtain language preferences of a plurality of users, as recited in each of independent claims 1, 11, and 16. Trudeau discloses multiple embodiments of his invention. In one embodiment, a user participating in a text-based conversation can request translation of outgoing messages to another language, a “conversation language,” designated by the user (Trudeau, col. 11, ll. 22-24, 39-45). Additionally, the user can set a language preference to translate incoming messages (id., col. 11, ll. 62-67). In an alternative embodiment relied upon by the Examiner, Trudeau’s user is not required to designate a “conversation language”: Although the above embodiments were used with a conversation in which a conversation language was designated, the invention can also be used in situations [where] there is no specified conversation language. The message could be Appeal 2010-002714 Application 10/364,704 6 translated into a plurality of languages depending on the users logged into the conversation. The disadvantage with this approach is that numerous translators are required to translate between the various user languages that may be present. (Trudeau, col. 12, ll. 1-9). In this embodiment, Trudeau does not expressly disclose that the language preferences of a plurality of users participating in the conversation are obtained to translate the messages. The Examiner fails to establish that Trudeau’s method implicitly discloses the step of “accessing a storage device on a client processing device to obtain language preferences of a plurality of users” as required by claim 1. The “language preferences of a plurality of users” need not necessarily or implicitly be stored on Trudeau’s client device because there are other ways to translate a message “depending on the users logged into the conversation.” For example, each user’s machine could convert incoming messages based on the user’s own designated language preference. Alternatively, the message sender could manually set the language preferences for each message recipient. See, e.g., Trudeau, Fig. 8A (depicting drop down menu 706 by which the sender selects the language). As such, we find that the Examiner has not established that Trudeau implicitly teaches or suggests accessing stored “language preferences of a plurality of users” in the manner required by claim 1.1 Furthermore, the Examiner does not maintain that the additionally cited reference, Burg, cures the deficiency of Trudeau. 1 Because the Examiner has not taken the position that it would have been obvious to modify Trudeau’s sending device so as to equip it with the functionality of accessing stored language preferences of a plurality of users, we make no determination whether one of ordinary skill in the art would have found making such a modification would have been obvious. Appeal 2010-002714 Application 10/364,704 7 Accordingly, we will not sustain the Examiner’s rejection of independent claim 1, claims 2-4, or 7, which depend from claim 1, or claim 6,2 which the Examiner appears to have treated as depending from claim 1. Likewise, the Examiner has failed to establish that Trudeau’s claimed method or system must necessarily or implicitly include the similarly recited limitations of accessing stored language preferences, as respectively recited in claims 11 and 16. Accordingly, we will not sustain the Examiner’s obviousness rejection of (1) independent claims 11 or 16, (2) claim 15, which depends from claim 11, or (3) claims 18-21, which depend from claim 16. Regarding the obviousness rejection of dependent claims 13 and 14, the Examiner does not maintain that the additionally cited reference, Curry, cures the deficiency of the combination of Trudeau and Burg. For the reasons set forth above, then, we likewise do not sustain the obviousness rejection of these claims. NEW REJECTION UNDER 35 U.S.C. § 112, ¶ 1 Statutory provision 35 U.S.C. § 112, ¶ 1, reads as follows: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. “Adequate written description means that the applicant, in the specification, must ‘convey with reasonable clarity to those skilled in the art 2 Claim 6 depends from cancelled claim 5. Appeal 2010-002714 Application 10/364,704 8 that, as of the filing date sought, he or she was in possession of the [claimed] invention.’” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (citation omitted) (brackets in original), reh’g en banc denied Sep. 18, 2009. We find claim 1 fails to comply with the written description requirement of 35 U.S.C. § 112, ¶ 1, because the originally filed Specification does not provide adequate support for the claim language “displaying the translated reply text message on a display device of the reply text message sender” (emphasis added). The relevant claim language was added by amendment (Claim Amendment filed Jan. 8, 2007). Appellants’ originally filed Specification discusses displaying the translated reply text message to the recipient, not to the sender as claimed (Spec. 12:3-5; 16:2-4). Appellants’ Appeal Brief points to a generic disclosure of displaying the translated message “at a display device,” without further indicating that the message, as translated, is displayed to the sender (App. Br. 3 (citing Spec. 16:31)). Nowhere does Appellants’ Specification indicate the invention is carried out by displaying the translated text to the sender. Accordingly, Appellants’ originally filed disclosure does not reasonably convey to the artisan that Appellants had possession of the claimed invention at the time of the invention. Pursuant to our authority under 37 C.F.R. § 41.50(b), then, we reject claims 1-4, 6, and 7 under 35 U.S.C. § 112, ¶ 1, as lacking adequate written description. Appeal 2010-002714 Application 10/364,704 9 NEW REJECTIONS UNDER 35 U.S.C. § 112, ¶ 2 Statutory provision 35 U.S.C. § 112, ¶ 2, reads as follows: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Claims 1-4 and 7 We find claim 1 is rendered indefinite under 35 U.S.C. § 112, ¶ 2, because of a lack of antecedent basis for the limitation “the user’s,” which is found in the step of “receiving and providing authorization information for accessing the user’s IM account” (emphasis added). It is not reasonably clear whether “the user,” which is written in the singular form, is intended to refer to one of the claimed “plurality of users” recited in line 4 or some other user. We likewise find dependent claims 2-4 and 7 to be indefinite because none of the limitations of these dependent claims reasonably resolves the ambiguity present in independent claim 1. Claim 6 We find claim 6 is rendered indefinite because it states that it depends from claim 5, which has been canceled. Pursuant to our authority under 37 C.F.R. § 41.50(b), then, we reject claims 1-4, 6, and 7 under 35 U.S.C. § 112, ¶ 2, as being indefinite. DECISION The Examiner’s decision rejecting claims 1-4, 6, 7, 11, 13-16, and 18- 21 is reversed. Appeal 2010-002714 Application 10/364,704 10 We reject claims 1-4, 6, and 7 under 35 U.S.C. § 112, ¶ 1, as lacking adequate written description. We reject claims 1-4, 6, and 7 under 35 U.S.C. § 112, ¶ 2, as being indefinite. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2007). This regulation states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED 37 C.F.R. § 41.50(b) babc Appeal 2010-002714 Application 10/364,704 11 JEFFERY, Administrative Patent Judge, CONCURRING: I concur with the majority’s reversing the Examiner’s obviousness rejection, but I write separately to emphasize that this is, in my view, a close question on this record. Nevertheless, I am convinced that the Examiner has failed to show that Trudeau teaches or suggests accessing a storage device on a client processing device to obtain language preferences of plural users as claimed. Notably, the Examiner repeatedly cites, among other passages, column 10, lines 51-65, of Trudeau in connection with the disputed accessing limitation. Ans. 3, 11-13. The first sentence of that passage notes that “[i]n the above-described embodiments the client machines 106, 310 have included the means for implementing the operations of the invention.” Trudeau, col. 10, ll. 51-53 (emphasis added). I emphasize the phrase “[i]n the above-described embodiments” here, for implementing the “operations of the invention” on client machines apparently applies to Figure 7’s translation control processing functionality described in the immediately- preceding paragraph which describes selecting an appropriate translator if two languages differ, namely (1) the language used by the conference (e.g., the chat room), and (2) the language which the user wants to converse with. Trudeau, col. 10, ll. 18-42; Fig. 7. For example, if the conference language is Spanish and the user language is English, then an English-to-Spanish translator is selected. Trudeau, col. 10, ll. 28-42. Assuming that these functions can be performed on a client machine as noted above, seemingly some sort of storage device—even temporary memory—would be accessed on that machine to obtain and compare these users’ language preferences to select an appropriate translator. That is, Appeal 2010-002714 Application 10/364,704 12 language preferences of (1) chat room users, which in Trudeau’s example, would be the Spanish-speaking speakers participating in that chat room, and (2) the user of that particular machine (English) would seemingly be obtained from a storage device on the client processing device to, at a minimum, compare the preferred languages. Nor does claim 1 preclude the plural users from being considered not only the chat room users, but also collectively the chat room users and the machine user. Nevertheless, although the Examiner cites Trudeau’s column 10, lines 51-53, in connection with the disputed accessing limitation, I cannot say— nor has the Examiner shown—that the Examiner intended to rely on this functionality that arguably applies to Trudeau’s “above-described embodiments” language used in connection with client-machine implementations. Nor will I speculate in that regard here in the first instance on appeal. What I can say, however, is that the Examiner’s articulated position in the Answer is untenable on this record. I therefore join my colleagues in reversing the obviousness rejection and entering new grounds of rejection.