Ex Parte DeVincent

Patent Trial and Appeal Board

Dec 18, 2018

12780762 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/780,762 05/14/2010
116 7590 12/20/2018
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Marc DeVincent
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.
LWL-47539US1 1397
EXAMINER
EVANS, KIMBERLYL
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC DEVINCENT
Appeal2017-000612
Application 12/780,762 1
Technology Center 3600
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 4--9, 11, 13, 16, 17, and 20-24. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 The Appellant identifies Marc De Vincent as the real party in interest.
Appeal Br. 3.
Appeal2017-000612
Application 12/780,762
ILLUSTRATIVE CLAIM
4. A method of manufacturing a book encompassing a
customized life story comprising the steps of:
presenting to a subject specific pre-determined
interview questions;
electronically recording on a recording device the
oral responses of the subject to said specific interview
questions;
a computer converting said electronically recorded
oral responses of the subject into a transcription;
the computer capturing one or more physical items
into one or more electronic images;
automatically organizing, using a computer, said
transcription and said electronic images into a draft
manuscript;
providing the draft manuscript to the subject for
review by the subject;
receiving editorial changes to said draft manuscript
from the subject for use in creating a final manuscript;
choosing one of said electronic images for use on a
cover or dust jacket; and
printing at least one physical copy of the final
manuscript as a physical book.
CITED REFERENCES
The Examiner relies upon the following references:
Schlutius US 2002/0136601 Al
Campagna et al. US 2009/0254802 Al
(hereinafter "Campagna")
Geldner et al.
(hereinafter "Geldner")
WO 2003/071775 A2
2
Sept. 26, 2002
Oct. 8, 2009
Aug. 28, 2003
Appeal2017-000612
Application 12/780,762
REJECTIONS 2
I. Claims 4--9, 11, and 20-24 are rejected under 35 U.S.C. § 112
(pre-AIA), second paragraph, for failing to particularly point out and
distinctly claim the subject matter regarded as the invention. 3
II. Claims 4--9, 11, 13, 16, 17, and 20-24 are rejected under
35 U.S.C. § 101 as ineligible subject matter.
III. Claims 4, 5, 7-9, 11, 13, 16, 17 and 20-22, and 24 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Geldner and Campagna.
IV. Claims 6 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Geldner, Campagna, and Schlutius.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
2 In addition to the enumerated rejections, the Final Office Action (page 6)
also rejects independent claims 9, 13, and 17 under 35 U.S.C. § 112 (pre-
AIA), first paragraph, for failing to comply with the written description
requirement. This rejection is withdrawn. See Answer 2-3. The pre-AIA
version of 35 U.S.C. § 112 applies to this Appeal, because the filing date of
the associated application predates the effective date of Section 4( c) of the
Leahy-Smith America Invents Act (AIA) (September 16, 2012) (re-
designating 35 U.S.C. § 112, ,r 2, as 35 U.S.C. § 112(b)).
3 In regard to the rejection under 35 U.S.C. § 112 (pre-AIA), second
paragraph, the Final Office Action (page 7) refers to only claims 4, 9, and
21. Because claims 4, 9, and 21 are independent claims, the rejection also
applies to their associated dependent claims 5-8, 11, 20, and 22-24. See
Answer 2.
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Application 12/780,762
ANALYSIS
Indefiniteness
The Appeal Brief does not address the rejection under 35 U.S.C.
§ 112 (pre-AIA), second paragraph. See Final Action 7; see also Answer 2.
Accordingly, we summarily sustain the rejection of claims 4--9, 11, and 20-
24 under 35 U.S.C. § 112 (pre-AIA), second paragraph, for failing to
particularly point out and distinctly claim the subject matter regarded as the
invention.
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply"' these basic tools of scientific and technological work.
Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under this
judicial exclusion, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
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transfonn[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 2355.
As to the first step of the Alice framework, the Examiner states, in the
Final Office Action:
The claim( s) is/ are directed to recording/ storing, organizing,
receiving and retrieving information ... printing and providing
the information (book) ... , which is a set of methods for
collecting, comparing and storing information, then
transmitting and generally communicating and providing the
information (via printing or delivering). Examiner asserts that
the particular steps involved ... recording/storing, organizing,
receiving and retrieving information ... printing and providing
the information (book) for a customized life story are based on
a series of data collections ( accumulation of inputs - audio
and electronic) organizing and transmitting/providing/printing
the retrieved (book) information obtained from the database are
drawn to an abstract idea.
Final Action 7-8. The Examiner provides a revised description, in the
Answer, stating that the claims in the Appeal "are directed to an abstract
idea" - specifically, "[t]he claims are directed to a method of
manufacturing a book encompassing a customized life story." Answer 4.
As the Appellant argues (see Appeal Br. 13-14; see also Reply Br. 3),
the Examiner has not identified a concept, to which any of the claims
( considered as a whole) is directed, that has the character of a basic tool of
scientific or technological work, or that is otherwise within the various types
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Application 12/780,762
of fundamental concepts that courts have categorized as abstract ideas.
Indeed, "[t]he 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) ). Although the Examiner states, for example, that "[ t ]he claims
are directed to a method of manufacturing a book encompassing a
customized life story" (Answer 4), the Examiner does not articulate why this
might describe a patent-ineligible abstract idea. In the first step of the Alice
analysis, "[i]t is not enough, however, to merely trace the invention to some
real-world analogy." Data Engine Techs. LLC v. Google LLC, 906 F.3d
999, 1011 (Fed. Cir. 2018).
In view of the foregoing, we are persuaded that the Examiner has not
adequately shown that the claims are directed to judicially excluded subject
matter, under the first step of the Alice framework. Accordingly, we do not
address the second Alice step. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016). We do not sustain the rejection of claims 4--9,
11, 13, 16, 17, and 20-24 under 35 U.S.C. § 101
Obviousness
The Appellant contends, among other arguments, that the Examiner
erred in rejecting independent claim 4 as obvious, because the cited prior art
fails to teach or suggest the claim limitation of "a computer converting said
electronically recorded oral responses of the subject into a transcription."
See Appeal Br. 22-23. With regard to the Geldner reference, the Appellant
argues:
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Nowhere does the reference actually teach that audio is
transcribed (i.e., converted into textual information), and in fact
since the reference is primarily directed at producing a multi-
media presentation, the final result would remain as audio in
order to support the desired final product, which is not textual.
Nowhere does the reference suggest transcribing any of the
recorded audio.
Id. at 23 (emphasis added).
In response, the Examiner states that such "convert[ing] into textual
information," as indicated by the Appellant, is not claimed and that the
recited "converting ... into a transcription" is met by Geldner's disclosure
of "asking the interviewee the interview questions, and recording of the
(audio) interview on a first storage medium and transferring to a computer
workstation for production." Answer 11 ( citing Geldner, page 2, last
paragraph). See also Final Action 16 (citing Geldner Abstract and page 2,
first paragraph).
The Appellant's argument turns on the construction of the claim term
"transcription" - in particular, whether the claimed "transcription" is a text
version (in this instance, of the "electronically recorded oral responses").
See Appeal Br. 23; see also Reply Br. 5.
"During examination, 'claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831,833 (Fed. Cir. 1990)). As the Federal Circuit has explained:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
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Application 12/780,762
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is "consistent with the
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) ( citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259---60 (Fed. Cir. 2010).
In re Smith Int'!, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Sources for claim construction may include intrinsic sources ( such as
the claims, the Specification, and the cited references), as well as extrinsic
sources (such as technical treatises and dictionaries). See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582-84 & n.6 (Fed. Cir. 1996). Yet,
"there is no magic formula or catechism for conducting claim construction,"
nor is there any requirement to "consider[ ] any particular sources" or to
"analyze sources in any specific sequence, as long as those sources are not
used to contradict claim meaning that is unambiguous in light of the intrinsic
evidence." Phillips v. AWHCorp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en
bane). Prior art references considered by the Examiner, during the
prosecution of a patent application, constitute intrinsic evidence that is
available to aid in the construction of claim terms. See V-Formation, Inc. v.
Benetton Grp. SpA, 401 F.3d 1307, 1311-12 (Fed. Cir. 2005) (construing
claim language, in view of a prior art reference that was of record in the
prosecution of the patent-in-suit and that employs the term at issue).
Here, the Specification sheds significant light on the claim
construction issue. Paragraph 8 refers to "transcribing the interview
(manually or automatically)" and, ultimately, "printing a final manuscript
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Application 12/780,762
and video end product," which suggests textual/printable content. Spec. ,r 8.
Further, paragraph 19 states:
After the interview, the preparer transcribes the interview. The
transcription can be manual (by interviewer), by another person
( outsourced), or by means of digital voice software recognition
systems. The transcription is edited, arranged into
chronological or other order, and separated into
sections/ chapters.
Id. ,r 19. The reference to "digital voice software recognition systems,"
above, suggests converting the vocal record to text. Indeed, paragraphs 21
and 24 refer to a "text based and video based" product and a "final printed
version." Further, the flow chart of Figure 1 includes the step of "Audio"
becoming "Text." Id. Fig. 1.
The Specification's sense of "transcription" - meaning a textual
version - is reinforced by other intrinsic evidence found in the prior art of
record. In particular, Liaguno4 discusses speech-recognition technology and
"transcription":
As speech analysis technology improves to the point where
speech recognition-to-text conversion operator produces no
gaps, and enjoys an accuracy compatible with that produced by
a human transcriber, the transcription text will become
superfluous, and any portion of the video can be located by a
free text search of the converted voice-text file.
Liaguno, col. 13, 11. 2-8. Liaguno refers to the conversion of voiced speech
into a textual "transcription."
4 Liaguno et al. (US 5,729,741, iss. Mar. 17, 1998) ("Liaguno") was cited on
an Information Disclosure Statement received by the Office on April 11,
2011.
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Application 12/780,762
In view of the evidence in the above-identified sources, we conclude
that "transcription," recited in claim 4, refers to a text version of the
"electronically recorded oral responses."
The cited portions of the Geldner reference, identified above, do not
teach or suggest "converting said electronically recorded oral responses"
into a text version thereof, as claim 4 requires, under our construction.
Accordingly, we are persuaded of error in the rejection of independent
claim 4, as well as the other independent claims involved in the present
Appeal (claims 9, 13, 17, and 21), each of which contains a similar
"transcription" limitation.
In view of the foregoing, we do not sustain the rejection of claims 4--
9, 11, 13, 16, 17, and 20-24 under 35 U.S.C. § 103(a).
DECISION
We summarily AFFIRM the Examiner's decision rejecting claims the
rejection of claims 4--9, 11, and 20-24 under 35 U.S.C. § 112 (pre-AIA),
second paragraph.
We REVERSE the Examiner's decision rejecting claims 4--9, 11, 13,
16, 17, and 20-24 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 4--9, 11, 13,
16, 17, and 20-24 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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