Ex Parte Dunne et al

Patent Trial and Appeal Board

Mar 29, 2018

14165867 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/165,867 01/28/2014 JONATHAN DUNNE
112978 7590 04/02/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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.
CAM920130086US1_8150-0680 9186
EXAMINER
NGUYEN, LEV
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
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., andPATRICKJ. O'SULLIVAN
Appeal2017-011541
Application 14/165,867
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 APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1-11, 17, 19,
and 20 under 35 U.S.C. § 134(a). Appeal Brief 1. This appeal is related to
appeal number 2017-011546 (Application Number 14/547,642). Appeal
Brief 1. We have jurisdiction under 35 U.S.C. § 6(b) (2012).
We reverse.
Appeal2017-011541
Application 14/165,867
Introduction
The invention is directed to:
[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 ....
Specification i-f 5.
Illustrative Claim
1. A system for dynamically adjusting content for an
interaction impairment comprising:
a data provider capable of providing access to electronic
data, wherein at least one characteristic of the electronic data is
incompatible with an impairment of an impaired user, wherein
said at least one characteristic adversely affects an ability of the
impaired user to utilize the electronic data;
an end-user electronic device configured to allow the
impaired user to interact with electronic data;
a user identification module configured to identify at
least one of an identity of the impaired user and the impairment
of the impaired user; and
a data adjustment module configured to automatically
adjust the at least one incompatible characteristic of the
electronic data prior to presentation by the end-user electronic
device, wherein said adjustment increases the ability of the
impaired user to utilize the electronic data with the end-user
electronic device, wherein
the user identification module further comprises:
an impairment profile associated with the impaired user
that expresses:
acceptable limit values for a plurality of data
characteristics incompatible with the impairment and
a type of processing for handling incompatible data
characteristics.
Rejections on Appeal
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Appeal2017-011541
Application 14/165,867
Claims 1, 2, 4--7, 9, 10, 17, and 20 stand rejected under 35 U.S.C.
§ 102( a)( 1) as being anticipated by Scott (US Patent Application Publication
2006/0189278 Al; published August 24, 2006). Answer 3-8.
Claims 3 and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Scott and Kim (US Patent Application Publication
2005/0134800 Al; published June 23, 2005). Answer 8-9.
Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Scott and Raju (US Patent Application Publication 2008/0256575 Al;
published October 16, 2008). Answer 9-10.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Scott and Sinclair, II (US Patent Application Publication 2006/0139312
Al; published June 29, 2006). Answer 9.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed March 20, 2017), the Reply Brief (filed
September 14, 2017), the Answer (mailed July 14, 2017) and the Final
Action (mailed October 20, 2016) for the respective details.
Anticipation Rejection
Appellants argue, "[i]ndependent claim 1 recites, in part, the
limitations of 'an impairment profile ... that expresses: acceptable limit
values for a plurality of data characteristics incompatible with the
impairment of and a type of processing for handling incompatible data
characteristics.'" Appeal Brief 10. Appellants acknowledge that the
Examiner relied upon Scott to teach the limitations in question and contend
in regard to the "First Office Action":
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Appeal2017-011541
Application 14/165,867
[W]hile paragraph [0067] mentions a user profile that includes
"permanent configuration data," Scott is silent as to precisely
what constitutes "permanent configuration data." Appellants
have been unable to identify any other teaching of a "profile"
within Scott.
Therefore, Scott fails to identically disclose the claimed
invention, as recited in claim 1, within the meaning of 35
U.S.C. § 102.
Appeal Brief 11.
The Examiner does not address Appellants' argument that Scott fails
to disclose an impairment profile as required in claim 1. See Answer 10-11.
Upon reviewing Scott, we agree with Appellants that there is no correlation
between the claimed impairment profile and the user profile disclosed in
Scott. Scott i-f 67. Scott differs from the claimed invention because Scott
requires the impaired user to manually select accessibility options to make
the electronic device's data accessible to the impaired user (Scott i-f 5)
wherein the claimed invention automatically adjusts the electronic data using
the impaired user's profile to make the electronic device's data accessible to
the impaired user (See claim 1 ). Constrained by the record before us, we
reverse the Examiner's anticipation rejection of claims 1 and 17 1, as well as
dependent claims 2, 4--7, 9, 10 and 20. 2
1 The Examiner should also consider whether claim 17 encompasses non-
statutory transitory media such as signals sent over optical or electronic
communication links. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007); see also MPEP § 2106(1) (9th ed., Rev. 11 Mar. 2014) and Ex parte
lvfewherter, 107 USPQ2d 1857, 1859 (PTAB 2013) (precedential opinion).
2 In the event of further prosecution, the Examiner may wish to consider
whether the claims are obvious as the automation of a manual process, such
as an impaired user manually determining to select accessibility options to
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Appeal2017-011541
Application 14/165,867
Obviousness Rejections
We reverse the Examiner's obviousness rejections of dependent
claims 3, 8, 11 and 19 for the same reasons described above with respect to
the anticipation rejection. The Examiner's findings do not show that
additional references remedy the deficiencies of Scott.
DECISION
The Examiner's 35 U.S.C. § 102 rejection of claims 1, 2, 4--7, 9, 10,
17, and 20 is reversed.
The Examiner's 35 U.S.C. § 103 rejections of claims 3, 8, 11, and 19
are reversed.
REVERSED
make an electronic device's data accessible to the impaired user. It is well
settled that there is no invention in merely automating a manual activity. In
re Venner, 262 F.2d 91, 95 (CCPA 1958); see also MPEP § 2144.04(III).
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