Ex Parte Jung et al

Patent Trial and Appeal Board

Aug 16, 2016

11977748 (P.T.A.B. Aug. 16, 2016)

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.
11/977,748 10/25/2007 Edward K.Y. Jung SE1-0108-US 3010
80118 7590 08/16/2016
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
THERIAULT, STEVEN B
ART UNIT PAPER NUMBER
2179
MAIL DATE DELIVERY MODE
08/16/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD K.Y. JUNG, ROYCE A.LEVIEN, ROBERT W.
LORD, MARK A. MALAMUD, and JOHN D. RINALDO
____________

Appeal 2015-002355
Application 11/977,748
Technology Center 2100
____________

Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
MELISSA A. HAAPALA, Administrative Patent Judges.

HAAPALA, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1 and 3–21, which are all of the claims currently pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-002355
Application 11/977,748

2
EXEMPLARY CLAIM
Claim 1 is exemplary of the subject matter on appeal:
1. A method, comprising:
displaying a first electronic content in a manner
perceivable by a person;
acquiring sensor data indicative of a response by the
person to the displayed first electronic content, the acquired
sensor data to not include data directly inputted by the person
using a user direct-input device;
determining an indication of an expression by the person
corresponding with the displayed first electronic content, the
determination based at least partially on the sensor data
indicative of a response acquired via at least one of a wearable
or mountable sensor operable to sense the sensor data indicative
of the response;
determining an attribute of the displayed first electronic
content;
causing a search of at least one of a web database or a web
index for a second electronic content corresponding to the
determined indication of an expression by the person
corresponding with the displayed first electronic content and to
the determined attribute of the displayed first electronic content;
and
selecting the second electronic content from a result of the
search.

REJECTIONS ON APPEAL
Claim 19 stands rejected under 35 U.S.C. § 112(b), second paragraph,
as being indefinite.
Claim 4 stands rejected under the ground of nonstatutory double
patenting as being not patentably distinct over claim 1 of Jung (US
8,112,407 B2; Feb. 7, 2012).
Appeal 2015-002355
Application 11/977,748

3
Claims 1 and 3–20 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Begole (US 2007/0150916 A1; June 28,
2007), Berg (US 2008/0065468 A1; Mar. 13, 2008), and Cecchi (US
2007/0162505 A1; July 12, 2007).1
Claims 21 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Begole, Berg, Cecchi, and Tan (US 2009/0062679
A1; Mar. 5, 2009).

ANALYSIS
We have reviewed the Examiner’s rejections in consideration of
Appellants’ contentions and the evidence of record. We disagree with
Appellants’ conclusions that the Examiner’s rejections of the claims are in
error.
35 U.S.C. § 112 and Double Patenting Rejections
Appellants do not submit any arguments contesting the 35 U.S.C.
§ 112 and double patenting rejections. App. Br. 7. Accordingly, we
summarily sustain these rejections. See Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of
rejection to the Board, . . . the Board may treat any argument with respect to
that ground of rejection as waived.”).

1 We observe there is a typographical error in the header of this rejection,
which states the rejection is under 102(a) as anticipated by the cited
references. We hold the error to be harmless because the section header and
body of the rejection clearly identifies the rejection as a 35 U.S.C. § 103(a)
rejection. See Final Act. 8–12.
Appeal 2015-002355
Application 11/977,748

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35 U.S.C. § 103(a) Rejections
Appellants contend that Begole, Berg, and Cecchi do not show or
suggest the express language recited in independent claims 1, 4, and 11, and
dependent claims 3, 4, and 12–14. App. Br. 73–169. Appellants’ arguments
for each claim essentially consist of copying the Examiner’s findings,
reciting the claim language, copying portions of each reference, and
asserting each reference does not disclose the recited claim language. See
id. These arguments amount to no more than reciting the claimed language
and alleging the cited prior art references are deficient, which are not
separate arguments for patentability of the claims. See 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”).
The Examiner has met the procedural burden of establishing a prima
facie case of obviousness by stating reasons for the rejections, together with
information and references as may be useful to the applicant in judging the
propriety of continuing prosecution. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). Furthermore, the Examiner provides a comprehensive
response to Appellants’ contentions and explains in detail how the cited
Appeal 2015-002355
Application 11/977,748

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combination of references teach the limitations of the contested claims. See
Ans. 18–47. The Court in Jung spoke approvingly of the Board’s
longstanding practice of requiring an Appellant to identify the alleged error
in an Examiner’s rejection, with the panel then reviewing the rejection for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Jung, 637 F.3d at 1365–66
(citing Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)).
Because Appellants fail to present substantive argument and supporting
evidence persuasive of Examiner error in the 35 U.S.C. § 103(a) rejections
of the claims, we sustain these rejections.

DECISION
We affirm the Examiner’s decision to reject claims 1 and 3–21.
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.
§ 41.50(f).

AFFIRMED