Ex Parte Jung et al

Patent Trial and Appeal Board

Mar 24, 2014

12012216 (P.T.A.B. Mar. 24, 2014)

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, JR.
__________

Appeal 2011-004043
Application 12/012,216
Technology Center 2100
__________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to
methods, systems, devices, products and machines directed to electronically
providing user assistance corresponding to a sensed context of the electronic
device. The Patent Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Intellectual Ventures LLC.
(App. Br. 6.)
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STATEMENT OF THE CASE
Claims 1-30 are on appeal. Claim 1 is representative and reads as
follows:
1. A method, comprising:
receiving a signal indicative of a user-selected portion of a manual
pertaining to an apparatus that includes an electronic device;
sensing a context of the electronic device;
searching a file for an assistance pertaining to the apparatus and
corresponding to the user-selected portion of the manual and the sensed
context; and
generating a signal indicative of the assistance pertaining to the
apparatus and corresponding to the user-selected portion of the manual and
the sensed context,
wherein the manual is physically distinct from the apparatus.

(Emphasis added.)

The Examiner rejected the claims as follows:
• claims 1, 2, and 4-30 under 35 U.S.C. § 103(a) as unpatentable over
Ludtke2 and Sullivan,3 and;
• claim 3 under 35 U.S.C. § 103(a) as unpatentable over Ludtke,
Sullivan and Mattsson.4

OBVIOUSNESS
I. The Rejection of Claims 1, 2, and 4-30
The Examiner’s findings are set forth in the Answer. (Ans. 3-15.) In
particular, the Examiner found that Ludtke taught the claimed method except

2 Patent No. US 6,584,496 B1 issued to Harold Aaron Ludtke, Jun. 24, 2003.
3 Patent Application Publication No. US 2003/0016238 A1 by Timothy
Rand Sullivan et al., published Jan. 23, 2003.
4 Patent No. US 7,129,927 B2 issued to Hans Mattsson, Oct. 31, 2006.
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for the steps of sensing a context of the electronic device, and using the
sensed context when (i) searching a file for an assistant pertaining to the
apparatus and (ii) generating a signal indicative of assistance. (Ans. 3-4.)
The Examiner found that Sullivan, however, taught a similar help system
which utilized information relating to the current context of the device to
provide help topics. (Id. at 4.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
the help system of Ludtke to include the context-sensing help engine of
Sullivan to provide a help system for an electronic device that includes:
sensing a context of the electronic device; searching a file for an assistance
pertaining to the apparatus and corresponding to the user-selected portion of
the manual and the sensed context; and generating a signal indicative of the
assistance pertaining to the apparatus and corresponding to the user-selected
portion of the manual and the sensed context. (Id.) The Examiner reasoned
that the person of ordinary skill in the art “would have been motivated to
make such a combination for the advantage of filtering and prioritizing help
topics deemed most relevant to the user.” (Id.)
Appellants contend that “Sullivan fails to teach or suggest ‘sensing a
context of the electronic device,’ as presently recited in Claim 1.” (App. Br.
34.) Appellants assert that, in Sullivan, “each component of the application
provides context information relating to that component and the overall
context of the application is determined based on context information
received from each component.” (Id.) According to Appellants, “because
Sullivan merely describes determining a context of a single application of a
computing device without determining the context of the device as a whole,
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. . . one of ordinary skill in the art would determine that Sullivan fails to
teach or suggest [sensing a context of the electronic device].” (Id.)
Further, according to Appellants,
[B]ecause the combination of Ludtke and Sullivan does not
teach or suggest “sensing a context of the electronic device,” it
logically follows that the combination of Ludtke and Sullivan
also cannot teach or suggest “searching a file for an assistance
pertaining to the apparatus and corresponding to the user-
selected portion of the manual and the sensed context” and
“generating a signal indicative of the assistance pertaining to
the apparatus and corresponding to the user-selected portion of
the manual and the sensed context,” as presently recited in
Claim 1 (emphasis added).

(Id. at 35.)
Additionally, Appellants assert that the Examiner has not articulated
reasoning with rational underpinnings to support a motivation to combine
the teachings of Ludtke and Sullivan. (See App. Br. 39.) According to
Appellants, the Examiner has based the present rejection on a “‘mere
conclusory statement’” (id.) and impermissible hindsight (id. at 37).
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness for the reasons
discussed by the Examiner. (See Ans. 16-19.) In particular, we are not
persuaded of nonobviousness by Appellants’ assertion that “Sullivan fails to
teach or suggest ‘sensing a context of the electronic device,’ as presently
recited in Claim 1.” (App. Br. 34.) Sullivan states that its “invention relates
to a mechanism that employs a context-sensitive help engine such that the
user is presented with help topics that are relevant to a current overall
context of the application.” (Sullivan [0002].) According to Appellants,
Sullivan does not disclose “sensing a context of the electronic device,” as
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recited by independent claim 1, because Sullivan determines “a context of a
single application of a computing device without determining the context of
the device as a whole . . . .” (App. Br. 34.) The claim, however, does not
require sensing a context of the electronic device “as a whole.” Rather, as
the Examiner explained, “[n]o specific claim language is present to further
define and limit the meaning of the context of the device.” (Ans. 17.)
Indeed, the Specification states that “the sensed context may include
sensing a context extrinsic to the electronic device, an environment extrinsic
to the electronic device, and/or a context intrinsic to the electronic device.”
(Spec. [0083].) Further, the Specification explains, “sensing a context
intrinsic to the electronic device may include sensing a configuration
context, a software context intrinsic to the electronic device, and/or a
hardware context.” (Id. at [0084].) The Examiner, therefore, reasonably
interpreted the claim broadly, see In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004), to include “determining a context of a
single application of a computing device.” (Ans. 17.) The Examiner
appropriately reasoned that because “the sensed context is related to the
application which resides within the computing device,” i.e., a context
intrinsic to electronic device, “sensing such an application context is
analogous to the claimed ‘sensing a context of the electronic device.’” (Ans.
17.)
We are also not persuaded of nonobviousness by Appellants’
assertions that the Examiner did not provide a motivation to combine the
references and that the rejection relies on impermissible hindsight. (See
App. Br. 35-39.) The Examiner explained that a person of ordinary skill in
the art at the time the invention was made would have been motivated to
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modify the help system of Ludtke to include the context-sensing help engine
of Sullivan to provide a help system for an electronic device that employs
the sensed context to advantageously filter and prioritize help topics most
relevant to the user. In other words, the motivation to combine the teachings
of Ludtke and Sullivan is to provide a help system that generates more
relevant and effective results. Thus, we find that the Examiner articulated
reasoning with rational underpinnings to support a motivation to combine
the teachings of Ludtke and Sullivan, see In re Kahn, 441 F.3d 977, 989
(Fed. Cir. 2006), and such reasoning does not rely upon impermissible
hindsight, see In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Accordingly, we affirm the rejection of independent claim 1.
For each of independent claims 13, 21, 26, and 28, Appellants assert
that these claims “recite features similar to those recited in . . . Independent
Claim 1, [and are therefore] patentable over the combination of Ludtke and
Sullivan for at least the foregoing reasons.” (See App. Br. 45, 53, 60, 67.)
Accordingly, we affirm the rejection of claims 13, 21, 26, and 28 for the
reasons discussed regarding the rejection of independent claim 1.
Appellants do not raise additional arguments for the rejection of the
dependent claims, therefore, the dependent claims fall with their respective
independent claims.
II. The Rejection of Claim 3
The Examiner found that the combination of Ludtke and Sullivan
teach the method of claim 1, as discussed regarding the rejection of claim 1.
(Ans. 15.) The Examiner added Mattson to the combination to address an
additional limitation recited in dependent claim 3. (Id. at 15-16.)
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Appellants contend only that “Mattson does not remedy the
deficiencies in Ludtke and Sullivan set forth above with respect to
Independent Claim 1, nor does the USPTO make any assertions to that
effect.” (App. Br. 38.)
Accordingly, we affirm the rejection of claim 3 for the reasons
discussed regarding the rejection of independent claim 1.

SUMMARY
We affirm both of the Examiner’s rejections.

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

cdc