Ex Parte Kraft et al

Board of Patent Appeals and Interferences

May 17, 2012

11303276 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MAUREEN E. KRAFT, JESSICA J. BROWN,
MICHAEL D. FACEMIRE, and MICHAEL WANDERSKI
____________________

Appeal 2010-0010221
Application 11/303,276
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and THU A. DANG,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corp. (App.
Br. 1.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-9 and 11-26. Claims 10 and 27 have been canceled.
(App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a real-time chat abbreviation translation system
whereupon identifying an abbreviation in a message during a multi-lingual
chat session, a language determiner displays a composite definition of the
identified abbreviation including a first portion in the language of the sender
and a second portion in the language of the intended recipient. (Spec.,
¶[0022], Fig. 1, 2.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A messaging system having a textual translation system
for modifying messages in real-time based on an identity of an
intended recipient, comprising:

a computer device that includes:

a rules database that includes rules for translating
chat abbreviations based on the identity of the intended
recipient;

a system for identifying a chat abbreviation in a
message; and

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a rules engine that associates a set of rules from the
rules database with the intended recipient and applies the
set of rules to the chat abbreviation identified in the
message; and

a language determiner that displays a composite
definition of a chat abbreviation in a multi-lingual chat
session based upon a locale and a language of a sender
and the intended recipient, wherein the composite
definition includes a first portion in the language of the
sender and a second portion in the language of the
intended recipient.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Tett US 5,635,918 Jun. 3, 1997
Hwang US Patent App. Pub. No.: 2004/0260536 A1 Dec. 23, 2004
Wilkinson US Patent App. Pub. No.: 2005/0267738 A1 Dec. 1, 2005
Chan US Patent App. Pub. No.: 2006/0100849 A1 May 11, 2006
(Effectively filed Sep. 30, 2002)
Cheung US Patent App. Pub. No.: 2006/0167992 A1 Jul., 27, 2006
(Filed Jan. 7, 2005)

Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:

2 The Examiner withdrew the 101 rejection previously entered against
claims 18-25. (Ans. 29.)
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1. Claims 1, 3-5, 7, 8, 11, 13, 15, 17, 18, 20, 22, and 25 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Cheung.
2. Claims 2, 6, 12, 14, 19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Cheung and
Tett.
3. Claims 9, 16, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cheung and Hwang.
4. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cheung and Wilkinson.
5. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cheung and Chan.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 5-10.
Representative Claim 1
Dispositive Issue : Have Appellants shown that the Examiner erred in
finding that Cheung’s disclosure teaches or suggests a displaying in a multi-
language chat session a composite definition of a chat abbreviation
including a first portion in the language of the sender and a second portion
in the language of the intended recipient, as recited claim 1.

Appellants argue that the Examiner erred in finding that the Cheung’s
disclosure renders claim 1 unpatentable because the reference does not teach
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or suggest the disputed limitations emphasized above. According to
Appellants, while Cheung discloses a chat session wherein a message from a
sender is forwarded to an English speaking recipient and a Spanish speaking
recipient, the entire chat session is translated for the Spanish speaking
recipient only. Therefore, Cheung does not teach or suggest translating an
identified chat abbreviation in both the sender’s language and the intended
recipient’s language. (App. Br. 6-7). Consequently, Appellants submit that
Cheung’s disclosure teaches away from the claimed invention. (Id.)
In response, the Examiner finds that Cheung’s disclosure of an
English speaking sender chatting with an English speaking recipient and a
Spanish speaking recipient wherein a sent message containing an
abbreviation therein is translated in Spanish for the Spanish speaking
recipient, and wherein the abbreviation can be further defined in both
English and Spanish for the recipients teaches the disputed limitations. (Ans.
23-27.)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. We note at the outset that, as noted by
the Examiner (Ans. 24), the disputed limitation of displaying the identified
chat abbreviation in multi-lingual chat session in the language of the sender
and the intended recipient does not require translating an identified chat
abbreviation in two languages, nor does it even require that the language of
the sender be different from that of the recipient. Upon broadly and
reasonably construing the cited claim limitation, we conclude that it merely
requires displaying a composite definition of a chat abbreviation in a multi-
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lingual chat session, wherein the definition includes a portion in the
language of the sender/recipient (when they speak the same language).
Consistent with this claim construction, we find that Cheung’s disclosure of
displaying a definition for a chat abbreviation in English (Fig. 3B) teaches
the disputed limitations.
Alternatively, even under the narrower construction of the disputed
limitations as argued by Appellants (i.e. the composite definition of the chat
abbreviation includes a first portion in the first language of the sender, and a
second portion in the second language of the recipient,) we find that
Cheung’s disclosure renders the claim unpatentable as maintained by the
Examiner. In particular, we find that Cheng’s disclosure of displaying the
abbreviation definition for the English speaking recipient teaches displaying
a first portion of the definition in the language of the English sender.
Further, because the claim language does not preclude the translation of the
entire chat session into the recipient’s language, we find Cheung’s disclosure
of translating the chat session including the abbreviation therein into Spanish
for the Spanish speaking recipient teaches displaying a second portion of the
definition in the language of the recipient. ¶ [0037]. We therefore find that
the cited disclosures of Cheung merely arrange familiar elements that
perform their ordinary functions to predictably result in multilingual system
that displays together separate portions of an abbreviation definition as a
composite definition. Consequently, we find unavailing Appellants’
argument that the Examiner’s reliance upon the cited disclosure was a
product of impermissible hindsight. (App. Br. 7.)
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Similarly, we find unpersuasive Appellants’ argument that Cheung’s
disclosure teaches away from the translating into the language of the
recipient and the sender. (Id.) It has been held that “[w]hat the prior art
teaches and whether it teaches toward or away from the claimed invention
… is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers
Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995.) “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994.) Teaching an
alternative or equivalent method, however, does not teach away from the use
of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965.)
As noted above, the claim does not require such dual translation into
the different languages of the sender and the recipient. Further, contrary to
Appellants’ position, we find that while the cited description of Cheung
discloses translating for the Spanish recipient only, Cheung does not
discourage the translation the sender’s and the recipient’s languages. As
pointed out by the Examiner (Ans. 25-26), Cheung’s disclosure of
translating the abbreviation for a recipient when it is deemed necessary
proposes another alternative as opposed to criticism, a discredit, or otherwise
a discouragement from translating in the languages of the sender and the
recipient. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004.)
Consequently, Appellants have not shown that Cheung’s disclosure teaches
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away from the claimed invention. On this record, we find Appellants have
failed to show error in the Examiner’s conclusion that Cheung renders claim
1 unpatentable.

As per claims 2-9 and 11-25, Appellants reiterate in substantial detail
the same arguments previously raised for patentability of the claim 1
discussed above. (App. Br. 8-9.) For the same reasons set forth above, we
find such arguments unpersuasive. Further, Appellants argue that the
secondary references relied upon by the Examiner do not cure the noted
deficiencies of Cheung. (Id.) As discussed above, we find no such
deficiencies in Cheung for the cited references to remedy. It follows that
Appellants have not shown error in the Examiner’s rejection of claims 2-9
and 11-25. See 37 C.F.R. § 41.37(c)(1)(vii).
As per claim 26, Appellants argue that Chan’s disclosure of a process
for obtaining a word definition in an electronic document does not teach the
claimed mechanism for providing definitions in a communication
framework (i.e. a chat window.) (App. Br. 9.) These arguments are
unavailing. As noted by the Examiner, because Cheung discloses such a
communication framework environment, it would have been obvious to
incorporate therein Chan’s process for defining a term by passing a mouse
thereupon as such combination would have only required routine skill in the
art. (Ans. 28.) It follows that Appellants have not shown error in the
rejection of claim 26.

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DECISION
We affirm the Examiner’s rejection of claims 1-9 and 11-26 as set
forth above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Vsh