Ex Parte Kritt et al

Patent Trial and Appeal Board

Nov 6, 2017

14025022 (P.T.A.B. Nov. 6, 2017)

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.
14/025,022 09/12/2013 Barry A. Kritt AUS920130078US2 6346
82531 7590 11/06/2017
Lieberman & Brandsdorfer, LLC
802 Still Creek Lane
Gaithersburg, MD 20878
EXAMINER
AHN, SANGWOO
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
11/06/2017 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 BARRY A. KRITT and SARBAJIT K. RAKSHIT
Appeal 2017-002941
Application 14/025,0221
Technology Center 2100
Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
Opinion for the Board filed by MICHAEL J. ENGLE, Administrative Patent
Judge.
Opinion Dissenting-in-Part filed by JEFFREY S. SMITH, Administrative
Patent Judge.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—5 and 8—11, which are all of the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 3.
Appeal 2017-002941
Application 14/025,022
Technology
The application relates to “[selectively applying format attributes of a
source to the content of a destination.” Spec. Abstract. “[Fjormat attributes
include . . . font size, color, font style, justification, etc.” Spec. 127.
Claim 1 is illustrative and reproduced below:
1. A method comprising:
capturing one or more attributes associated with
formatting content of one or more sources, including capturing
one or more first attributes associated with formatting first
content of a first source;
presenting an interface to facilitate selection of the
captured attributes, wherein the interface displays one or more
listings of respective captured attributes, including a first listing
of the captured first attributes, and wherein each listing
comprises attributes organized into one or more respective
categories;
selecting one or more elements from at least the first
listing, wherein an element is selected from the group consisting
of: an attribute, a category, and a combination thereof;
responsive to selecting a destination different from the
source, copying each selected element; and
formatting content of the selected destination, including
applying each copied element to the selected destination content.
Rejection
Claims 1—5 and 8—11 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Fitzpatrick et al. (US 2003/0174174 Al;
Sept. 18, 2003) and Kaila et al. (US 2012/0030378 Al; Feb. 2, 2012). Final
Act. 2.
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ISSUES
1. Did the Examiner err in finding a person of ordinary skill in the
art would have been motivated to combine Fitzpatrick and Kaila for
purposes of claim 1 ?
2. Did the Examiner err in finding Fitzpatrick teaches or suggests
“merging the selected first and second elements, and wherein the merged
attributes are applied to the destination content,” as recited in claim 5?
ANALYSIS
Claims 1—4 and 8—11
The invention generally relates to selecting a subset of formatting
attributes (e.g., font size and color) where the attributes are organized by
category. An example is shown in Figure 4, which is reproduced below.
Figure 4 shows “a window (402) enabling the selection or de-selection
of object attributes” that are “categorized for navigation.” Spec. 129. The
categories can be expanded or collapsed, such as the “Font” category being
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Application 14/025,022
expanded to reveal the attributes “Font Name” and “Color,” for example.
Id. 130. Both attributes and categories can be selected using a checkbox
next to each item, with an “x” notation indicating an item has been selected.
Id. 129.
Similarly, claim 1 recites displaying “one or more listings” of
“attributes associated with formatting content” wherein “each listing
comprises attributes organized into . . . categories.” The claim further
recites selecting one or more attributes or categories from a listing to be
copied from a source and applied to a destination.
The Examiner finds the prior art Fitzpatrick teaches copying and
applying a subset of formatting attributes from a source to a destination.
Final Act. 3. Figure 6 of Fitzpatrick is reproduced below.
In Figure 6 of Fitzpatrick, selecting a source object 14 with a cursor
3a provides a menu 15 containing an “exemplary list” of formatting
attributes such as “Font”; “Color”; and “Bold.” Fitzpatrick || 18, 28. An
“x” notation next to each item allows the user to select or deselect each item
before selecting the “OK” button. Id. Thus, the menu “allows the user to
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Application 14/025,022
select a subset of the source object attributes and to transfer only the
attributes in that subset to the preselected target object.” Id. 127.
The Examiner finds “Fitzpatrick does not disclose the concept of
organizing the attributes into one or more respective categories.” Final Act.
3. “However, this concept was well known in the data processing art before
the effective filing of the claimed invention. For instance, Kaila discloses in
Figure 9 and paragraph 69 an expandable menu presented for a selection
process, comprising a plurality of nested menu items.” Id. at 3^4.
Kaila generally relates to synchronizing data between a computing
device and a mobile device, such as a mobile phone or PDA. Kaila Tflf 3—6.
The relevant portion of Kaila’s Figure 9 is reproduced below.
“FIG. 9 illustrates a configurable and expandable menu 900 presented
during a selection process” when selecting what data to synchronize. Kaila
1 69. As explained by Kaila:
The menu 900 comprises a plurality of nested menu items,
thereby facilitating selecting synchronization options at a
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Application 14/025,022
plurality of levels of specificity. Higher level menu items are
expandable or collapsible by user action to reveal or hide lower
level menu item[s]. For example, the “synchronize media” item
915, can be expanded to reveal sub-items 920 by toggling
expansion box 922, for example by mouse click. User selection
of items to be synchronized may proceed by navigating to menu
items and selecting them for example using selection boxes such
as boxes 924 and 926.
Kaila 1 69 (emphasis added).
The Examiner finds and concludes:
The concept of organizing attributes into one or more categories,
the only concept missing in Fitzpatrick, had been such a well-
known idea in the data processing art as evidenced by the
teachings of Kaila that one of ordinary skill in the art would have
found it obvious to apply Kaila’s concept to Fitzpatrick’s overall
method in order to facilitate selection of options in a more
efficient, organized way by presenting the options via multiple
levels of specificity, providing better presentation and user
convenience.
Ans. 2—3.
Appellants contend the Examiner’s “rationale is tantamount to a
conclusory statement of obviousness” and “the Examiner has failed to
provide an objective reason to combine the teachings of Fitzpatrick and
Kaila.'''’ App. Br. 14. In particular, Appellants argue “there is no teaching,
suggestion, or motivation within the cited references of Fitzgerald and Kaila
to support the combination proposed by the Examiner.” Id. Thus, according
to Appellants, the Examiner relies on impermissible hindsight. Id. at 16—17.
The Supreme Court has unambiguously rejected Appellants’ argument
that there must be a teaching, suggestion, or motivation in the references
themselves. App. Br. 14. “The obviousness analysis cannot be confined by
a formalistic conception of the words teaching, suggestion, and motivation,
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Application 14/025,022
or by overemphasis on the importance of published articles and the explicit
content of issued patents.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). “Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” Id. at 420.
Thus, a factfinder “need not seek out precise teachings directed to the
specific subject matter of the challenged claim” and “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id. at 418.
Here, Appellants have not sufficiently addressed the Examiner’s
findings that organizing attributes into categories—and the benefits of such
organization—were well-known in data processing, as evidenced by the
example of Kaila. See, e.g., Kaila 169. Nor have Appellants identified any
unexpected result from organizing Fitzpatrick’s formatting attributes into
categories according to such a well-known technique. Thus, given the
record before us, we are not persuaded the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2-4 and 8—11, which Appellants argue are patentable for similar
reasons. See App. Br. 8; 37 C.F.R. § 41.37(c)(l)(iv).
Claim 5
Claim 5 recites “merging the selected first and second elements, and
wherein the merged attributes are applied to the destination content.”2
2 Solely for this appeal, we assume the selected first element refers to claim
1 ’s “selecting one or more elements from at least the first listing” and the
selected second element refers to claim 4’s “selecting an element from the
second listing.” In the event of further prosecution, however, the Examiner
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Application 14/025,022
The Examiner relies on Fitzpatrick for these limitations. Final Act. 4.
The Examiner finds the same result could be achieved by the user first
applying Attribute Set A to a target and then applying Attribute Set B to the
same target (with Attribute Set B presumably including only attributes not in
Attribute Set A). Ans. 6. We agree with Appellants, however, that merely
achieving the same end result fails to teach the method as claimed. See In re
Cox, 342 F.2d 1017, 1019 (CCPA 1965) (“While it is true that both methods
accomplish the same ultimate result, and may possibly utilize the same
apparatus, the paths by which the goal is reached are conceptually very
different” and therefore “appellant’s method would not have been obvious”).
Applying one attribute set and then applying a second (as in Fitzpatrick) is a
different method than merging the attributes and then applying the merged
attributes (as in claim 5). Reply Br. 5—6. We agree with Appellants that
claim 5 recites “the merged attributes are applied,” and the past tense of
“merged” requires that the attributes be merged before they are applied. Id.
Here, “the merged attributes” refers to the results of “merging the selected
first and second elements” (in claim 5), where an “element” is an “attribute,”
a “category” of attributes, or a “combination thereof’ (in claim 1).
Alternatively, the Examiner finds “Fitzpatrick’s disclosure of enabling
the user to manually define ... a new set of attributes, which may comprise
attributes . . . captured from different source objects,. . . reads on the
disputed claim language.” Ans. 7 (emphasis omitted). Although we agree
with the Examiner that Fitzpatrick discloses manually defining a new set of
may wish to consider whether claim 5 is indefinite because the selected
second element could also refer to a second element from claim 1 ’s
recitation of “selecting one or more elements from at least the first listing.”
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attributes (Fitzpatrick 132), we agree with Appellants that “Fitzpatrick does
not teach the attributes in the manually defined attribute set are extracted
attributes, let alone extracted attributes from multiple sources. Fitzpatrick
does not teach a single set of attributes having multiple sources.” Reply Br.
7 (emphasis omitted). The Examiner provides no citation or further support
for “Fitzpatrick’s disclosure” of defining a new attribute set “from different
source objects,” and our review of Fitzpatrick does not find support for such
a “disclosure” either. See Ans. 7; Fitzpatrick 132. Thus, the “disclosure” of
Fitzpatrick relied upon by the Examiner is not sufficiently supported by the
record.
To the extent the Examiner is proposing it would have been obvious
to modify Fitzpatrick, “obviousness concerns whether a skilled artisan not
only could have made but would have” a reason to make the modifications
of prior art to arrive at the claimed invention. Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015). The reason for modifying the prior
art need not come from a teaching, suggestion, or motivation within a prior
art reference itself, and the Examiner “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418. For example, potential reasons to modify the prior art
include “design incentives and other market forces [that] prompt variations”;
“the background knowledge possessed by a person having ordinary skill in
the art”; “the simple substitution of one known element for another”; or a
“combination of familiar elements according to known methods . . . [that]
does no more than yield predictable results.” Id. at 416—18. Regardless of
the specific reason for modifying the prior art, the Supreme Court is clear
that “this analysis should be made explicit.” Id. at 418. Here, the Examiner
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Application 14/025,022
has not sufficiently explained why a person of ordinary skill in the art would
have defined a new set of attributes as a merged set from two different
sources. At best, the Examiner has only said that a person of ordinary skill
could do so (Ans. 7), which under KSR fails to explain why the modification
would have been obvious. Moreover, it is unclear how manually defining a
new attribute set would display the listings of captured attributes required in
claims 1 and 3, from which claim 5 depends. And, as noted above, merely
achieving the same end result fails to teach the method as claimed. Cox, 342
F.2d at 1019.
Accordingly, we do not sustain the Examiner’s rejection of claim 5.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1—4 and 8—11. We reverse the Examiner’s decision rejecting claim 5.
No time for taking 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-IN-PART
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY A. KRITT and SARBAJIT K. RAKSHIT
Appeal 2017-002941
Application 14/025,022
Technology Center 2100
Before JEFFREY S. SMITH, BRUCE R. WINSOR, and
MICHAEL J. ENGLE, Administrative Patent Judges.
SMITH, Administrative Patent Judge, dissenting.
I dissent from the decision to reverse the rejection of claim 5. In my
view, the Examiner established a prima facie record that the elements of
claim 5 were known, and yield no more than one would expect when
performing the known functions of the known elements. In my view,
Appellants did not provide persuasive evidence or argument to rebut the
Examiner’s prima facie record.
The Examiner finds “merging the selected first and second elements,
and wherein the merged attributes are applied to the destination content” as
recited in claim 5 is rendered obvious by Fitzpatrick’s teaching of a user
transferring a first source object and corresponding attributes to a target, and
also transferring a second source object and corresponding attributes to the
target, either sequentially or simultaneously. Ans. 6.
Appeal 2017-002941
Application 14/025,022
Appellants contend claim 5 requires combining selections from the
two attribute sets, then applying the combined set to the target. Reply Br.
5—6. “Unless the steps of a method actually recite an order, the steps are not
ordinarily construed to require one.” Interactive Gift Express, Inc. v.
CompuServe Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001). Here, neither claim
5 nor the Specification recites or requires combining selections from
attribute sets, then applying the combined set to the target, in this order.
Further, claim 5 does not even recite merging attributes, but rather, recites
“merging the . . . first and second selected elements.” Contrary to
Appellants’ contention, the disputed claim does not recite merging attributes.
Appellants’ argument is not commensurate with the scope of the
claim. Appellants’ argument also does not provide persuasive evidence or
argument to rebut the Examiner’s finding that the scope of claim 5
encompasses sequentially applying first and second source objects, with
corresponding first and second attributes, to the target. Further, Appellants’
argument does not address the Examiner’s additional finding that Fitzpatrick
teaches merging attributes by simultaneously applying two sources to a
target. On this basis alone, I would affirm the rejection of claim 5.
Cumulative to the Examiner’s findings discussed above, which show
claim 5 is unpatentable, the Examiner additionally finds Fitzpatrick teaches a
user can manually combine attributes from different source objects into a
combined set of attributes, and apply the combined set of attributes to the
target. Ans. 7. Appellants contend the manually defined attributes of
Fitzpatrick do not have any source objects, and are not extracted from
multiple source objects. Reply Br. 6—7. According to Appellants,
Fitzpatrick does not teach a single set of attributes that has multiple sources.
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Reply Br. 7.
However, Appellants do not persuasively show error in the
Examiner’s findings. In particular, Appellants’ contention that the manually
defined objects of Fitzpatrick do not have a source and are not extracted
from sources are (a) not responsive to the Examiner’s findings that the
functions of Fitzpatrick include a user manually selecting attributes from
sets of attributes captured from source objects (Ans. 6—7), and (b)
inconsistent with the teachings of Fitzpatrick. Here, Fitzpatrick teaches
displaying attributes of a source object to a user, as shown in Figure 6, and
Fitzpatrick further teaches attributes can be saved in a corresponding set,
such as sets A and B, and that a user can also manually select and save
attributes for a new set, as shown in Figure 7. The underlying facts of record
support the Examiner’s finding that Fitzpatrick teaches the method step of
claim 5. Appellants do not persuasively rebut the Examiner’s finding.
“[Wjhen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (internal citations
omitted). Here, the Examiner finds Fitzpatrick, by itself, performing its
disclosed functions, yields “merging the selected first and second elements”
as claimed. The record provided by the Examiner establishes that claim 5
simply uses old elements, with each performing the same function it had
been known to perform, and yields no more than one would expect from
such an arrangement. I would affirm the rejection of claim 5.
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