Ex Parte Neff et al

Patent Trial and Appeal Board

Jul 18, 2018

14109856 (P.T.A.B. Jul. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/109,856 12/17/2013
138317 7590 07/20/2018
Quarles & Brady LLP (Pearson Edu)
Attn: IP Docket
411 E. Wisconsin Ave.
Suite 2350
Milwaukee, WI 53202
FIRST NAMED INVENTOR
Sam Neff
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.
0211.00.1.US (.00006) 7807
EXAMINER
SYED,FARHANM
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
07/20/2018 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SAM NEFF, RAYMOND GALANG, and
SUNDARARAJAN P ARASURAMAN
Appeal2017-004331
Application 14/109,856
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004331
Application 14/109,856
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
The claims are directed to a network-accessible collaborative
annotation tool. Independent claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of annotating a document comprising:
allowing a first user to access the document, wherein the
document accessed by the first user comprises content provided by a
second user and embedded executable code;
using executable code of the document, detecting an indication
by the first user of a first selection of text in the content;
after the detecting the indication by the first user, using the
executable code, seeking a first suggestion input from the first user;
storing the first suggestion input from the first user, wherein the
first suggestion is stored separately from the document;
after the storing the first suggestion input from the first user,
showing the second user the first suggestion input from the first user;
presenting the second user a first option to accept the first
suggestion input and a second option to reject the first suggestion
input; and
when the second user accepts the first suggestion input, making
a replacement of the first selection of text in the content, provided by
the second user, of the document with the first suggestion input.
1 Appellants indicated that Pearson English Corporation is the real party in
interest. (App. Br. 2).
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Application 14/109,856
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hanson
(hereinafter "Hanson")
Muranaga
(hereinafter "Muranaga")
US 6,507,865 B 1
us 5,671,428
REJECTIONS
The Examiner made the following rejections:
Jan. 14, 1993
Sept. 23, 1997
Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hanson in view of Muranaga. (Final Act. 6-9).
Claims 1-14 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1-20 of copending application 12/390,450. (Final Act. 5---6).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We disagree with Appellants'
arguments, and we incorporate herein and adopt as our own the findings,
conclusions, and reasons set forth by the Examiner. We highlight and
address specific findings and arguments for emphasis in our analysis below.
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Non-statutory Double Patenting
As a preliminary matter, the USPTO electronic records show that
Application No. 12/390,450 (hereinafter '450), used as the basis for the
provisional rejection on the ground of non-statutory obviousness-type
double patenting, was abandoned on September 5, 2017. In view of this
fact, we will not reach this rejection as it is moot. We, therefore, limit our
opinion to the outstanding prior art rejections under 35 U.S.C. § 103(a).
35 us.c. § 103
Claims 1 and 9
Appellants argue that the Examiner erred in rejecting independent
claim 1 as being unpatentable over Hanson in view of Muranaga. (App. Br.
7; Reply Br. 2--4). Appellants present similar arguments for independent
claim 9. (App. Br. 12). Appellants contend "the cited references, taken
singularly or in combination, do not teach or suggest 'using executable code
of the document, detecting an indication by the first user of a first selection
of text in the content' [of the document]." (App. Br. 7-8). Appellants
further contend Hanson and Muranaga do not teach selecting text in the
content. (Id.). Instead, Appellants contend Hanson teaches updating text in
a zaplet after a subsequent action made by the user.
(Id.).
The Examiner finds that Hanson teaches "using executable code of the
document, detecting an indication by the first user of a first selection of text
in the content (e.g. Hanson, see column 13, 11. 19-23, which discloses
subsequent actions by any of the participants of the group to open a message
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will result in the display of the updated images and text content in the
zaplet)." (Emphasis added). (Final Act. 7).
In the Examiner's Answer, the Examiner finds the HTML form is a
document. (Ans. 3 citing Hanson col. 9, 11. 9-14). Further, the Examiner
finds that Hanson teaches a medium or zaplet that allows for communication
and collaboration among participants in a group connected to a network,
using the HTML form. The Examiner maintains the zaplet in the form
includes both static and dynamic content where dynamic content can be
changed and updated by the participants. (Ans. 3; see col. 5, 11. 54---60). The
Examiner further finds the zaplet allows the user to input data into the
interactive region 210, 213 where the user may input a text passage ( e.g.
instance of a first selection of text in the content). (Ans. 3; see Hanson col.
12, 1. 65 to col. 13, 1. 25). The Examiner noted that user input is
contemplated as the first selection of text. The Examiner finds once the
zaplet is opened
s/he inputs data into the interactive region, where for example,
the user may input a text passage ( e.g. instance of a first selection
of text in the content), and other participants may acknowledge
the text passage, where subsequent actions by any of the
participants of the group will result in the display of updated
images and text content in the zaplet.
(Ans. 4). The Examiner also relied upon Muranaga, column 12, lines 30
through 45 to show the feature of storing user comments attached to
documents where the comments may be made by a commentator. (Ans. 5;
Final Act, 8-9).
Appellants' argument focuses on the teachings of Hanson while
failing to consider the teachings of Muranaga. The Examiner in contrast,
explained that the combination of Hanson and Muranaga, teaches or
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suggests "using executable code of the document, detecting an indication by
the first user of a first selection of text in the content", not just using Hanson
alone. One cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references. In
re Merck & Co. Inc., 800 F .2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d 413,425 (CCPA 1981).
Appellants have not persuaded us of Examiner error. In addition,
Appellants have not identified any error in the Examiner rationale (App. Br.
7-8) over the combination of Hanson in view of Muranaga, nor presented
any non-analogous art arguments. Accordingly, for this first reason, we are
not persuaded of Examiner error.
Appellants respond in the Reply Brief that Hanson does not teach the
combined limitations of independent claim 1 which requires "1) a second
user providing content AND 2) a first user selecting text in the provided
content." (Reply Br. 2). Appellants further contend that "[w]hile Hanson
teaches a form receiving input from a participant (arguably the first step),
Hanson does not teach a different participant selecting text [from] the input
to the form." (Reply Br. 3).
First, Appellants have not persuaded us of Examiner error because
Appellants did not raise this argument over the combination of claim
elements in the Appeal Brief. (App. Br. 7-8). Instead, Appellants only
argued Hanson in view of Muranaga "do not teach a user selecting text in
the content of a document," as recited in claim 1. Accordingly, this
argument has been waived as it was raised for the first time in the Reply
Brief without a showing of good cause. See 37 C.F.R. § 4I.41(b)(2) (2012);
see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) ("[T]he reply brief [is not] an opportunity to make arguments
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that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.").
Second, even if we consider Appellants' argument, we are not
persuaded of Examiner error because claim 1 recites "wherein the document
accessed by the first user comprises content provided by a second user."
Claim 1 further recites "detecting the indication by the first user of a first
selection of text in the content." The Examiner cited Hanson as teaching
multiple participants communicating through a medium via a HTML form
containing dynamic regions where the participants can input a text passage
that can be acknowledged, changed and updated by the other participants.
(Ans. 3--4 citing Hanson col. 9, 11. 9--14).
As a matter of claim construction, we apply the broadest reasonable
interpretation of claim terms, consistent with the specification, as would be
understood by one of ordinary skill in the art. In re Am. A cad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 1 does not limit a
"detecting an indication of a first selection of text" to a specific mechanism
to detect indications of a first selection of text. Nor does claim 1 actually
state the mechanism which selection of text might occur. Instead, claim 1
recites that "detecting an indication by the first user of a first selection of
text in the content."
We find the broadest reasonable interpretation of the terms consistent
with the Specification includes a process using code in a document to
"detect" an indication of first selection of text via input of some type by the
first user, such as via mouse, pen, keyboard (Spec. ,r,r 107, 122-123, 166,
204) at a location in the document. In such an event, the document need
only reflect in some form or indicate via highlight, any mark or visual
indicator, a first user having performed a first selection. (See Spec. ,r 281 ).
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The Examiner finds that Hanson teaches the user may input text (Hanson
col. 12, 1. 67) or perform at least a selection of text, using a mouse or
keyboard ( col. 6, 11. 36-37, 45--48). Further, the Examiner finds Hanson
also teaches the dynamic content could be updated "in-place" (Hanson col.
13, 11. 15-16) and asynchronously Hanson (col. 4, 11. 54--55). (Ans. 3).
Hanson teaches "[ e Jach participant can send and receive information that is
current using dynamic regions 210 and 213" (Hanson col. 13, 11. 24--28), so
that participants can accurately respond or opine to the zaplet process. Thus,
providing an input would indicate to each other participant of input or
selection of text because the other would receive said input in the zap let in
the text passage located in the dynamic regions 210 and 213. The input
would be indicated by at least a highlight, any mark or visual indicator
performed by the user during collaboration. Thus, during the continuous
messaging process the first user can comment upon a prior message or
annotation made by the second user (See also Hanson col. 13, 1. 64
"annotation"). Therefore, we are not persuaded of Examiner error, and we
affirm the Examiner's decision to reject independent claim 1 as unpatentable
over the combination of Hanson in view of Muranaga. 2
2 It is noted that Hanson further teaches "the dynamic content may include
binary or textual content. [Hanson teaches t ]he method may also include
asynchronously dynamically updating and dynamically retrieving input from
any of the participants about the content" (Hanson col. 3, 11. 60-67). Hanson
elaborates on the meaning of textual content and collaboration and
indicating to another user of the selection of text. (Hanson col. 13, 11. 50-67
and col. 14, 11. 1-14). Specifically, Hanson discloses:
existing material in the streaming media object can be modified
or deleted, and annotation of text or voice on the object may be
possible. The preferred systems and methods can also support
fixed media in which a participant can add imagery, symbols, or
graphic objects to the fixed media object, such as an image, a
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We also sustain the obviousness rejections of independent claim 9 for
which Appellants do not offer separate arguments for patentability.
Claim 3
With respect to dependent claim 3, the Examiner contends that the
modified teachings of Hanson with Muranaga teach:
displaying a toolbox dialog box comprising a first box and a second
box, wherein the first box comprises the first selection of text, the
second box comprises the first suggestion input, and
the toolbox dialog box is superimposed over at least a portion
of the document (see Figures 4 and 9 which depicts a dialog box that
allows the participants to enter in comments and suggestions).
(Final Act. 10) ( emphasis added).
In the Examiner's Answer, the Examiner maintains that Hanson
"discloses a rich text HTML document that includes any number of dynamic
regions, HTML forms, static HTML content regions, !FRAME/ILA YER
regions etc., where, Hanson (See figure 4) for illustration, illustrates a
virtual white board, or group greeting card, around which a group
of participants is collaborating. For textual content, a group of
participants may cooperate in the evolution of a collection of
text. This may include non-destructive text entry/annotation or
group text modification.
(Hanson col. 13, 11. 63----67 through col. 14, 11. 1----6). Finally, Hanson teaches
reducing conflicts between users attempting to modify or change the same
content by providing the current changes to the content before committing
the input. (Hanson col. 14, 11. 19--20). Thus, Hanson suggests, in other
sections of the disclosure, to the skilled artisan at the time of the invention a
process for group text modification ( e.g. text selection) and dynamically
updating others during the selection process.
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toolbox dialog box, items 310, 312 etc., all of which are superimposed on
the rich HTML page, item 350." (Ans. 4).
Appellants' arguments are persuasive as Hanson Figures 4 and 9 are
examples zap lets and that "Hanson does not teach the zap let being
superimposed over at least a portion of the document being annotated. (App.
Br. 8) ( emphasis added). As a result, we agree with Appellants that Hanson
does not teach a "toolbox dialog box is superimposed over at least a portion
of the document. (App. Br. 8-9). Therefore, we reverse the decision by the
Examiner in rejecting claim 3.
Claims 4 and 5
With respect to dependent claims 4 and 5, Appellants contend for the
same reasons as argued with respect to claim 1 that Hanson "does not teach
selection of text" therefore Hanson and Muranga do not teach allowing a
user to select text in the content of a document and thus do not teach the
limitation in claims 4 and 5 of "using executable code of the document,
detecting an indication by the third user of a second selection of text in the
content, wherein the second selection of text comprises at least a portion of
the first selection of text [or accepted first suggestion input.]" (App. Br. 9-
10).
For the same reasons discussed above, we are not persuaded that the
Examiner has erred in claims 4 and 5 as obvious over the combination of
Hanson in view of Muranaga which teaches an indication by the first user of
a first selection of text. Therefore, we affirm the Examiner's decision to
reject claims 4 and 5 under 35 U.S.C § 103(a).
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Claim 8
With respect to dependent claim 8, the Examiner contends that the
modified teachings of Hanson with Muranga teaches:
sending a notification to the first user to inform the first user that the
first suggestion input was accepted (Hanson, see column 15, lines 28-
30, discloses notifying the participants of the changes made to the
document. The Examiner notes a collaborative creation of a greeting
card is used to illustrate the dynamic updating of content by the
participants).
(Final Act. 15-16).
In the Examiner's Answer, the Examiner "notes that the argument is
similar to the argument as recited in [ claim 1 and 3] and therefore the
Examiner has addressed this argument. (Ans. 6).
We agree with Appellants' that the cited portions of Hanson only
describe displaying the zap let to a participant. (App. Br. 11 ). We also agree
with Appellants that the claim requires "when the second user accepts the
first suggestion input, sending a notification to the first user to inform the
first user that the first suggestion input was accepted" and that Hanson in
view ofMuranaga do not teach or suggest these limitations. (App. 11).
We agree with Appellants that the Examiner has not shown how the
prior art of Hanson or Muranaga teach the specific steps of sending a
notification to the first user when the second user accepts the first suggested
input to notify the first user that the first suggestion was accepted.
Therefore, we reverse the decision by the Examiner in rejecting claim 8.
Claim 11
With respect to dependent claim 11, the Examiner contends the
modified teachings of Hanson with Muranga teaches:
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wherein the position field for each entry in the suggestions
database is a first position field, and each entry in the suggestions
database comprises a second position field, wherein the first
position field indicates a beginning position of a detected
selection, and the second position field indicates an ending
position of the detected selection (Muranga, see Figure 9 and
column 11, lines 1-5, which discloses the document database
contains fields for ID, size, type, date, and name of commentator
of the comment, etc., which illustrates the fields are an intended
use of a database server and similar to the claim features
recited).
(Final Act. 19--20).
In the Examiner's Answer, the Examiner finds wherein the first
position field indicates a beginning position of a detected selection, and the
second position field indicates an ending position of the detected selection.
Additionally,
The Examiner notes that Hanson, see column 11 Lines 55-65,
discloses a zaplet that includes an interaction region that may
include images, such as checkboxes, etc., to select options
created using the electronic form, where the interaction region
further contains a text box that allows a participant to add a text
passage to the zaplet. The zaplet further includes a dynamic
content region that receives the content, where the content can
include text passages that are entered by participants ( e.g.
plurality of users) using the interaction region.
(Ans. 6-7).
Appellants' arguments are persuasive as the cited portions of
Muranaga do not teach the claimed "wherein the first position field indicates
a beginning position of a detected selection, and the second position field
indicates an ending position of the detected selection." (App. Br. 13).
Neither Hanson in column 11, nor Muranaga (col. 11 or Fig. 9) show a first
and second position field entry in a database that indicate beginning or
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ending positions of the detected selection. We find the fields of Muranaga
can contain ID, size and date, but no mention of storing position information
of detected selections. Therefore, we reverse the decision by the Examiner
in rejecting claim 11.
DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 1-2, 4--7, 9, and 12-14 based upon obviousness under 35 U.S.C
§ 103(a), and we reverse the Examiner's decision rejecting claims 3, 8 and
11 based upon obviousness under 35 U.S.C § 103(a). We do not reach the
Examiner's decision to reject claims 1-14 under non-statutory obviousness-
type double patenting over claims 1-20 of co-pending application '450
because it is moot.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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