Ex Parte Peters et al

Patent Trial and Appeal Board

Apr 26, 2017

14523250 (P.T.A.B. Apr. 26, 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.
14/523,250 10/24/2014 Edwin W. Peters CAM920130003US2_8150-0483 1598
52021 7590 04/28/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
HO, BINH VAN
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWIN W. PETERS, SHERRY L. PLATEK, NITTY T.
PULIKAN, BALAJI RANGANATHAN, LIVIU RODEAN,
BALASUBRAMANIAN SIVASUBRAMANIAN, and ERIC WOODS
Appeal 2016-008464
Application 14/523,250
Technology Center 2100
Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
CATHERINE SHIANG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 3—7, which are all the claims pending in the
application. Claims 2 and 8—20 are cancelled. (See Amendment received
June 15, 2015). We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
Invention
The disclosed and claimed invention on appeal relates generally “to
note taking within a virtual meeting.” (Spec. 11).
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Application 14/523,250
Representative Claim 1
1. A method of crowdsourcing and consolidating user notes
taken within a virtual meeting comprising:
receiving user notes from one or more meeting attendees;
via a processor, analyzing the received user notes to identify a
key element therein using natural language processing; and
generating consolidated system notes that include the key
element, wherein analyzing the received user notes to identify a
key element therein using natural language processing includes:
analyzing received user notes to identify one or more key
elements therein; and
[L] cross-referencing the analyses of the received user notes to
identify one or more common key elements in the analyses
thereof
(Bracketed lettering added and contested limitation L emphasized).
Rejections
A. Claims 1 and 3—7 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting (OTDP) as being
unpatentable over claims 8—20 of copending Application No.
13/838,731.1
B. Claims 1 and 3—5 are rejected as being unpatentable over Kansal (US
2009/0119246 Al; published May 7, 2009) in view of Kaiser (US
2008/0221893 Al; published Sept. 11, 2008).
C. Claim 6 is rejected as being unpatentable over Kansal, Kaiser, and
Moran et al. (US 6,018,346; issued Jan. 25, 2000) (hereinafter
1 The Examiner indicates that claims 1—7 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting (Final Act. 3).
However, claim 2 is cancelled. We have made appropriate correction above.
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“Moran”).
D. Claim 7 is rejected as being unpatentable over Kansal, Kaiser, and
Yoshida et al. (US 2007/0013945 Al; published Jan. 18, 2007)
(hereinafter “Yoshida”).
Related Appeals
This appeal is related to PTAB Appeal 2016-008341, and copending
Application No. 13/838,731. (App. Br. 1). The instant appeal and Appeal
2016-008341 have the same assignee (IBM Corporation), and have been
filed by the same inventive entity (Peters et al.).
This appeal is also related to PTAB Appeal 2016-004945 (Application
No. 14/216,682) and Appeal 2016-004920 (Application No. 13/839,038),
these appeals also having have the same assignee (IBM Corporation), and
being filed by the same inventive entity (Peters et al.).
Grouping of Claims
We address provisional nonstatutory OTDP rejection A separately,
infra. Based on Appellants’ arguments, we decide the appeal of rejection B
of claims 1,3, and 4 on the basis of representative claim 1. We address
separately rejection B of claim 5, rejection C of claim 6, and rejection D of
claim 7. To the extent Appellants have not advanced separate, substantive
arguments for particular rejected claims or other issues, such arguments are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We disagree with Appellants’ arguments, and we adopt as our
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own: (1) the findings and legal conclusions set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2—8), and (2) the findings,
legal conclusions, and explanations set forth in the Answer in response to
Appellants’ arguments. (Ans. 6—12). However, we highlight and address
specific findings and arguments for emphasis in our analysis below.
Provisional Non-statutory OTDP Rejection A of Claims 1 and 3—7
Regarding provisional OTDP rejection A, Appellants indicate that
they “will make a determination as to the filing of a Terminal Disclaimer
upon indication of allowable subject matter.” (App. Br. 2—3, n.l).
Because Appellants advance no arguments on appeal traversing the
non-statutory OTDP rejection, we pro forma, sustain the Examiner’s
provisional rejection A of claims 1 and 3—7, on the ground of non-statutory
obviousness-type double patenting. (See Final Act. 3).
Rejection B of Representative Claim 1 under §103
Issue: Under § 103, did the Examiner err by finding the cited
combination of Kansal and Kaiser would have taught or suggested contested
limitation L:
cross-referencing the analyses of the received user notes to
identify one or more common key elements in the analyses
thereoj[,]
within the meaning of representative claim l?2 (Emphasis added).
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Cf Spec. 1 63 (“The description of the
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Appellants contest limitation L of claim 1, by contending, inter alia:
Paragraphs [0074]-[0076] of Kaiser are very different from the
claimed "cross-referencing the analyses of the received user
notes to identify one or more common key elements in the
analyses thereof." Kaiser makes no mention of "received user
notes" or "identifying] one or more common key elements in the
analyses thereof." Instead, Kaiser teaches a methodology that
"aligns the handwritten words to nearby spoken words." The
stated purpose of this is to "detect multimodal redundancy and/or
recognize new words." A multimodal redundancy is described by
Kaiser as "the same information is presented in more than one
mode." In essence, Kaiser is aligning the two modes of the
presentation (i.e., the spoken portion with the handwritten
portion) for the purpose of associating written words (symbols)
with spoken words. As described in paragraph [0066] of Kaiser,
"[i]t is possible, by leveraging multimodal redundancy, to
transfer meaning from known symbols in one communication
mode to unknown symbols in another communication."
Therefore, Kaiser fails to teach the claimed "cross- referencing
the analyses of the received user notes to identify one or more
common key elements in the analyses thereof," which the
Examiner admits that Kansal fails to teach.
(App. Br. 8-9).
The Examiner (Final Act. 5) relies on Kaiser (|| 74—76), in
combination with Kansal, to teach or suggest contested limitation L (“cross-
referencing the analyses of the received user notes to identify one or more
common key elements in the analyses thereof'1'’) (Claim 1) (emphasis added).
As an initial matter of claim construction, the Examiner finds Appellants’
arguments unpersuasive, “because the cross-referencing of the claim is not
embodiments disclosed within this specification have been presented for
purposes of illustration and description, but are not intended to be exhaustive
or limited to the form disclosed.”).
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further defined . . . (Ans. 6) (emphasis added). The Examiner reads the
contested claim term “cross-referencing” on Kaiser’s alignment (| 76).
The Examiner finds by “aligning the phonemes, the text is aligned and
therefore cross-referenced as required by the claim.” (Ans. 7). The
Examiner further finds: “Kaiser paragraph [0090] provides an overview of
the alignment, and it is clear that the spoken text and the written text are
being aligned by aligning the underlying phonemes.” (Id.).
We note Appellants’ Specification (| 36) provides a definition for the
claim term a “key element” as “a concept, topic, keyword, key phrase or
noteworthy point that meets a predetermined threshold of significance.”
Given this broad definition, we find Kaiser’s teaching (| 76) of “aligning]
the handwritten words to nearby spoken words” at least suggests “cross-
referencing the analyses of the received user notes3 to identify one or more
common key elements in the analyses thereof ” within the meaning of
contested limitation L of claim 1,4 Moreover, given the absence of a
3 We note the Examiner relies on Kansal (| 24) for teaching collecting
meeting data captured by one or more devices at a meeting (including image,
audio, and video data) wherein “the data can include data created or utilized
during a meeting such as user notes generated in a text editor or a set of
slides presented at the meeting. Collected meeting data can be provided or
otherwise made accessible to process component 120.” (See Final Act. 4)
(emphasis added). We note the Examiner’s obviousness rejection is based
on the combined teachings and suggestions of Kansal and Kaiser.
4 The conclusion of obviousness can be based on the interrelated teachings
of multiple patents and the background knowledge possessed by a person
having ordinary skill in the art. An obviousness “analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
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definition in the Specification for the claim term “cross-referencing,” on this
record, we are not persuaded the Examiner’s reading is overly broad,
unreasonable, or inconsistent with the Specification.* * * * 5
We emphasize “the question under 35 U.S.C. § 103 is not merely
what the references expressly teach but what they would have suggested to
one of ordinary skill in the art at the time the invention was made.” Merck
& Co., Inc. v. Biocraft Laboratories, Inc., 874 F. 2d 804, 807 (Fed. Cir.
1989). (Emphasis added).
This reasoning is applicable here. Because we find a preponderance
of the evidence supports the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness, we sustain the Examiner’s
rejection B of representative claim 1, and rejection B of grouped claims 3
and 4 (not separately argued), which fall with claim 1. See “Grouping of
Claims” supra.
person of ordinary skill in the art would employ.” The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
5 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Rejection B of Dependent Claim 5 under §103
Claim 5 recites: “The method of claim 1, further including: linking
the key element in the consolidated system notes to a relevant portion of the
user notes from which the key element was extracted.”
Regarding the rejection of claim 5, Appellants recite the claim
language, reproduce paragraph 25 of Kansal (as cited by the Examiner —
Final Act. 6), and then merely assert “Appellants’ review of this passage
yields no mention of a link between the system notes and ‘a relevant portion
of the user notes.’” (App. Br. 10—11).
Because Appellants merely recite the language of claim 5 and assert it
is not (literally) taught, without any substantive argument traversing the
Examiner’s rejection, we find Appellants’ argument for claim 5 is
unavailing. See In reLovin, 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.”).
Accordingly, we sustain the Examiner’s rejection B of claim 5 as
being obvious over the combination of Kansal and Kaiser.
Rejection C of Dependent Claim 6 under §103
Appellants contend “[t]he additional reference to Moran does not cure
the argued deficiencies of Kansal and Kaiser.” (App. Br. 9). However, we
find no deficiencies regarding the Examiner’s proffered base combination of
Kansal and Kaiser, for the reasons discussed above regarding claim 1.
Therefore, we find a preponderance of the evidence supports the Examiner’s
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underlying factual findings and ultimate legal conclusion of obviousness for
claim 6. Accordingly, we sustain the Examiner’s rejection C of dependent
claim 6.
Rejection D of Dependent Claim 7 under §103
Appellants contend “[t]he additional reference to Yoshida does not
cure the argued deficiencies of Kansal and Kaiser.” (App. Br. 10).
However, we find no deficiencies regarding the Examiner’s proffered base
combination of Kansal and Kaiser, for the reasons discussed above regarding
claim 1. Therefore, we find a preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for claim 7. Accordingly, we sustain the Examiner’s rejection
D of dependent claim 7.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
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DECISION
We affirm the Examiner’s decision rejecting claims 1 and 3—7 on the
provisional ground of nonstatutory obviousness-type double patenting.
We affirm the Examiner’s decision rejecting claims 1 and 3—7 under
35 U.S.C § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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