Ex Parte Peters et al

Patent Trial and Appeal Board

Apr 27, 2017

13838731 (P.T.A.B. Apr. 27, 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.
13/838,731 03/15/2013 Edwin W. Peters CAM920130003USl_8150-0338 1004
52021 7590 05/01/2017
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
05/01/2017 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 2016-008341
Application 13/838,731
Technology Center 2600
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 8, 10-15, and 17—20, which are all the claims pending in
the application. Claims 1—7, 9, 16, and 21—27 are cancelled. (See
Amendment filed June 16, 2015). We have jurisdiction under 35 U.S.C.
§ 6(b).
We Affirm.
Appeal 2016-008341
Application 13/838,731
Invention
The disclosed and claimed invention on appeal relates generally “to
note taking within a virtual meeting.” (Spec. 11).
Representative Claim 8
8. A system for crowdsourcing user notes taken within a
virtual meeting comprising:
a processor programmed to initiate executable operations
comprising:
receiving user notes from one or more meeting attendees;
analyzing the received user notes to identify a key element
therein using natural language processing; and
generating consolidated system notes that includes 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 15 and 17—20 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
B. Claims 8, 10-15, and 17—20 are provisionally rejected on the ground
of nonstatutory obviousness-type double patenting (OTDP) as being
unpatentable over claims 1—12 of copending Application No.
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14/523,250.1
C. Claims 8, 10-12, 15, and 17—19 are rejected as being unpatentable
over Kansal (U.S. 2009/0119246 Al) in view of Kaiser (U.S.
2008/0221893 Al).
D. Claim 13 is rejected as being unpatentable over Kansal, Kaiser, and
Moran et al. (U.S. 6,018,346) (hereinafter “Moran”).
E. Claims 14 and 20 are rejected as being unpatentable over Kansal,
Kaiser, and Yoshida et al. (U.S. 2007/0013945 Al) (hereinafter
“Yoshida”).
Related Appeals
This appeal is related to PTAB Appeal 2016-008464, stemming from
co-pending Application No. 14/523,250. (App. Br. 1). The instant appeal
and Appeal 2016-008464 have the same assignee (IBM Corporation), and
are 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 PTAB Appeal 2016-004920 (Application No.
13/839,038). These appeals also have the same assignee (IBM Corporation),
and are filed by the same inventive entity (Peters et al.).
1 The Examiner indicates that claims 8—20 are provisionally rejected on the
ground of nonstatutory obviousness-type double patenting. (Final Act. 6).
However, claims 9 and 16 are cancelled. We have made appropriate
correction above.
3
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Application 13/838,731
Grouping of Claims
We address the claims rejected under rejection A under 35 U.S.C.
§101 separately, infra. We address the claims rejected under provisional
non-statutory OTDP rejection B, separately, infra. Based on Appellants’
arguments, we decide the appeal of §103 rejection C of claims 8, 10, 11, 15,
and 17—19 on the basis of representative claim 8. We address separately
rejection C of claim 12, rejection D of claim 13, and rejection E of claims 14
and 20. 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
own: (1) the findings and legal conclusions set forth by the Examiner in the
action from which this appeal is taken (Final Act. 2—17), and (2) the
findings, legal conclusions, and explanations set forth in the Answer in
response to Appellants’ arguments. (Ans. 2—25). However, we highlight
and address specific findings and arguments for emphasis in our analysis
below.
Rejection A of Claims 15 and 17—20 under § 101
Independent claim 15 recites, in pertinent part: “A computer
program product for crowdsourcing user notes taken within a virtual
meeting, the computer program product comprising a computer
readable storage medium having program code embodied therewith, the
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program code executable by a processor to perform a method comprising:
. . . (emphasis added).
Appellants cite to various paragraphs of the Specification in support,
and contend that claims 15 and 17—20 are directed to statutory subject matter
under 35 U.S.C. §101. (App. Br. 9—19). We have reviewed Appellants’
arguments and find them unpersuasive, for the following reasons:
On page 12 of the principal Brief, we find the support Appellants
point to in the Specification (| 12) is dispositive to our analysis, (reproduced
in pertinent part):
[0011]. . . aspects of the present invention may take the form of
a computer program product embodied in one or more
computer-readable medium(s) having computer-readable
program code embodied, e.g., stored, thereon.
[0012] Any combination of one or more computer-readable
medium(s) may be utilized. The computer-readable medium may
be a computer-readable signal medium or a computer-readable
storage medium. The phrase "computer-readable storage
medium" means a non-transitory storage medium. A
computer-readable storage medium may be, for example, but
not limited to, an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system,
apparatus, or device, or any suitable combination of the
foregoing.
(Emphasis added).
To the extent Appellants’ Specification (| 12) describes “[t]he phrase
‘computer-readable storage medium’ means a non-transitory storage
medium,” and thus is a limiting definition that disclaims all transitory
(signal) computer-readable storage mediums, we find this purported
“definition” is directly contravened by the sentence which immediately
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follows: “A computer-readable storage medium may be, for example,
but not limited to, an electronic, magnetic, optical, electromagnetic,
infrared, or semiconductor system, apparatus, or device, or any suitable
combination of the foregoing.” (Spec. 112) (emphasis added). (See also
Final Act. 2, citing Spec. HI2—13).
We find at least “optical, electromagnetic, [and] infrared” mediums
include optical, electromagnetic, and infrared signal mediums. (Id.). We
further note the open-ended “may be, for example, but not limited to”
exemplary language in paragraph 12 of the Specification. (Id.).
Regarding the “computer-readable storage medium” recited in
claim 15, we find PTAB precedential opinion Ex parte Mewherter, 107
USPQ2d 1857, 1862 (PTAB 2013) is directly on point and controlling.
Under Mewherter, the scope of a “computer readable storage medium” was
held to encompass transitory media such as signals or carrier waves, where,
as here, the Specification does not expressly disclaim transitory forms.
Moreover, to the extent the scope of the “computer-readable storage
medium” of claim 15 broadly covers both statutory and non-statutory
(transitory signal) embodiments, “[t]he four categories [of § 101] together
describe the exclusive reach of patentable subject matter. If a claim covers
material not found in any of the four statutory categories, that claim falls
outside the plainly expressed scope of § 101 even if the subject matter is
otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir.
2007).
Applying this guidance here, we find Appellants’ Specification does
not provide a definition that clearly and unequivocally disclaims the claim
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term “computer-readable storage medium” from encompassing transitory
signals.2 (Claim 15).
Therefore, on this record, we are not persuaded the Examiner’s
reading is overly broad or unreasonable.3 (Final Act. 2—5). Accordingly, we
sustain the Examiner’s rejection A under 35U.S.C. § 101 of claim 15, and
associated dependent claims 17—20.
Provisional Non-statutory OTDP Rejection B of Claims 8, 10—15, and 17—20
Regarding provisional OTDP rejection B, Appellants indicate that
they “will make a determination as to the filing of a Terminal Disclaimer
upon indication of allowable subject matter.” (App. Br. 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 B of claims 8, 10-15, and 17—20, on the ground of non-
statutory obviousness-type double patenting. (See Final Act. 3).
2 See Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-14 (Fed. Cir.
2015); Omega Eng’g., Inc. v. Raytek Corp., 334 F.3d 1314, 1323-26 (Fed.
Cir. 2003). Ambiguous language cannot support disavowal. Omega,
334 F.3d at 1324; see also Schindler Elevator Corp. v. Otis Elevator Co.,
593 F.3d 1275, 1285 (Fed. Cir. 2010).
3 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 C of Representative Claim 8 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 8? 4 (emphasis added).
Appellants contest limitation L of claim 8, by contending, inter alia:
Paragraphs [0074]-[0076] of Kaiser are very different from the
claimed "cross- 26 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
4 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
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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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. 20-21).
The Examiner (Final Act. 8) relies on Kaiser (H 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
further defined . . . .” (Ans. 19) (emphasis added). The Examiner reads the
contested claim term “cross-referencing” on Kaiser’s alignment (1 76).
The Examiner finds by “aligning the phonemes, the text is aligned and
therefore cross-referenced as required by the claim.” (Ans. 19). 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 (1 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 (1 76) of “aligning]
the handwritten words to nearby spoken words” at least suggests “cross-
referencing the analyses of the received user notes 5 to identify one or more
5 We note the Examiner relies on Kansal (124) for teaching collecting
meeting data captured by one or more devices at a meeting (including image,
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common key elements in the analyses thereof ” within the meaning of
contested limitation L of claim 1,* * * * * 6 Moreover, given the absence of
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.7
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—808 (Fed. Cir.
1989). (Emphasis added).
This reasoning is applicable here. Because we find a preponderance
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. 7).
We note the Examiner’s obviousness rejection is based on the combined
teachings and suggestions of Kansal and Kaiser.
6 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
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).
7 See n3, supra.
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of the evidence supports the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness, we sustain the Examiner’s
rejection C of representative claim 8, and rejection C of grouped claims 10,
11, 15, and 17—19 (not separately argued), which fall with claim 8. See
“Grouping of Claims” supra.
Rejection C of Dependent Claim 12 under § 103
Claim 12 recites: “The system of claim 8, wherein the executable
operations further include: 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 12, Appellants recite the claim
language, reproduce paragraph 25 of Kansal (as cited by the Examiner —
Final Act. 9), 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. 22—23).
Because Appellants merely recite the language of claim 12 and assert
it is not (literally) taught, without any substantive argument traversing the
Examiner’s rejection, we find Appellants’ argument for claim 12 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 C of claim 12 as
being obvious over the combination of Kansal and Kaiser.
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Rejection D of Dependent Claim 13 under § 103
Appellants contend “[t]he additional reference to Moran does not cure
the argued deficiencies of Kansal and Kaiser.” (App. Br. 24). However, we
find no deficiencies regarding the Examiner’s proffered base combination of
Kansal and Kaiser, for the reasons discussed above regarding claim 8.
Therefore, we find a preponderance of the evidence supports the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness for
claim 13. Accordingly, we sustain the Examiner’s rejection D of dependent
claim 13.
Rejection E of Dependent Claims 14 and 20 under § 103
Appellants contend “[t]he additional reference to Yoshida does not
cure the argued deficiencies of Kansal and Kaiser.” (App. Br. 25).
However, we find no deficiencies regarding the Examiner’s proffered base
combination of Kansal and Kaiser, for the reasons discussed above regarding
claim 8. Therefore, we find a preponderance of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for claims 14 and 20. Accordingly, we sustain the Examiner’s
rejection E of dependent claims 14 and 20.
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 15 and 17—20
under 35 U.S.C § 101.
We affirm the Examiner’s decision rejecting claims 8, 10—15, and
17—20 on the provisional ground of nonstatutory obviousness-type double
patenting.
We affirm the Examiner’s decision rejecting claims 8, 10—15, and
17-20 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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