Ex Parte Wang et al

Patent Trial and Appeal Board

Mar 24, 2017

12326901 (P.T.A.B. Mar. 24, 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.
12/326,901 12/03/2008 Chih-Chung Wang 325308.01 4247
69316 7590 03/28/2017
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
LERNER, MARTIN
ART UNIT PAPER NUMBER
2657
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIH-CHUNG WANG, SHENG-YAO SHIH,
YU-LI HUANG, and HSIANG-FU LIU
Appeal 2017-000496
Application 12/326,9011
Technology Center 2600
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants appeal under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 24, 27—32, 38, 39, and 41—43.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Microsoft Corporation.
(Br. 2).
2 Claims 1—23 have been canceled. The Examiner has stated that claims 33—
37 are allowable and claims 25, 26, and 40 would be allowable if rewritten
in independent form. (Non-Final Act. 11).
Appeal 2017-000496
Application 12/326,901
EXEMPLARY CLAIM
Claim 24, reproduced below, is illustrative of the claimed subject
matter with disputed limitations emphasized:
24. A computer-implemented language conversion and
viewing system, comprising:
a communications component configured to receive a
message and an attachment to the message, the attachment in a
first language;
a language component configured to convert the
attachment between the first language and a second language;
a preview component configured to generate a preview
pane, and to present the attachment in the second language in
the preview pane; and
a processor configured to execute computer-executable
instructions associated with the communications component, the
language component, and the preview component.
REJECTIONS
Claims 24, 27, 28, 30—32, 38, and 41—43 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Yozell-Epstein (US 7,243,298
B2; issued July 10, 2007), Petropoulos (US 2006/0095424 Al; published
May 4, 2006), and Delgado (US 2004/0205674 Al; published Oct. 14,
2004). (Non-Final Act. 3—9).
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yozell-Epstein, Petropoulos, Delgado, and Affronti (US
2007/0038712 Al; published Feb. 15, 2007). (Non-Final Act. 9-10).
Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yozell-Epstein, Petropoulos, Delgado, and Chiu (US
2006/0178866 Al; published Aug. 10,2006). (Non-Final Act. 10-11).
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Application 12/326,901
ISSUES
Issue 1: Did the Examiner err in finding the combination of Yozell-
Epstein, Petropoulos, and Delgado teaches “a language component
configured to convert the attachment between the first language and a
second language” and “present the attachment in the second language in the
preview pane,” as recited in claim 24 and similarly recited in claim 3 8?
Issue 2: Did the Examiner improperly combine Yozell-Ep stein,
Petropoulos, and Delgado?
ANALYSIS
We disagree with Appellants’ conclusions and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Non-Final Act. 2—16); and (2) the reasons set
forth by the Examiner in the Answer in response to the Appeal Brief (Ans.
11—20). With respect to the claims argued by Appellants, we highlight and
address specific findings and arguments for emphasis as follows.
Issue 1
Appellants contend the Examiner erred in finding Petropoulos and
Delgado teach “a language component configured to convert the attachment
between the first language and a second language” and “present the
attachment in the second language in the preview pane,” as recited in claim
24 and similarly recited in claim 38. (Br. 7—8, 10-11). Specifically,
Appellants argue Petropoulos “presents a Java-enabled preview of specified
areas in a mouse-over of a search results page,” rather than “any sort
messaging system that can receive a message and an attachment to the
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message.” (Id. at 7 (emphasis omitted)). Appellants further argue Delgado
teaches “translation used with e-mail,” but does not teach translating email
attachments in a preview window. (Id. at 11).
We are not persuaded. The Examiner finds (Non-Final Act. 3^4; Ans.
14, 20), and we agree, Yozell-Epstein teaches a system for “previewing . . .
attachments to electronic mail messages.” (Yozell-Epstein Abstract; see
Yozell-Epstein 5:53—58, Fig. 2). The Examiner further finds (Non-Final
Act. 4—5, 14—15; Ans. 15), and we agree, Petropoulos teaches “a ‘preview
window’ containing some relevant preview information” (Petropoulos 112;
see Petropoulos 125, Abstract) and that the “preview information displayed
would be the output of [a language] translator” (Petropoulos 133). The
Examiner combines Yozell-Epstein and Petropoulos, resulting in a system
which translates email attachments in a preview window. (Non-Final Act. 6;
Ans. 15).
Appellants’ arguments that Petropoulos alone does not teach email
attachment previews (Br. 7—8) and Delgado alone does not teach email
attachment previews (id. at 10-11) are unpersuasive because those
arguments attack the references individually when the rejection is based on a
combination of references, i.e., Yozell-Epstein, Petropoulos, and Delgado.
In re Keller, 642 F.2d 413, 426 (CCPA 1981). In particular, Appellants
have not persuasively addressed the Examiner’s combination of Yozell-
Epstein and Petropoulos, which modifies Yozell-Epstein’s email attachment
preview with Petropoulos’ language-translated preview such that Yozell-
Epstein’s previewed attachments are language-translated. (Non-Final Act.
6; Ans. 15).
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Application 12/326,901
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Yozell-Epstein, Petropoulos, and Delgado teaches “a
language component configured to convert the attachment between the first
language and a second language” and “present the attachment in the second
language in the preview pane,” within the meaning of claims 24 and 38.
Issue 2
Appellants contend the Examiner improperly combined Yozell-
Epstein, Petropoulos, and Delgado. (Br. 9-14). Specifically, Appellants
argue the Examiner’s “combination of plainly dissimilar technologies would
require a considerable amount of engineering to arrive at any sort of
workable device” and that “there is no likelihood for success of the proposed
combination.” {Id. at 9—10). Appellants further argue the “motivation for
the proposed combination is not provided” {id. at 9-10) or “insufficient” {id.
at 11). Appellants also argue that one of the Examiner’s proffered
rationales, omitting cutting and pasting text into a language translator, is
improper because “‘cutting and pasting’ is not anything that occurs in the
Yozell-Epstein [] reference.” {Id. at 12). Appellants additionally argue
“Yozell-Epstein et al. is utterly silent as to any sort of translation” and
“[tjhere is no suggestion in [Yozell-Epstein] of anything at all that would
entail any sort of modification of [its] attachment.” {Id. at 13 (emphasis
omitted)).
We are not persuaded. Appellants’ arguments that Yozell-Epstein’s
email system and Petropoulos’ internet search results page are so dissimilar
that the combination requires “a considerable amount of engineering” and
there is no likelihood for the combination’s success (Br. 9—10) is supported
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Application 12/326,901
only by attorney argument and is, accordingly, unpersuasive. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot
take the place of evidence.”). Moreover, we agree with the Examiner that
one of ordinary skill in the art would have had a reasonable expectation of
success in implementing Petropoulos’s web data translation with Yozell-
Epstein’s email attachment data. (See Ans. 17—18). Indeed, Appellants’
Specification teaches that translation can be equally provided for email data
or web data. (See Spec. Tflf 7, 20, 22).
Additionally, Appellants’ arguments that the Examiner’s stated
motivations are “not provided” or “insufficient” (Br. 9-11), do not persuade
us the Examiner’s combination is improper because the Examiner has
provided articulated reasoning with some rational underpinning to support
the combination of Yozell-Epstein with Petropoulos and Delgado.
Specifically, the Examiner provides multiple reasonable rationales for the
combination: the use of a known technique to improve similar products in
the same way (Ans. 20) by extending the translation of e-mail messages “to
translate attachments to e-mail messages” (id. at 14); “providing] previews
of contextually relevant information to make any information,” i.e., email
attachments, “more useful” (id. at 19); and providing user convenience in
translating attachments by providing translation within a preview window,
rather than translating attachments through the “onerous” process of using a
separate translator (id. at 18—19; see also Non-Final Act. 6—8). Furthermore,
Appellants’ arguments that Yozell-Epstein itself does not provide the
Examiner’s stated motivation (Br. 12—13) relies on a teaching, suggestion, or
motivation standard, which is not required under KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Thus, we are not persuaded the Examiner
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failed to provide a motivation for combining the teachings or failed to
articulate sufficiently a motivation. Accordingly, we are not persuaded the
Examiner improperly combined Yozell-Epstein, Petropoulos, and Delgado.
Remaining Claims 27—32, 39, and 41—43
Appellants do not argue separate patentability for dependent claims
27—32, 39, and 41—43, which depend directly or indirectly from claim 24 or
claim 38. (Br. 14—16). For the reasons set forth above, therefore, we are not
persuaded the Examiner erred in rejecting these claims. Accordingly, we
sustain the Examiner’s decision to reject claims 27—32, 39, and 41—43. See
37C.F.R. §41.37(c)(l)(iv).
DECISION
The Examiner’s rejection of claims 24, 27, 28, 30—32, 38, and 41—43
under 35 U.S.C. § 103(a) as being unpatentable over Yozell-Epstein,
Petropoulos, and Delgado is affirmed.
The Examiner’s rejection of claim 29 under 35 U.S.C. § 103(a) as
being unpatentable over Yozell-Epstein, Petropoulos, Delgado, and Affronti
is affirmed.
The Examiner’s rejection of claim 39 under 35 U.S.C. § 103(a) as
being unpatentable over Yozell-Epstein, Petropoulos, Delgado, and Chiu is
affirmed.
AFFIRMED
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