Ex Parte Worsley et al

Patent Trial and Appeal Board

Sep 29, 2017

13629556 (P.T.A.B. Sep. 29, 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.
13/629,556 09/27/2012 Frank R. Worsley 1233-310US01 1034
98449 7590
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
TSUI, WILSON W
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
pairdocketing @ ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK R. WORSLEY, ABRAHAM P. MURRAY,
RYAN WOLF, and KEVIN LANDRY
Appeal 2017-005521
Application 13/629,5561
Technology Center 2100
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—10, 12—15, and 17—20, which constitute all
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Google Inc. App. Br. 2.
Appeal 2017-005521
Application 13/629,556
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to “community-based annotation” of
electronic books, for enhancing “the social reading experience”. Spec. Tflf 1—
3. Claims 1,10, and 15 are independent. Claim 1 is illustrative of the
invention and the subject matter of the appeal, and reads as follows:
1. A computer-implemented method for supporting
annotated electronic book (“ebook”) content, comprising:
receiving, from a client device, a message, the message
identifying a user of the client device and a portion of an ebook;
determining, using the message, a set of layers associated
with the user responsive to stored user layer data indicating
layers that are available to the user, the set of layers associated
with the user configured to interact with ebook content when
layers associated with the user are executed at the client device;
determining, using the message, a set of layers available
for use with the ebook responsive to stored book layer data
indicating layers that are available for the ebook, the set of layers
available for use with the ebook configured to interact with
ebook content when the layers associated with the ebook are
executed at the client device;
assembling a list of one or more layers based on the set of
layers associated with the user and the set of layers available for
use with the ebook, the layer list including a social layer adapted
to display posts on a social network in association with portions
of ebooks;
transmitting the layer list to the client device to enable the
user to select a layer to execute on the client device from among
the layers in the list;
identifying, responsive to execution of the social layer on
the client device, a post on the social network containing content
for an annotation, the post corresponding to the identified portion
of the ebook;
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Application 13/629,556
receiving, from the social network, at least a portion of the
content for the annotation contained by the identified post; and
transmitting, to the client device, at least a portion of the
received content contained by the identified post;
wherein the client device is adapted to display the at least
a portion of the content contained by the identified post in
association with the portion of the ebook to which the post
corresponds responsive to execution of the social layer on the
client device.
App. Br. 14—15 (Claims App.).
The Rejections on Appeal
Claims 1, 7, 10, 14, 15, and 20 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Chen et al. (US 2012/0084373
Al; Apr. 5, 2012) (“Chen”), Shah (US 9,116,654 Bl; Aug. 25, 2015), and
Whitnah et al. (US 2011/0154223 Al; June 23, 2011) (“Whitnah”). Final
Act. 3—8.
Claims 3,4, 12, 13, 17, and 18 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Chen, Shah, Whitnah, and Wable
et al. (US 8,527,496 B2; Sept. 3, 2013) (“Wable”). Final Act. 8-11.
Claims 5, 6, and 19 stand rejected under pre-AIA 35 U.S.C. § 102(a)
as being unpatentable over Chen, Shah, Whitnah, Wable, and Subtext User
Guide (Winter 2011) (“SUBTEXT”). Final Act. 12-14.
Claims 8 and 9 stand rejected under pre-AIA 35 U.S.C. § 102(a) as
being unpatentable over Chen, Shah, Whitnah, and SUBTEXT. Final Act.
14—17.
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Appeal 2017-005521
Application 13/629,556
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Appellants argue the Examiner erred in finding the prior art teaches or
suggests determining “a set of layers associated with the user” of an ebook,
and “a set of layers available for use with the ebook,” both layers being
configured to interact with the ebook content when the respective layers “are
executed at the client device,” as recited in claim 1. App. Br. 8—10; Reply
Br. 2-4.2 * 4Specifically, Appellants argue the Examiner finds such “layers”
taught or suggested in Chen and Shah, but that those “layers” are neither
“determined” in the manner recited in claim 1, nor “executed at the client
device” as recited in claim 1. Id. Appellants’ arguments, however, do not
persuade us the Examiner erred.
As the Examiner finds, Chen teaches a “computer device for reading
an e-book” and associated servers, connected via a network as shown in
Chen Figure 2. Ans. 16—18. Figure 2 is reproduced below.
2 Appellants argue all claims on appeal as a group, and we choose claim 1 as
representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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Appeal 2017-005521
Application 13/629,556
FIG.2
Figure 2 is a block diagram illustrating multiple “computer device[s]
10” which exchange “ID” and “MSG” data with “server[s] 20,” via network
30. As the Examiner finds, Chen teaches the user’s computer device (client
device) sending data (a message) to a server, enabling the determination of
“layers associated with the user responsive to stored user layer data.” Final
Act. 4; Ans. 17. Specifically, Chen teaches layer data for book
recommendation associated with a user, a user’s achievements, and social
network data displayable on a user’s client device. Id.', Chen || 33—34, 35,
40, 49. An example is illustrated in Chen Figure 4, reproduced below.
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Appeal 2017-005521
Application 13/629,556
MSG
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FIG.4
Figure 4 illustrates layer data (shown as “MSG” data) associated with
a user’s social network, displayed on the client device alongside the content
of the ebook (shown here as page 16 of Faust). As the Examiner finds,
multiple layers (a “set”) may be associated with a user. Final Act. 4; see
also Chen 149.
As the Examiner further finds, the other set of layers recited in claim 1
(“a set of layers available for use with the ebook responsive to stored book
layer data”) is taught or suggested in Shah. Shah Figures 3 and 4 are
illustrative, and are reproduced below.
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Appeal 2017-005521
Application 13/629,556
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FIG. 3
Figure 3 illustrates a user (client) interface “including supplemental
electronic book content according to a first level of supplemental content
rendering,” and Figure 4 illustrates the same interface according to a
“second level of supplemental content rendering.” Shah col. 1,11. 44-49
(emphasis added). Figures 3 and 4 both display text from the play, The
Tragedy of Macbeth, along with “annotations” relating to that particular
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Appeal 2017-005521
Application 13/629,556
play. The “amount of supplemental electronic book content” (i.e., layers
displayed) can be varied, as Figure 3 includes additional annotations 306 not
present in the annotations 406 in Figure 4. See also Shah col. 3,11. 10—25.
Accordingly, we are not persuaded of error in the Examiner’s finding
the combination of Chen and Shah teach or suggest “determining” layers
associated with the user and responsive to stored user layer data, and layers
“available for use with the ebook responsive to stored book layer data,” as
recited in claim 1. Ans. 17—18.
Appellants argue, nevertheless, that “layers” in Chen and Shah are not
“executed at the client device,” as recited in claim 1. App. Br. 10 (emphasis
added). Appellants assert the Examiner only finds the prior art teaches
layers “processed” and “rendered” at the client device (and Appellants do
not dispute that finding), but that “process” and “render” are not equivalent
to “execute.” Reply Br. 2; see also Ans. 19. In support of this argument,
Appellants refer to the present Specification’s description of “executable
code” as being distinct from “processing” or “rendering.” Reply Br. 3.
The quoted portions of the Specification, however, do not distinguish
“executing” code from “processing” it. Moreover, Appellants do not
demonstrate error in the Examiner’s finding that “rendering” a display on the
client device, as taught in Shah, necessarily requires executing or processing
code on the device. Ans. 19. Appellants present no evidence that layers
“executed at the client device” would exclude “processing” layers or
“rendering” layers, as taught in Chen and Shah. Final Act. 4—5; see also In
re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (claim
terms given their “their broadest reasonable interpretation consistent with the
specification”).
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Appeal 2017-005521
Application 13/629,556
Finally, Appellants argue the Examiner erred in finding the references
teach or suggest “assembling a list of one or more layers,” as recited in claim
1. App. Br. 11—12. For similar reasons to those discussed above, we are not
persuaded. As the Examiner finds, claim 1 does not recite “how” the list of
one or more layers is assembled, only that it be based on the previously-
discussed “layers associated with the user” and the “layers available for use
with the ebook.” Ans. 20. We are not persuaded of error in the Examiner’s
finding that Shah teaches or suggests this limitation, in its description of
sending to the client device and displaying a visual listing of supplemental
information. Id. \ see also Shah Figs. 3, 4, col. 2,11. 35—43, col. 3,11. 1—30.
Accordingly, we sustain the obviousness rejections of claims 1, 3—10,
12-15, and 17-20,
DECISION
We affirm the Examiner’s rejections of claims 1, 3—10, 12—15, and
17-20.
No time period for taking any subsequent action in connection 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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