Ex Parte Angel et al

Patent Trial and Appeal Board

Aug 30, 2013

10207837 (P.T.A.B. Aug. 30, 2013)

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.
10/207,837 07/31/2002 Amir Angel 0005773USU/4247 2847
7590 09/03/2013
Charles N. J. Ruggiero
OHLANDT GREELEY RUGGIERO & PERLE L.L.P.
One Landmark Square
10th Floor
Stamford, CT 06901-2682
EXAMINER
NEWLIN, TIMOTHY R
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
09/03/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte AMIR ANGEL and GIL ROSEN
____________________

Appeal 2011-000634
Application 10/207,837
Technology Center 2400
____________________

Before CAROLYN D. THOMAS, KALYAN K. DESHPANDE, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-33.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND of Rejection in
accordance with 37 C.F.R. § 41.50(b)
Introduction
The claims are directed to method and system for editing text
messages such as emails conveyed via a cable television infrastructure such
as at a tv set-top box. Spec. 1:2-4. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of replacing at least one item in a source string
input to a TV set-top box, the method comprising:
(a) receiving via a TV communication infrastructure the
source string from the TV set-top box;
(b) for each item that requires replacing, determining at
least one replacement item; and
(c) forwarding to the TV set-top box data relating to the
at least one replacement item.

Rejections
The Examiner made the following rejections:
Claims 1-3, 5, 9, 10, 12-17, 19, 20, and 22-33 stand rejected under 35
U.S.C §102(e) as being anticipated by Pickover (US 2006/0224586 A1, Oct.
5, 2006) which incorporates Nielsen (US 5,875,443, Feb. 23, 1999) in its
entirety. Ans. 5-11.

1 Throughout the Decision, we refer to the Appellants’ Appeal Brief (“App.
Br.,” filed Apr. 16, 2010) and Reply Brief (“Reply Br.” filed Feb. 9, 2010
and entered and considered by the Examiner Apr. 7, 2010) and the
Examiner’s Second Answer (“Ans.,” mailed Jul. 7, 2010).
2 The Real Party in Interest is Comverse, LTD.
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Claims 4, 11, and 21 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Pickover, Bray (US 7,139,031, Nov. 21, 2006), and Kelts
(US 2002/0059603 A1, May 16, 2002).3 Ans. 11.
Claims 6-8 and 18 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Pickover and Chang (US 5,543,851, Aug. 6, 1996). Ans.
12.

ANALYSIS
Appellants argue claims 1-3, 5, 9, 10, 12-17, 19, 20, and 22-33
together. App. Br. 7-17; Reply Br. 2-8. We select claim 1 as representative.

Claim 1 – 35 U.S.C §102(e)
Rejection Separate Embodiments and Elements Arranged and Combined
Appellants contend that Pickover incorporating Nielsen does not
anticipate the claims because it relies on two separate embodiments, namely
“replacement word spell checking system that resides on a computer or set-
top box” (Pickover, ¶ [0029]) and “a computer dictionary and spell checking
system that communicates over the Internet between clients computers and a
server to update and check words” (Nielsen, col. 3, ll. 16-29). App. Br. 14.
Because Pickover incorporating Nielsen relies on two embodiments, one
spell checking system from Pickover and a second internet-based spell check
system from Nielsen, it fails to present each claim limitation in a single

3 Although Appellants and the Examiner refer to dependent claims 4, 11 and
21 as being rejected over Bray and Kelts (Ans. 11; App. Br. 2), the
Examiner’s analysis relies on Pickover as applied to the independent claims
from which claims 4, 11 and 21 depend. Ans. 11. Thus, we include
Pickover in the Section 103(a) rejection of claims 4, 11 and 21.
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reference “arranged and combined in the same way as in the claim.” App.
Br. 14 (quoting Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008)). Appellants also contend that Pickover incorporating
Nielsen does not anticipate the claims because the elements are not arranged
or combined in the same way as recited in the claims because there is no
“discussion suggesting or linking [the] selectable replacement word system
of Pickover with the internet-based system of Nielsen.” App. Br. 15-16
(citing Ecolochem, Inc., v. Southern California Edison Co., 227 F.3d 1361
(Fed. Cir. 2000)).
The Examiner answers that Pickover incorporating Nielsen does not
constitute separate embodiments, but one embodiment that uses Nielsen’s
client/server protocol within Pickover’s TV communications infrastructure.
Ans. 16. The Examiner further asserts that the client/server arrangement of
Nielsen is consistent with Pickover’s embodiment of a spell checker residing
in part at the client. Ans. 17.
For anticipation under § 102, the prior art reference “must not only
disclose all elements within the four corners of the document, but must also
disclose those elements arranged as in the claim.” Net MoneyIn, Inc. v.
Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation omitted)
(internal quotation marks omitted). “Thus, it is not enough that the prior art
reference discloses part of the claimed invention, which an ordinary artisan
might supplement to make the whole, or that it includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention.” Id. at 1371; see also In re Arkley, 455 F.2d 586, 587 (CCPA
1972) (stating that “the [prior art] reference must clearly and unequivocally
disclose the claimed [invention] or direct those skilled in the art to the
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[invention] without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference.”).
Although we find that Pickover teaches a spell checker that resides at
the client in a manner incorporating the spell checker computer client model
of Nielsen (Pickover ¶ [0029] (stating that “spell checker 93 may reside on a
local or remote computer”); Nielsen, col. 8, ll. 4-43), we are not persuaded
by the Examiner’s argument that Pickover incorporating Nielsen “clearly
and unequivocally discloses the claimed invention” as arranged in the claim
in a single embodiment without reference to knowledge and skill of an
artisan. See In re Arkley, 455 F.2d at 587. As the Examiner notes, the
knowledge of one of ordinary skill in the art is applicable to the teachings of
Pickover with respect to the spell checker residing on the set-top box or TV
(Ans. 14) and the transmission of data from the client to server via TV
infrastructure (Ans. 17).
Accordingly, the Examiner erred in finding that Pickover
incorporating Nielsen discloses the invention of claim 1. We cannot sustain
the Examiner’s rejection of claims 1-3, 5, 9, 10, 12-17, 19, 20, and 22-33.

Claim 1 – 35 U.S.C §102(e)
Because we reverse the Examiner’s rejection of claims 1-3, 5, 9, 10,
12-17, 19, 20, and 22-33 under 35 U.S.C §102(e), we need not reach
Appellants’ remaining Section 102(e) arguments that the Examiner erred.
App. Br. 8-9, 11; Reply Br. 4-5.

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Dependent Claims 4, 6-8, 11, 18 and 21 – 35 U.S.C §103(a) Rejections
Dependent claims 4, 6-8, 11, 18 and 21 ultimately depend from
independent claims 1, 9, and 17 that have been reversed supra. Although
we note that Appellants make no arguments with respect to the Examiner’s
§103(a) rejection of claims 4, 6-8, 11, 18 and 21, we cannot sustain the
Examiner’s rejection of claims 4, 11, and 21 over Pickover, Bray and Kelts
and claims 6-8 and 18 over Pickover and Chang under 35 U.S.C §103(a), as
these claims ultimately depend from reversed independent claims.

NEW GROUND OF REJECTION - 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for independent claims 1, 9, 17, 22, and 25-32 under 35
U.S.C. § 103(a) as unpatentable over Pickover and Nielsen.
We find that Pickover combined with Nielsen teaches or suggest a
spell checker that resides at the client in a manner incorporating the spell
checker computer-client model of Nielsen. Pickover ¶¶ [0016], [0029]
(stating that “spell checker 93 may reside on a local or remote computer”);
Nielsen, col. 8, ll. 4-43). Pickover expressly incorporates Nielsen by
reference. Pickover ¶ [0006]. In addition, we find that a modification of
Pickover by Nielsen, to include multiple embodiments, whose internet based
spell checker using a remote database is expressly incorporated by reference
into Pickover, is merely a combination of familiar elements incorporating
spell check database system of Nielsen in the word replacement and
infrastructure system of Pickover according to known methods that does no
more than yield predictable results that can be implemented by a person of
ordinary skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007).
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Thus, it would have been obvious to combine the spell checker that
finds replacement words installed on a TV or computer that is connected or
integrated with the Internet of Pickover (Pickover ¶¶[0016], [0029]) with the
internet-based access to remote databases to find replacement words
(Nielsen, col. 8, ll. 4-43).
With respect to claim 1, Pickover teaches the use of set top box as a
terminal and television infrastructure to transmit data (Pickover ¶¶ [0016],
[0029]). We find that Pickover expressly discuses a set-top box and TV that
contain a spell checker. Pickover ¶ [0029]. In addition, Pickover discloses
WebTV that relies on TV infrastructure and states that the spell checker can
also reside on a kiosk, PDA or other device. Pickover ¶¶ [0016], [0029].
Pickover teaches or suggests components that are capable of receiving
television and texts signals via a communications networks capable of
carrying TV or text. See Pickover ¶¶ [0016], [0029].
Nielsen teaches the claim 1 limitations for “receiving via a TV
communication infrastructure the source string” from a terminal or device;
“for each item that requires replacing, determining at least one replacement
item” and “forwarding to the [device or terminal] data relating to the at least
one replacement item” (Nielsen, col, 8, ll. 4-43). Nielsen also teaches
transmission of TV signals as one of ordinary skill in the art would
recognize that internet service can provided via television infrastructure and
can carry audio/visual signals via the internet (Nielsen, Abstract, Fig. 1).
With respect to claim 9, Nielsen teaches “a method of replacing at least one
item in a source string input to a [device or terminal]” (Nielsen, col. 8, ll. 4-
10).
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With respect to claim 17, Pickover teaches the TV communication
gateway (Pickover ¶¶ [0016], [0029]) and Nielsen teaches the remaining
limitations of claim 17 (Nielsen, col. 8, ll. 4-10, 36-43, col. 9, ll. 1-3, col. 10,
ll. 45-50, vendor database 102 of Fig. 1). . Similarly, with respect to claim
22, Pickover teaches a TV set op box for editing and outputting messages
over TV infrastructure via set-top box (Pickover ¶[0029])), and Nielsen
teaches the remaining limitations of claim 22 (Nielsen, CPU 201, Fig. 2; col.
8, ll. 32-58).
Claims 25-32 incorporate similar limitations to those found in claims
1, 9, and 17. Nielsen, col. 8, ll. 4-58 and Pickover ¶¶ [0016], [0029] teach or
suggest a program storage medium readable by machine containing a
program of instructions (Nielsen, col, 12, ll. 18-25) that perform the word
replacement method via a TV set top box.
Therefore, independent claims 1, 9, 17, 22, and 25-32 are obvious
under 35 U.S.C. § 103(a) over Pickover and Nielsen.
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We leave it to the Examiner to determine the
appropriateness of further rejections of dependent claims 2, 3, 5, 10, 12-16,
19, 20, 23, 24, and 33 under 35 U.S.C. § 103(a) and for dependent claims 4,
6-8, 11, 18 and 21 in combination with cited references Bray, Kelts or
Chang.

DECISION
We REVERSE the Examiner’s rejection of claims 1-3, 5, 9, 10, 12-17,
19, 20, and 22-33 under 35 U.S.C §102(e).
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We REVERSE the Examiner’s rejection of claims 4, 11, and 21 and
claims 6-8 and 18 under the 35 U.S.C §103(a); and
We enter a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b) for independent claims 1, 9, 17, 22, and 25-32 under 35 U.S.C.
§ 103(a) as unpatentable over Pickover and Nielsen.
TIME PERIOD
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
REVERSED – 37 C.F.R. § 41.50(b)

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