Ex Parte Balasubramanian et al

Patent Trial and Appeal Board

Sep 26, 2016

13039189 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/039, 189 03/02/2011 Guru Balasubramanian
36738 7590 09/28/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
200903158.01 1342
EXAMINER
THOMAS-HOMESCU, ANNE L
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GURU BALASUBRAMANIAN,
KAL YANA SRINIVAS KOTA, and
UTKARSH PANDYA
Appeal2015-004319
Application 13/039, 189
Technology Center 2600
Before DANIEL N. FISHMAN, JON M. JURGOVAN, and
KEVIN C. TROCK, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 5, 9-11, 13, 21, 22, 24, and 30-33. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.2
1 Appellants identify Sony Corp. as the real party in interest. (App. Br. 2.)
2 Our Decision refers to the Specification filed Mar. 2, 2011 ("Spec."), the
Final Office Action mailed Nov. 5, 2014 ("Final Act."), the Appeal Brief
filed Dec. 10, 2014 ("App. Br."), the Second Examiner's Answer mailed
Mar. 6, 2015 ("Ans."), and the Reply Brief filed Mar. 6, 2015 ("Reply Br.").
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Application 13/039, 189
CLAIMED INVENTION
The claims are directed to a system and method involving a media
device that has a menu including selectors for performing various functions.
(Spec. i-fi-17, 8.) Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A media device implemented method comprising:
accessing a portion of a piece of content operable for use in
creating speech modulation;
accessing a voice fingerprint operable for modulating speech
during content rendering such that a piece of content is rendered
in accordance with the voice fingerprint;
rendering the portion based on a modulation of the content
based on the voice fingerprint;
presenting a menu which includes a first selector element
selectable to render a definition of a word included in the piece
of content, a second selector selectable to tum visual highlighting
of the piece of content being rendered on or off, a third selector
selectable to present an indication of a pronunciation of a word
included in the piece of content, a fourth selector selectable to
bookmark the piece of content being rendered when the fourth
selector is selected, and a fifth selector selectable to initiate an
Internet search on the piece of content.
(App. Br. 8 - Claims App'x.)
REJECTIONS
Claim 5 stands rejected under 35 U.S.C. § 112, 4th paragraph, for
failing to further limit the subject matter of the claim on which it depends.
(Final Act. 3.)
Claims 1, 5, 9-11, 22, and 31 stand rejected under 35 U.S.C. § 103(a)
based on Kurzweil (US 2010/0324904 Al, publ. Dec. 23, 2010), Eberhard
(US 6,331,867 B 1, iss. Dec. 18, 2001 ), Kiraly (US 6,564, 186 B 1, iss. May
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13, 2003), and Yi (US 2011/0246175 Al, publ. Oct. 6, 2011). (Final Act. 5-
19.)
Claims 13 and 30 stand rejected under 35 U.S.C. § 103(a) based on
Kurzweil, Eberhard, Kiraly, Yi, and Rezayee (A. Rezayee et al., An Adaptive
KLT Approach for Speech Enhancement, IEEE TRANSACTIONS ON SPEECH
AND AUDIO PROCESSING, Vol. 9, No. 2, Feb. 2001). (Final Act. 19-21.)
Claim 21 stands rejected under 35 U.S.C. § 103(a) based on Kurzweil,
Eberhard, Kiraly, Yi, and McKay (US 2009/0202226 Al, publ. Feb. 6,
2003). (Final Act. 21-23.)
Claim 24 stands rejected under 35 U.S.C. § 103(a) based on Kurzweil,
Eberhard, Kiraly, Yi, and Freeland (US 2003/0028380 Al, publ. Aug. 13,
2009). (Final Act. 23-24.)
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) based on
Kurzweil, Eberhard, Kiraly, Yi, and Strietzel (US 2009/0135177 Al, publ.
May 28, 2009). (Final Act. 24--29.)
ANALYSIS
Rejections under§ 112, 4th Paragraph Rejection for Claim 5 and
§ 103(a) for Claims 13, 21, 24, 30, 32, 33
Appellants present no arguments against the rejections of claim 5
under 35 U.S.C. § 112, 4th paragraph, or claims 21, 24, 32, and 33 under 35
U.S.C. § 103(a). Accordingly, we summarily sustain the rejections. See 37
C.F.R. § 41.37(c)(l)(iv) and M.P.E.P. § 1205.02 (If a ground of rejection
stated by the examiner is not addressed in the appellant's brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner's answer.)
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Application 13/039, 189
§ 103(a) Rejection - Claims 1, 5, 9-11, 22, and 31
A. Single Menu with Five Recited Selectors
Appellants argue the Examiner errs by taking disparate elements from
different references and cobbling them together without considering the
synergy of the claimed combination. (App. Br. 4, Reply Br. 1.) Specifically,
Appellants argue that no reference contemplates the advantages of a single
convenient menu with all five of the recited selectors on that same menu.
(Id.) The selector functions relate to text, including, for example, obtaining
a word definition, turning highlighting for a word on and off, obtaining a
pronunciation of a word, bookmarking a word, and doing an Internet search
on a word. (Id.) Appellants argue the existence of these elements in isolated
references is evidence that no one prior to Appellants recognized the
desirability of providing them together in a single menu as claimed. (Id.)
Appellants further contend the isolated references are evidence of using the
claims as a template to piece together the references, and assert this is
reversible error under KSR Int 'l Co. v. Telej1ex, Inc., 55 U.S. 398, 421
(2007). (Id.)
We are not persuaded by Appellants' arguments that the Examiner errs
in the rejection. As the Examiner notes, Eberhard states:
In accordance with one aspect of the invention, the device
implements an automatic look-up feature which can be invoked
by the user to look up a word of a displayed title. Using this
feature, the user can, for example, bring up a definition,
language-to-language translation, audible pronunciation,
encyclopedia listing, picture, or other type reference listing
associated with the displayed term.
(See Final Act. 3--4 citing Eberhard 1:51-57, Fig. 6.) Eberhard Figure 6
displays a menu with selectors for "Highlight," "Set Bookmark Here,"
"Goto Bookmarks," and "Search," among others. This would have
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suggested to the person or ordinary skill in the art that selectors can be
included on a common menu to perform various functions.
Eberhard, Figure 6, shows a menu with selectors labeled "Highlight," "Set
Bookmark Here," "Goto Bookmarks," and "Search," among others.
Thus, considering Eberhard's teachings, the person of ordinary skill would
have found it obvious to combine on a common menu Eberhard's selector to
render a definition (1 :51-57), Kiraly's selector to tum highlighting on or off
(12:40-43, [520]), Eberhard's selector for pronunciation (1 :51-57),
Eberhard's selector for setting a bookmark (1:51-57), and Yi's selector for
initiating an Internet search on a portion of the content. (Yi i-f 28.) (See
Final Act. 5-10.) As the Supreme Court explains, "in many cases a person
of ordinary skill will be able to fit the teachings of multiple patents together
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like pieces of a puzzle." KSR, 550 U.S. at 420. Thus, we are not persuaded
the Examiner errs in the rejection.
Regarding Appellants' argument that the Examiner is using improper
hindsight, we note that any judgment on obviousness is in a sense
"necessarily a reconstruction based upon hindsight reasoning, but so long as
it takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant's disclosure, such a reconstruction is
proper." In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971).
Here, Eberhard's teaching to include multiple selectors on a common
menu and the teachings of Eberhard, Kiraly, and Yi of certain options for
those selectors, would have been enough for the person of ordinary skill to
combine them to arrive at the claimed invention. Thus, we agree with the
Examiner's findings there was an apparent reason to combine the references
as done in the rejection. Our reviewing Court states:
Often, it will be necessary for a court [and the Board] to look to
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, all in order to determine whether there
was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.
See KSR, 550 U.S. at 418, see also (Final Act. 9-10).
B. First Selector for Providing Definition
Appellants argue Eberhard's tapping of a touch screen display is not a
definition selector as claimed. (App. Br. 4--5, Reply Br. 1-2.) In addition,
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Appellants argue that Eberhard fails to provide a selector element as claimed
on a menu. (Id.)
We do not find Appellants' argument persuasive to show Examiner
error. Appellants appear to urge a special definition for what a "selector" is
that would distinguish over Eberhard's tapping on a touch screen display to
select a word for which to provide a definition. However, the Specification
does not mention "selector" and Appellants offer no definition for this term
that would distinguish over the cited feature. Furthermore, there is no
language in the claims that differentiates a selector as something different
from tapping a touch screen display. Thus, we agree with the Examiner's
findings (Final Act. 7) and do not find this argument effective to overcome
the rejection.
C. Second Selector for Turning Highlighting On and Off
Appellants argue Kiraly's selector for turning highlighting on and off
is on a content playback toolbar, and is isolated and not present on a menu
with any other selector. (App. Br. 5 citing Kiraly, element 520, 12:40-43,
Reply Br. 2.) However, as discussed, Eberhard suggests multiple selectors
could be included on a common menu, and the fact that Eberhard includes a
"Highlight" selector would have suggested to a person of ordinary skill to
add Kiraly's selector to tum highlighting on or off to the common menu. In
this regard, we note that "the test [for obviousness] is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425(CCPA1981). We agree with the
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Examiner's findings (Final Act. 7-8) and do not find this argument
persuasive.
D. Third Selector for Pronunciation of a Word
Appellants contend Eberhard mentions audible pronunciation in a list
off eatures, but that no selector for this purpose is mentioned, but rather that
the user must tap on a word a number of times to obtain a pronunciation.
(App. Br. 5-6 citing Eberhard 1:51-57, 8:56-67, Reply Br. 2-3.) This
argument is similar to that asserted for the first selector and we find it
unpersuasive for similar reasons. Specifically, the Specification provides no
definition for "selector" and Appellants offer none. Moreover, the claims
does not specify "selector" in a way that would distinguish it from tapping a
number of times on a word to invoke its pronunciation. Thus, we agree with
the Examiner's findings (Final Act. 8) and do not find Appellants' argument
persuasive.
E. Fourth Selector for Bookmarking
Regarding the fourth selector for highlighting, Appellants further
contend Eberhard's hotkey appears in Table 1, which is a list of menu and
sub-menu items that does not teach anything about which items might be
presented with other items and the hotkey icon does not appear in any menu
approaching what is claimed. (App. Br. 6 citing Eberhard Table 1, Fig. 7,
see also Fig. 6, Reply Br. 3.) This argument is similar to that presented for
the second selector, and we are not persuaded by it for similar reasons.
Specifically, Eberhard teaches inclusion of multiple selectors on a common
menu, and a person of ordinary skill in the art would have realized that a
selector for bookmarking according to Yi's teaching could be added to
Eberhard's menu. Again, the test for obviousness is what the combined
references would have suggested to a person having ordinary skill. See
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Keller, supra. Thus, we agree with the Examiner's findings (Final Act. 8-9)
and are not persuaded of Examiner error.
F. Fifth Selector for Initiating Internet Search
Appellants argue Yi discloses no selector for initiating an Internet
search, but instead accesses an online dictionary or a language translation.
(App. Br. 6 citing Yi i-fi-1 4, 28, Reply Br. 3.) As the Examiner noted, Yi
states that "the E-dictionary is provided if a user points to or highlights a
character group such as a sentence or word on the display screen of the E-
book reader." (Ans. 9-10 citing Yi i14.) Yi further teaches "accessing an
interactive on-line Internet dictionary service." (Id. citing Yi i128.)
Moreover, Figures 3 and 5 of Yi show highlighting of text on a touchscreen
to select it for searching. Thus, the Examiner demonstrates that the selector
for initiating an Internet search is disclosed in Yi.
Conclusion
An obviousness rejection under§ 103(a) requires that "there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness." KSR, 550 U.S. at 418 (2007) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (internal quotations omitted)).
On this record, we find the Examiner's reasoning and underpinning adequate
to support the conclusion of obviousness.
DECISION
We affirm the rejection of claim 5 under 35 U.S.C. § 112, 4th
paragraph, and the rejections of claims 1, 5, 9-11, 13, 21, 22, 24, and 30-33,
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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AFFIRMED
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