Ex Parte Basir

Patent Trial and Appeal Board

Sep 22, 2016

13269544 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/269,544 10/07/2011
26096 7590 09/26/2016
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Mossab 0. Basir
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.
67464-001 PUSl 9311
EXAMINER
HEYi, HENOK G
ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOSSAB 0. BASIR
Appeal2015-004944
Application 13/269 ,544
Technology Center 2600
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-004944
Application 13/269,544
Il~TRODUCTION
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
Claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part and enter new grounds of rejection.
Illustrative Claim
1. An electronic device for reviewing media
including:
a display, the display displaying a user interface that
permits a user to copy clips of displayed media from multiple
sources to a notes page, wherein the notes page occupies a
portion of the display and a reader page occupies another
portion of the display, and wherein the media displayed is
displayed in the reader page, and wherein the clips from the
media displayed in the reader page can be copied from the
reader page to the notes page.
Prior ,L4rt
Haynes US 2012/0036423 Al Feb.9,2012
Examiner's Rejections
Claim 8 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haynes.
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Application 13/269,544
ANALYSIS
Section 112,first paragraph, rejection of claim 8
The Examiner finds "selectively removing tags" does not satisfy the
written description requirement of 35 U.S.C. § 112, first paragraph. Ans. 9.
Appellant contends "these marks can be wiped cleanly to bring the book
back to its original untouched form" found in Paragraph 31 of Appellant's
Specification provides written description for "selectively removing tags."
App. Br. 2. Paragraph 31 appears to disclose removing all marks from the
book, to bring the book back to its original untouched form. However,
Appellant has not persuasively explained how wiping marks to bring the
book back to its original untouched form discloses selectively removing tags.
We sustain the rejection of claim 8 under 35 U.S.C. § 112, first
paragraph.
Section 103 rejection of claims 1-3 and 9
Claim 1 recites "the display displaying a user interface that permits a
user to copy clips of displayed media from multiple sources to a notes page."
The Examiner finds Haynes teaches annotations such as written commentary
is stored in a manner that maintains its association with a title selected by the
user in Paragraph 41. Ans. 9-10; see Ans. 3--4. Appellant contends
Paragraph 41 of Haynes does not teach copying and pasting text to a notes
section. Reply Br. 2. According to Appellant, copying and pasting text to a
notes section of Haynes would not make sense, because the annotations are
already linked to the specific location in the text (Reply Br. 2-3) and is
contrary to the purpose of Haynes (App. Br. 3--4).
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Application 13/269,544
Appellant's contentions are inconsistent with Paragraph 71 of Haynes,
which teaches highlighted text that the note is tied to can be displayed at the
top of the note. Appellant's contentions are also inconsistent with
Paragraphs 77, 85, 93, 112, 149, and Figures 3-5, 9, and 20 of Haynes,
which teach copying highlighted text from one of multiple sources into the
note.
We sustain the rejection of claim 1 under 35 U.S.C. § 103 as
unpatentable over Haynes. However, because the Examiner did not rely on
Paragraphs 71, 77, 85, 93, 112, 149, and Figures 3-5, 9, and 20 of Haynes,
we designate this rejection as a new ground of rejection. Claims 2, 3, and 9,
not separately argued, fall with claim 1.
Section 103 rejection of claim 4
Appellant contends Paragraph 59 of Haynes does not teach "the user
can copy clips from a plurality of books to the notes page," as recited in
claim 4, because "[ n ]othing is being copied from the textbooks themselves"
and are instead the "student's own notes." App. Br. 4; Reply Br. 3.
According to Appellant, it does not make sense to copy the text in Hayes to
the annotation because the annotation would be repeating the same text to
which the annotation is linked. However, Appellant's contentions are
inconsistent with Paragraphs 71, 77, 85, 93, 112, 149, and Figures 3-5, 9,
and 20 of Haynes, as discussed in our analysis of claim 1.
We sustain the rejection of claim 4 under 35 U.S.C. § 103 and
designate this rejection as a new ground of rejection.
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Application 13/269,544
Section 103 rejection of claim 5
Appellant contends Figure 2 of Hayes does not teach "the clips retain
their original formatting on the notes page," as recited in claim 5, because
Figure 2 shows the original textbook, not clips of the textbook on a notes
page. App. Br. 4. Appellant also contends a user creating an annotation on
a notes page also does not teach putting a clip on the notes page and
retaining the original formatting. Reply Br. 4.
Appellant's contention that Haynes does not teach putting a clip on a
notes page is inconsistent with Paragraphs 71, 77, 85, 93, 112, 149, and
Figures 3-5, 9, and 20 of Haynes. Further, Paragraph 42 of Haynes teaches
the original formatting can be an industry standard such as PDF or HTML.
The Supreme Court has held that the 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." KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007)). We conclude that retaining the original
industry standard in the text copied into the note "was a design step well
within the grasp of a person of ordinary skill in the relevant art." Id. at 427.
Further, the scope of "original formatting" encompasses text formatting,
such as text formatting in the source that is retained as text formatting when
copied into the note as shown in Figure 20 of Haynes.
We sustain the rejection of claim 5 under 35 U.S.C. § 103 and
designate this a new ground of rejection.
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Section 103 rejection of claim 6
Appellant contends Haynes does not teach "the clips each include an
original source annotation including a reference to the original source from
which the clip was copied," as recited in claim 6. App. Br. 4; Reply Br. 3.
Appellant's contention is inconsistent with Paragraph 41 of Haynes, which
teaches the "annotation is stored in a manner that maintains its association
with the particular title, portion of the title and/or location within the title
that is selected by the user." Appellant's contention is also inconsistent with
Paragraphs 71, 77, 85, 93, 112, 149, and Figures 3-5, 9, and 20 of Haynes.
We sustain the rejection of claim 6 under 35 U.S.C. § 103 and
designate this a new ground of rejection.
Section 103 rejection of claim 7
Appellant contends Haynes does not teach "a source field that
displays the original source as requested by the user," as recited in claim 7.
App. Br. 4. Appellant's contention is inconsistent with Figure 2 of Haynes,
which shows a content window. Appellant's contention is also inconsistent
with Figure 20 of Haynes, which shows a highlight field, or "source field,"
that displays the original source.
We sustain the rejection of claim 7 under 35 U.S.C. § 103 and
designate this a new ground of rejection.
Section 103 rejection of claim 8
Appellant contends Figure 2 of Haynes does not teach "the clips each
include a tag field containing user annotations of the clip as a writing on the
clip that can be selectively removed by the user," as recited in claim 8,
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Application 13/269,544
because Haynes' annotations are not placed in clips copied from the book.
App. Br. 5. Appellant's contention is inconsistent with Paragraphs 71, 77,
85, 93, 112, 149, and Figures 3-5, 9, and 20 of Haynes.
We sustain the rejection of claim 8 under 35 U.S.C. § 103 and
designate this a new ground of rejection.
Section 103 rejection of claim 10
Appellant contends Haynes does not teach "the user can copy clips
from a plurality of webpages to the notes page," as recited in claim 10. App.
Br. 5. We find Paragraphs 38, 42, 49, 59, and 71 and Figures 2-26 of
Haynes teach copying clips from a plurality of web pages to the notes page
within the meaning of claim 10. Paragraph 3 8 teaches a server hosts a
website portal which can be accessed by users. Paragraph 42 teaches
"digital content which can be stored by the server 102 and accessed by users
includes digital information that can delivered to users in a variety of
formats, including: e-books ( epub, PDF, HTML, and other industry
standards)." Paragraph 49 teaches viewing annotations on a web site. Also,
Figures 2-26 display source material and notes in a web browser. Paragraph
59 teaches taking notes from a plurality of sources and accessing all the
notes in one collection of notes. Paragraph 71 teaches displaying
highlighted text from the source material at the top of a note. We find
Haynes' teaching of accessing source content from a website portal, where
the source content is delivered in HTML format, and copying clips from the
source content displayed in a web browser, as shown in Figures 2-26,
teaches "the user can copy clips from a plurality of webpages to the notes
page," as recited in claim 10.
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We sustain the rejection of claim 10 under 35 U.S.C. § 103 and
designate this a new ground of rejection.
Section 103 rejection of claim 11
Appellant contends Haynes does not teach "the user can copy clips
from a plurality of books to the notes page," as recited in claim 11, because
there is no reason to copy clips from a plurality of books into the annotations
of the books. Reply Br. 4. Appellant's contention is inconsistent with
Paragraphs 59, 71, 77, 85, 93, 112, 149, and Figures 3-5, 9, and 20 of
Haynes.
We sustain the rejection of claim 11 under 35 U.S.C. § 103 and
designate this a new ground of rejection.
Section 103 rejection of claims 19 and 20
Appellant contends Figure 9 of Haynes does not teach "clips of the
media from multiple sources [copied] to the notes page" and "displayed
simultaneously" as recited in claim 19. Reply Br. 5. Appellant's contention
is inconsistent with Paragraphs 59 and 71 as well as Figures 2-9 of Haynes.
We sustain the rejection of claim 19 under 35 U.S.C. § 103 and
designate this a new ground of rejection. Claim 20 not separately argued
falls with claim 19.
Section 103 rejection of claims 12-18
Claim 12 recites "copying a clip from the source onto a notes page;
and based upon a limit contained in the source, limiting an amount of the
source that can be copied onto the notes page." The Examiner finds Haynes
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describes setting a limit to how much text can be copied when the note has a
maximum number of characters in Paragraph 130. Ans. 12. Appellant
contends Paragraph 130 of Haynes teaches a limit on the number of
characters that can be placed into an annotation, rather than a limit contained
in the source that limits the amount of source that can be copied to the notes
page. App. Br. 5; Reply Br. 4.
We agree with Appellant that Paragraph 130 of Haynes does not teach
"limiting an amount of the source that can be copied onto the notes page" as
claimed. We reverse the Examiner's rejection of claim 12 and
corresponding dependent claims 13-18.
However, we find the combination of Haynes and Goodwin (US
8,112,813 Bl, Feb. 7, 2012) renders claim 12 obvious. Haynes teaches
allowing users to indicate locations within titles and add annotations,
including highlighting text, and also teaches that highlighting text within the
source title provides for the first two lines of the highlighted text to be
displayed in the note. Haynes, i-fi-171, 77, 85, 93, 112, 149; Figs. 3-5, 9, and
20. Goodwin teaches a method for copying a limited portion of digital
content. Abstract. For example, a content threshold limits an amount of
digital content that can be copied or pasted. Goodwin, col. 6, 11. 41--4 7; col.
7, 11. 29-56; Fig. 3C.
Haynes' teaching of highlighting and copying text from a source onto
a notes page, combined with Goodwin's teaching of limiting an amount of
the source text that can be copied, would predictably result in "copying a
clip from the source onto a notes page; and based upon a limit contained in
the source, limiting an amount of the source that can be copied onto the
notes page," within the meaning of claim 12. See Leapfrog Enterps., Inc. v.
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Application 13/269,544
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 419).
We reject claim 12 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Haynes and Goodwin.
For claim 13, which recites "the clip includes an annotation indicating
the source of the clip," we find Haynes teaches this limitation as discussed in
our analysis of claim 6. We reject claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Haynes and Goodwin.
For claim 14, which recites "the clip retains its original formatting on
the notes page," we find Haynes teaches this limitation as discussed in our
analysis of claim 5. We reject claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Haynes and Goodwin.
For claim 15, which recites "displaying the original source of the clip
as associated with the clip upon request by the user," we find Haynes
teaches this limitation as discussed in our analysis of claim 7. We reject
claim 15 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Haynes and Goodwin.
For claim 16, which recites "annotating the clip by entering text in a
tag field associated with the clip," we find Haynes teaches this limitation as
shown in the note field of Figure 20. We reject claim 16 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Haynes and
Goodwin.
For claim 1 7, which recites a limitation similar to that recited in claim
10, we find Haynes teaches this limitation for the reasons given in our
analysis of claim 10.
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For claim 18, which recites a limitation similar to that recited in claim
4, we find Haynes teaches this limitation for the reasons given in our
analysis of claim 4.
DECISION
The rejection of claim 8 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is affirmed.
The rejection of claims 1-11, 19, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Haynes is affirmed and designated as a new ground
of rejection.
The rejection of claims 12-18 under 35 U.S.C. § 103(a) as being
unpatentable over Haynes is reversed.
We reject claims 12-18 under 35 U.S.C. § 103(a) as being
unpatentable over Haynes and Goodwin.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). Section 41.50(b) provides that "[a] new ground of
rejection ... shall not be considered final for judicial review."
Section 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 ground of rejection to
avoid termination of the appeal 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.
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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).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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