Ex Parte Boegelund et al

Board of Patent Appeals and Interferences

Feb 28, 2008

09998043 (B.P.A.I. Feb. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FLEMMING BOEGELUND and DEBRA A. KIPPING
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Appeal 2007-3356
Application 09/998,043
Technology Center 2600
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Decided: February 28, 2008
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Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO,
and ANITA PELLMAN GROSS, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2007-3356
Application 09/998,043

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-19. Claims 20-30 have been canceled.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ claimed invention relates to the translation of text on an
original presentation slide from a first language to a second language. Text
information, as well as addressing information which indicates the location
of the text on the slide, is extracted from the slide and inserted into an
auxiliary file for the translation procedure. After translation, the translated
text information is written onto the copy of the original presentation slide at
the locations of the originally read text. (Specification 6-7).
Claim 1 is illustrative of the invention and reads as follows:
1. A computer implemented method for translating text on an original slide
presentation from a first language to a second language comprising the steps
of:
creating a text file, the text file having a format that can enable text be
translated from one language to a second language using conventional file
translation techniques;
inserting text from an original presentation slide into the created text
file;
translating the text inserted into the text file from a first language to a
second language; and

1 The cancellation of claims 20-30, indicated by Appellants at page 2 of the
Brief, has been verified by the Examiner in a communication mailed March
15, 2007.
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writing the translated text onto the original presentation slide, in the
location of the original text that was translated, using information contained
in the original presentation slide.
The Examiner relies on the following prior art references to show
unpatentability:2
Rosenbaum US 5,404,435 Apr. 4, 1995
Chou US 5,583,761 Dec. 10, 1996

Claims 1-6 and 10-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chou in view of the admitted prior art.
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chou in view of the admitted prior art and further in view
of Rosenbaum.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUES
(i) Under 35 U.S.C § 103(a), with respect to appealed claims 1-6 and
10-19, would one of ordinary skill in the art at the time of the invention have
found it obvious to combine Chou and the admitted prior art to render the
claimed invention unpatentable?

2 In addition, the Examiner relies upon Appellants’ admissions as to the prior
art at page 1, lines 19-27 of the Specification.
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(ii) Under 35 U.S.C § 103(a), with respect to appealed claims 7-9,
would one of ordinary skill in the art at the time of the invention have found
it obvious to modify the combination of Chou and the admitted prior art by
adding the teachings of Rosenbaum to render the claimed invention
unpatentable?

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the 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., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claims 1 and 15 based on the combination of Chou
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and the admitted prior art, Appellants’ arguments in response assert a failure
to set forth a prima facie case of obviousness since all of the claimed
limitations are not taught or suggested by the applied prior art. Appellants’
arguments (App. Br. 5-7; Reply Br. 2) focus on the contention that, in
contrast to their invention which is a “batch” process which performs
language translations of text on original existing completed slides, the
system of Chou is directed to language translation of text in a real-time “on-
the-fly” parallel creation and translation process.
It is our view, however, that Appellants’ arguments are not
commensurate with the scope of the claims. As pointed out by the Examiner
(Ans. 18-19), there is no language in independent claims 1 and 15 which
requires that the claimed language translation method be a “batch” process
involving translations of text on previously created slides. Conversely, we
would add, there is nothing in claims 1 and 15 which would preclude the
real-time language translation features disclosed by Chou. It is our opinion
that Appellant’s arguments improperly attempt to narrow the scope of the
claim by implicitly adding disclosed limitations which have no basis in the
claim. See In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
We further find no error, and there are no convincing arguments to the
contrary from Appellants, in the Examiner’s finding of obviousness (Ans. 4,
5, and 19) with respect to the proposed combination of Chou and the
admitted prior art. In our view, the skilled artisan would have recognized
that the presentation program language translation teachings of Chou would
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have obvious applicability to the slide presentation creation development
programs of the admitted prior art.3
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness based on the combination of
Chou and the admitted prior art which has not been overcome by any
convincing arguments from Appellants, the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claims 1 and 15, as well as dependent claims 3-6,
10-14, and 16-19 not separately argued by Appellants, is sustained.
We also sustain the Examiner’s obviousness rejection of separately
argued dependent claim 2 based on the combination of Chou and the
admitted prior art. We find no error in the Examiner’s finding (Ans. 5) that
Chou’s use of addressing information to locate the coordinate position of
extracted original text satisfies the claimed requirement of using location
addressing information “related to the configuration of the objects.”
Appellants’ arguments (Reply Br. 3) to the contrary notwithstanding, there is
no requirement in the language of claim 2 that the claimed objects be non-
text objects or, conversely, any language that would preclude Chou’s text
location configuration feature from being considered an object
configuration.
Turning to a consideration of the Examiner’s 35 U.S.C § 103(a)
rejection of dependent claims 7-9 in which the proposed combination of
Chou and the admitted prior art is modified by the addition of Rosenbaum,
we sustain this rejection as well. Appellants’ arguments (App. Br. 7; Reply

3 We make the observation that Appellants’ arguments (App. Br. 7)
impliedly recognize the appropriateness of the Examiner’s proposed
combination by characterizing the language translation system of Chou as
being directed to the creation of a “file/slide.”
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Br. 3) initially focus on the contention that Rosenbaum lacks any disclosure
of a language translation feature as presently claimed. We find such
contention to be unpersuasive since the Examiner has relied upon Chou, not
Rosenbaum, for a teaching of the language translation of text in a
presentation program. It is apparent from the Examiner’s line of reasoning
in the Answer that the basis for the obviousness rejection is the combination
of Chou, the admitted prior art, and Rosenbaum. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F. 2d 413, 425
(CCPA 1981); In re Merck & Co., Inc., 800 F. 2d 1091, 1096 (Fed. Cir.
1986).
We further find to be without merit Appellants’ argument (App. Br. 8;
Reply Br. 3) that Rosenbaum is inapposite to Chou since Rosenbaum is
concerned with identifying and handling non-text objects in a document
while Chou is directed to the translation of text objects and does not discuss
non-text objects. To whatever extent the disclosure of Rosenbaum may be
“focused” on the identification and retrieval of non-text objects as argued by
Appellants, we find, as did the Examiner, that Rosenbaum provides an
unambiguous disclosure of the identifying and retrieval of text objects as
well. For example, in analyzing the mixed text and non-text object
document illustrated in Rosenbaum’s Figure 2, Rosenbaum identifies and
retrieves text objects (step 1208, col. 15, ll. 57-58), and then applies a key
word extracting algorithm to the text objects (step 1210, col. 15, l. 64).
We also find no persuasive arguments from Appellants which
convince us of any error in the Examiner’s articulated line of reasoning
(Ans. 16, 19, and 20) which establishes a proper basis for the proposed
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addition of Rosenbaum to the combination of Chou and the admitted prior
art. As recognized by the Examiner, Chou’s disclosed translation system
requires a user to manually select text items that are in need of translation.
(Chou, col. 3, ll. 12-15, col. 8, ll. 43-44, and col. 9, ll. 1-3). We agree with
the Examiner’s finding, however, that a skilled artisan would have
recognized and appreciated that the ability to automatically recognize and
extract text information from a mixed text object as taught by Rosenbaum
would have served as an obvious enhancement to the combined system of
Chou and the admitted prior art.

CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-19 is affirmed.
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)(iv).

AFFIRMED

KIS

Darcell Walker
8107 Carvel Lane
Houston, TX 77036
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