Ex Parte Butin et al

Patent Trial and Appeal Board

Sep 7, 2016

12320915 (P.T.A.B. Sep. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/320,915 0210912009
60956 7590 09/09/2016
Professional Patent Solutions
P.O. BOX654
HERZELIYA PITUACH, 46105
ISRAEL
FIRST NAMED INVENTOR
Emma Noya Butin
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.
KRY-PU-004-USl 3251
EXAMINER
BHARGA VA, ANIL K
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
09/09/2016 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):
office@propats.com
vsherman@propats.com
utalmi@propats.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMA NOY A BUTIN and OREN KEINAN
Appeal2015-007103
Application 12/320,915
Technology Center 2100
Before ST. JOHN COURTENAY III, LINZY T. McCARTNEY, and
ALEX S. YAP, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 6-14, and 18-27. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2015-007103
Application 12/320,915
STATEMENT OF THE CASE
The present patent application concerns a "[ d]evice, system, and
method for providing interactive guidance with execution of operations."
Abstract. Claims 1 and 13 are independent. Claim 1 illustrates the claimed
subject matter:
1. A method of providing interactive guidance to a user of a
computerized application, the method comprising:
receiving a user request to obtain interactive guidance with
respect to said computerized application;
based on the user request, selectively retrieving an interactive
guidance script from a repository of previously-recorded
interactive guidance scripts, wherein said interactive guidance
script comprises instructions for performing one or more actions
in said computerized application on behalf of the user, for
displaying guidance text associated with at least one of said
actions, and for enabling the user to enter data comprising a
character string into one or more fields in the computerized
application in response to at least some of said guidance text; and
1 • • ,..J • • • ,..J •
p1aymg smu mteractive gmuance scnpt,
to automatically execute said one or more actions in said
computerized application on behalf of the user, to display said
guidance text in association with at least one---of said actions,
and to enable the user to enter said data into said one or more
fields in said computerized application, in response to at least
some of said guidance text.
REJECTIONS
Claims 1, 2, 6-8, 11-14, 18-20, and 23-25 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Jacober et al. (US 6,020,886; Feb. 1,
2000) ("Jacober"), Cohen et al. (US 2006/0080607 Al; Apr. 13, 2006)
("Cohen"), and Palmer (US 5,488,685; Jan. 30, 1996) ("Palmer").
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Appeal2015-007103
Application 12/320,915
Claims 9 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacober, Cohen, Palmer, and Fong (US 2009/0006985 Al;
Jan. 1, 2009).
Claims 10 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacober, Cohen, Palmer, and Wada et al. (US
2006/0095860 Al; May 4, 2006).
Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacober, Cohen, Palmer et al. (US 2003/0210260 Al;
Nov. 13, 2003).
ANALYSIS
Independent claim 1 recites "an interactive guidance script ...
wherein said interactive guidance script comprises instructions . . . for
enabling the user to enter data comprising a character string into one or
more fields in the computerized application in response to at least some of
said guidance text." Br. 18 (emphasis added). Independent claim 13 recites
a similar limitation. Id. at 21. The Examiner concluded the inventions
recited in these claims would have been obvious in light of the teachings of
Jacober, Cohen, and Palmer. See Final Act. 3-5, 10. Appellants contend
Jacober teaches away from the recited interactive guidance script because
"Jacober specifically teaches disabling a user from inputting information so
that [a help] demonstration is not interrupted." Id. at 13.
We find Appellants' argument persuasive. "A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
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Appeal2015-007103
Application 12/320,915
applicant." Jn re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, Jacober
discloses a help demonstration player that does the opposite of the recited
"interactive guidance script"-the player disables user input while a help
demonstration plays. Specifically, Jacober discloses "the demonstration
player program initializes the application program. The initialization
includes disabling the users mouse and keyboard so that the user will not
interfere with the demonstration." Jacober col. 8, 11. 10-13 (emphasis
added); see also id. Abstract ("[U]ser control over the keyboard and mouse
is disabled to prevent the user from interfering with the demonstration."),
col. 3, 11. 9-13 (same). Because Jacober teaches a help demonstration player
that disables user input while a demonstration plays, Jacober would have
discouraged one of ordinary skill in the art from employing a "interactive
guidance script compris[ing] instructions ... for enabling the user to enter
data ... in response to at least some of said guidance text."
"Although a reference that teaches away is a significant factor to be
considered in determining unobviousness, the nature of the teaching is
highly relevant, and must be weighed in substance." Gurley, 27 F.3d at 553.
When we weigh the strength of the evidence here, we find Jacober's
teaching away compelling, such that an artisan would have been led in a
direction divergent from the path that was taken by the Appellants.
Accordingly, we do not sustain the Examiner's rejection of independent
claims 1 and 13 and the rejections of their respective dependent claims.
DECISION
For the above reasons, we reverse the Examiner's rejections of claims
1, 2, 6-14, and 18-27.
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Appeal2015-007103
Application 12/320,915
REVERSED
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