Ex Parte Cervera Navas

Patent Trial and Appeal Board

May 26, 2017

12733234 (P.T.A.B. May. 26, 2017)

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.
12/733,234 02/18/2010 Leonard Cervera Navas 011070-911001 6610
7590 05/26/2017123639
F ALATI
INTELLECTUAL PROPERTY LAW
11 NORTH PEARL STREET, SUITE 1515
ALBANY, NY 12207
EXAMINER
SAINT CYR, LEONARD
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
05/26/2017 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 LEONARD CERVERA NAVAS
Appeal 2017-003738
Application 12/733,234
Technology Center 2600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
Opinion for the Board by COURTENAY, Administrative Patent Judge.
Opinion concurring by COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 34-49. Claims 1—33 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-003738
Application 12/733,234
The Invention
Appellant’s claimed invention relates to a “method and system for
adapting the reproduction speed of a sound track to a user’s text reading
speed.” (Title).
Representative Claim
34. Method for adapting the reproduction of a sound track
to the text reading speed of a user comprising the following steps:
(a) recording of the moment in which a user reaches at
least one reference point in the said text,
(b) calculating and recording the text reading speed with
regard to the aforementioned moment in which a user reaches the
said reference point in the text and the length of text between
reference points,
(c) adjusting the reproduction speed of the sound track
depending on the calculated reading speed by lengthening or
shortening the pauses between sound tracks or lengthening or
shortening the reproduction of the sound tracks.
(Lettered limitations are contested.)
Rejections
Rl. Claims 34 and 35 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
R2. Claims 34 and 35 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of Walker
(US Patent 2002/0091713 Al, publ. July 11, 2002) and Gleissner et al. (US
2004/0152054 Al, publ. Aug. 5, 2004) (hereinafter “Gleissner”).
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R3. Claims 36-49 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Walker,
Gleissner, and Park (US 2004/0025111 Al, publ. Feb. 5, 2004).
Grouping of Claims
Based upon Appellant’s arguments, we decide the appeal of claims 34
and 35, rejected under § 103 rejection R2, on the basis of representative
claim 34. We decide the appeal of claims 36-49, rejected under § 103
rejection R3, on the basis of representative claim 36. To the extent
Appellant has not advanced separate, substantive arguments for particular
rejected claims or issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. Although we conclude the Examiner erred regarding rejection R1
under § 101, we find Appellant’s arguments regarding obviousness
rejections R2 and R3 are unpersuasive, for the reasons discussed infra.
Regarding rejections R2 and R3, we adopt as our own: (1) the findings and
legal conclusions set forth by the Examiner in the Final Office Action from
which this appeal is taken (Final Act. 5—10), and (2) the findings, legal
conclusions, and explanations set forth in the Answer in response to
Appellant’s arguments (Ans. 10-13). We highlight and address specific
findings and arguments for emphasis in our analysis below.
Rejection R1 of claims 34 and 35 under §101
Issue: Did the Examiner err in concluding that claims 34 and 35 are
directed to non-statutory subject matter under 35 U.S.C. § 101?
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Appellant contends “there is significantly more added to the abstract
idea” where the invention creates
a new sensorial experience, never tried so far, consisting of
combining the reading of printed words with the reproduction of
sounds and music (but never words as in an audiobook) in a
similar way to the use of sound tracks in motion pictures ....
The central theme of the invention is the measuring of
reading speed of a user by marking the time taken to reach
various reference points in a text. The invention then modifies
the playback of a sound track to match the reading speed of an
individual reader. The sound track is not only music, it is music
and sound effects (but never words).
(App. Br. 7).
The Examiner concludes the claims at issue are “are built around the
behavior of mathematically defined as adapting the reproduction speed of a
soundtrack base[d] on the text reading speed of a user. This is a judicial
exception (abstract idea).” (Ans. 10).
We note abstract ideas have been identified by the courts by way of
example, as including fundamental economic practices, certain methods of
organizing human activities, an idea of itself, and mathematical relationships
and/or formulas. See Alice Corp. Pty. Ltd. v. CLS BankInt'l, 134 S. Ct.
2347, 2355—56 (2014). Under the two-part test described by the Supreme
Court in Alice, “[w]e must first determine whether the claims at issue are
directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134
S. Ct. at 2355.
We conclude claim 1 performs a process of synchronizing a sound
track to a text reading speed that goes beyond merely “organizing [existing]
information into a new form” or carrying out a fundamental economic
practice. Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
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Application 12/733,234
1344, 1351 (Fed. Cir. 2014); see also Alice, 134 S.Ct. at 2356; McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1316 (2016) (holding
that a claim directed to automating lip synchronization using rules is not
directed to an abstract idea and recites subject matter as a patentable
process under § 101.).
Applying this reasoning here, we conclude adjusting the
reproduction speed of the sound track depending on the calculated
reading speed, or shortening the pauses between sound tracks, or
lengthening or shortening the reproduction of the sound tracks (i.e.,
synchronizing), is not a categorically abstract idea.
We further agree with Appellant’s argument:
[T]he computation as taught herein carried out by a computer
calculates the reading speed of an individual reader and
anticipates when the reader reaches the next point for the next
segment of the sound track. This ability to actively learn and
modulate constantly the outcome is one of the features of the
present disclosure that cannot be classified in any way as being
capable of being performed by a routine generic computer.
(App. Br. 7). We thus find the recited “adjusting” step (c) of claim 34
provides significantly more than the abstract idea itself, and thus satisfies the
second prong of the Alice test.1
We therefore reverse the Examiner’s rejection R1 of claims 34 and 35
under 35 U.S.C. § 101.
1 Regarding prong two of the test articulated by the Supreme Court in Alice,
we further “consider the elements of —each claim both individually and 'as
an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application.” Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297)).
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Rejection R2 of claims 34 and 35 under § 103(a)
Issue: Under § 103, did the Examiner err by finding the cited
combination of Walker and Gleissner would have taught or suggested
contested limitations (a), (b), and (c), within the meaning of claim 34?2
Regarding claim 34, Appellant contends:
[T]he Applicant's invention adds sounds (i.e. sound track) to
books in order to enhance the reading experience i.e. provides an
additional element to the book reading experience by adding
extra material to improve the media. Neither Walker nor
Gleissner make use of the addition of sound tracks.
(App. Br. 11).
Appellant further urges:
The voiceover in Gleissner is not a sound track but a verbal
explanation of text or video or a vocalization of the text of the
transcript to aid content comprehension. In the applicant's
invention, there is never a voiceover which would conflict with
the reading of the printed words.
(Id.).
We find Gleissner’s augmented content, including music, “audio
books,” etc., teaches or at least suggests the contested “sound track” as
recited in claim 34. (Ans. 10, Gleissner, Abst., | 55). Although Walker’s
text presentation assists the reader in reading, we find Walker’s sound files,
comprising actual sounds of words to further assist the reader, teach or at
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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least suggest a “soundtrack, within the meaning of claim 34.”3 (Walker |
91).
Appellant further contends:
Cervera Navas [(the named inventor)] adjusts [the] timing of
sound track reproduction through [a] unique algorithm fully
described in the Specification and Claims[,] whereas Gleissner
provides no such detail.
Cervera Navas initially introduces a main switch on the
sound reproduction player which is specifically for the reader to
manually operate an electronic marker to record the reader
reaching a reference point in the text and then to calculate the
reader's reading speed to arrive at that point and determine
overall reading speed (Claims 34, 40, 41, 42 and 43). Cervera
Navas also introduces the equivalent for electronic texts where
the computer records text reference points for calculation of
reading speed (Claims 44, 45, 46 and 47). Neither of these
introduced features are in Gleissner and are novel to Cervera
Navas and are non-obvious over the prior art cited herein.
(App. Br. 12, emphasis omitted).
We are not persuaded by Appellant’s arguments because Appellant is
arguing limitations not recited in claim 34.4 Claim 34 is silent regarding a
3 “[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989). (Emphasis
added).
4 Regardless of the general contentions and imputed intended meanings
articulated by Appellant in the Brief, “[i]t is the claims that measure the
invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“i T\hc name of the
game is the claim.”).
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“unique algorithm,” a “main switch,” or manually operating an electronic
marker.
Appellant also argues:
Applicant's invention provides a detailed explanation of
how the computer will calculate the reading speed of a reader
whereas Gleissner does not contain any reference to calculation
of reading speed or, indeed, how that would be implemented if it
had been included in Gleissner.
(App. Br. 12).
We are not persuaded by Appellant’s argument because Appellant is
arguing the references separately.5 6The Examiner cites Walker, not
Gleissner, for teaching the “calculating” step (b) of claim 34. (Final Act. 5).
We find Walker’s measuring and tracking the reading rate teaches, or at least
suggests, the contested step of “calculating ... the text reading speed,” as
recited in claim 34. (Walker || 115, 393).
In the Answer (12), the Examiner further finds Gleissner’s tracking of
the speed at which the user views or listens to a segment also teaches or
suggests this limitation. (Ans. 12, citing Gleissner, || 32, 69, 71, and
Gleissner’s claim 26: “maintaining a correlation of words spoken to specific
points in at least one of the audio and video digital content by reference to
the index.”).
We agree with the Examiner’s finding that Walker’s speeding up and
slowing down the presentation rate (Walker, 1114, Fig. 10) combined with
Gleissner’s playback speed adjustment and pausing actions (Gleissner 171,
5 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
6 Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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claim 26), teach, or at least suggest, “adjusting of the reproduction speed of
the sound track depending on the calculated reading speed, ” as recited in
step (c) of independent claim 34. (Ans. 12—13).
We note Appellant has not filed a Reply Brief to rebut the Examiner’s
responsive clarifications and findings in the Answer.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the corresponding features found in cited prior
art. Therefore, we sustain the Examiner’s obviousness rejection of
independent representative claim 34, and dependent claim 35, which falls
therewith. See supra Section, Grouping of Claims.
Rejection R3 of dependent claims 36—49 under § 103(a)
Issue: Under § 103, did the Examiner err by improperly combining
the cited references?
Regarding system claims 36-49, Appellant submits arguments
regarding the contested claim term “sound track” and the contested
limitation of calculating “a reader’s reading speed” (claim 36), similar to
those arguments previously advanced regarding method claim 34. (App. Br.
13—16). We are not persuaded by Appellant’s arguments for the same
reasons discussed above.
Appellant further argues the prior art references relied upon in
rejection R3 “are not in the same technical field of Applicant's invention”
and have “a different use.” (App. Br. 16).
We are not persuaded that Walker, Gleissner, and Park are non-
analogous art. We note that different uses do not necessitate such a
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conclusion. Our reviewing court guides: “[t]his court also observes that the
inclusion of meat encasement art within the understanding of a person of
ordinary skill in this art does not preclude the use of the knitting references
as analogous to the claimed invention.” Mintz v. Dietz & Watson, 679 F.3d
1372, 1377 (Fed Cir. 2012).
Appellant does not persuade us that the uses of reading text in the
ways taught in each of Walker, Gleissner, and Park are so different that a
person of ordinary skill in the art would have considered these respective
methods for improving human reading to be non-analogous. When Walker,
Gleissner, and Park are each read for all that they teach, it is apparent that
they are in the same or similar fields of endeavor and are thus analogous art.
In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992) (“Two criteria have
evolved for determining whether prior art is analogous: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.”).
Applying this reasoning here, we find a preponderance of the
evidence supports the Examiner’s finding that one of ordinary skill in the art
would have reasonably been motivated to combine the teachings of Walker,
Gleissner, and Park. (Final Act. 6, 8—9).
Accordingly, on this record, and based upon a preponderance of the
evidence, we are not persuaded the Examiner erred in combining the cited
references. We therefore sustain the Examiner’s rejection R3 of
representative independent claim 36, and dependent claims 37-49, which
fall with claim 36. See supra Section, Grouping of Claims.
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DECISION
We reverse the Examiner's decision rejecting claims 34 and 35 under
35 U.S.C. § 101.
We affirm the Examiner's rejections R2 and R3 of claims 34-49 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. §41.50(a)(1).
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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COURTENAY, Administrative Patent Judge, concurring:
I concur in this panel’s decision that claims 34 and 35 are directed to
statutory subject matter under 35U.S.C. § 101. Claims 34 and 35 are clearly
not directed to a method of performing a financial or hedging transaction or
a method of organizing human activity — these being examples of methods
our reviewing courts have previously concluded were directed to abstract
ideas. Nor can synchronization of a sound track with a person’s reading
speed be reasonably performed as a mental step.
I agree that McRO, Inc., 837 F.3d at 1316, provides guidance here
regarding the similar synchronization aspect of claim 34. Therefore, I find
it unnecessary to reach the second step of the Alice analysis, because I
conclude claim 34, when considered as a whole, under a broad but
reasonable interpretation consistent with the Specification, is not directed to
an abstract idea.
I particularly note Appellant’s supporting description: “This
invention is particularly interesting for children and teenagers as their
reading speed may vary significantly in months or in a few years’ time.”
(Spec. 5,11. 26—28, emphasis added).
It is readily apparent from a review of Appellant’s claims and
Specification that the invention on appeal could assist young children in
learning to read, by making such reading more interesting with the
addition of a synchronized soundtrack (e.g., by providing sound effects
and/or music synchronized with each new page).
I decline to dismiss, as an abstract idea, an inventive method that
could materially reduce illiteracy by advancing reading proficiency in
children (and adults). Although I concur with the panel that Appellant’s
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present claims are too broad to avoid the Examiner’s art rejections under
§ 103,1 am of the view there is a significant, important invention described
in Appellant’s Specification.
2