Ex Parte Chow

Board of Patent Appeals and Interferences

Dec 10, 2008

09905579 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL S. CHOW
____________

Appeal 2008-4035
Application 09/905,579
Technology Center 3600
____________

Decided: December 10, 2008
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 19-34. Claims 1-18 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellant’s claimed invention is directed to a method and
apparatus for distributing literature to clients on a customized basis. The
apparatus includes a database containing literature. The literature selected
by the client is assembled and printed onto sheets of media to form a booklet
to be mailed or given to the client (Specification, 5:10-15). Claim 19,
reproduced below, is representative of the subject matter of appeal.

19. A method, comprising:
providing a client interface, a literature
assembly algorithm, and a database containing
information, wherein the client interface comprises
at least a portion of a network;
detecting a client inquiry via the client
interface;
presenting the information to the client via
the client interface in response to the inquiry;
receiving a client selection of at least a
portion of the information via the client interface
in response to presenting the information;
in response to receiving the client selection,
assembling the selected information into a
document, wherein the algorithm automatically
specifies an arrangement of components to create
the document;
obtaining an electronic image, comprising:
the document; and,
a postage marking calculated based on
a total weight of a booklet; and,
printing the electronic image onto one or
more sheets of print media.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Long EP 0 621 563 A1 Apr. 4, 1994
Tonkin US 6,134,568 Oct. 17, 2000

The following rejections are before us for review:
1. Claims 19-34 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.1
2. Claims 19-34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tonkin and Long.

THE ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 19-34 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. This issue turns on
whether claims 19 and 27 recite “wherein the client does not specify an
arrangement of components to create the document.”
The second issue is whether the Appellant has shown that the
Examiner erred in rejecting claims 19-34 under 35 U.S.C. § 103(a) as
unpatentable over Tonkin and Long. This issue turns on whether it would
have been obvious to combine the disclosed teachings of Tonkin and Long
to meet the claimed invention.

1 We note that the Examiner has not withdrawn the rejection of claims 19-34
under 35 U.S.C. § 112, first paragraph, officially as it remains listed at page
3 of the Answer.
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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence2:
FF1. Claims 19 and 27 do not include the limitation for “wherein the
client does not specify an arrangement of components to create the
document.” (Br. Claim Appendix; also Amendment After Final Rejection
filed January 31, 2007 and indicated as to be entered in the Advisory Action
mailed February 21, 2007).
FF2. Claim 19 includes the limitation “in response to receiving the
client selection, assembling the selected information into a document,
wherein the algorithm automatically specifies an arrangement of
components to create the document.” (Br. Claim Appendix).
FF3. Claim 27 includes the limitation “in response to receiving the
client selection, assembling the selected data into a document, wherein the
algorithm automatically specifies an arrangement of components to create
the document.” (Br. Claim Appendix; also Amendment After Final
Rejection filed January 31, 2007 and indicated as to be entered in the
Advisory Action mailed February 21, 2007).
FF4. Tonkin discloses a system to enable a user to preview a
document by providing a user interface and inputting, via the interface,
information specifying an arrangement components to create a document
including a page, tab page, front and back cover, and binding (Col. 2:27-40).
FF5. Tonkin discloses that the system can be used on the Internet
(Col. 3:57-65).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF6. Tonkin discloses that the system can be used to create a booklet
(Fig. 8B).
FF7. Tonkin discloses that a user may “accept” the document in
which case the document specification is transmitted via the Internet or
another communication system to the processing facility (Col. 13:17-24).
FF8. Tonkin discloses that the formatted information includes a
document summary listing the source file name (Col. 13:42-47).
FF9. Tonkin discloses that the systems computer specifies the
arrangement of the components to create the document as claimed since the
specification is transmitted and formatted.
FF10. Tonkin inherently claims that an algorithm automatically
specifies an arrangement of components to create the document after user
selection since the information is formatted and transmitted over the
Internet.
FF11. Long discloses a system for preparing letters for mailing (Col.
1:5-6).
FF12. Long discloses determining the weight of an envelope stuffed
with inserts and using a franking machine to print the proper postage onto
printed material. (Col. 5:42-56).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
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1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739, (citing Graham, 383
U.S. at 12 (emphasis added)), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” The Court also stated “[i]f a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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obviousness”)). However, “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.” Id.

ANALYSIS
Claims Rejected under 35 U.S.C. § 112, first paragraph
The Examiner has rejected claims 19-34 under 35 U.S.C. § 112, first
paragraph for lack of enablement. The Examiner argues that claims 19 and
27 were amended to include the limitation reciting “wherein the client does
not specify an arrangement of components to create the document” (Ans. 3).
The Examiner argues that Fig. 4 and the written specification do not provide
support for such a limitation (Ans. 3).
The Appellant argues the limitation to reciting “wherein the client
does not specify an arrangement of components to create the document” was
removed by amendment from the claims and that the Examiner has
mistakenly applied the rejection of the claims 19-34 under 35 U.S.C. § 112,
first paragraph (Reply Br. 2-3).
We agree with the Appellant. The PTO bears the initial burden when
rejecting claims for lack of enablement.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an
initial burden of setting forth a reasonable
explanation as to why it believes that the scope of
protection provided by that claim is not adequately
enabled by the description of the invention
provided in the specification of the application;
this includes, of course, providing sufficient
reasons for doubting any assertions in the
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specification as to the scope of enablement. If the
PTO meets this burden, the burden then shifts to
the applicant to provide suitable proofs indicating
that the specification is indeed enabling.

In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
We note initially that an examination of the Examiner Answer (Ans.
2) indicates that the status of the amendment after final, the grounds of
rejection to be reviewed, as well as the copy of the appealed claims in the
Appear Brief and Appendix is correct. An examination of claims 19 and 27
as presented in the Appeal Brief Appendix finds no limitation reciting
“wherein the client does not specify an arrangement of components to create
the document” as noted by the Appellant (FF1). This limitation was
removed by the Amendment After Final Rejection filed January 31, 2007
and indicated as to be entered in the Advisory Action mailed February 21,
2007.
Here the Examiner has failed to set forth a reasonable explanation as
to why it is believed that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
Specification of the application because the limitation referred to has been
removed from the claims as noted by the Appellant. For this reason the
rejection of claims 19-34 under 35 U.S.C. § 112, first paragraph, for lack of
enablement is not sustained.

Claim Construction
The Appellant argues that the rejection of claims 19 and 27 under 35
U.S.C. § 103(a) as unpatentable over Tonkin and Long is improper because
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Tonkin fails to disclose “providing … a literature assembly algorithm, and
… assembling the selected information into a document, wherein the
algorithm automatically specifies an arrangement of components to create
the document” (Br. 4 and 11). The Appellant argues that when viewed in
light of the Specification this limitation includes “automatically organizing
the requested literature together in a logical sequence and order” (Br. 6 and
13).
In contrast the Examiner has determined that the claims do not require
that “organization of the requested literature together in a logical sequence
and order” because limitations from the Specification are not to be read into
the claims (Ans. 11).
We first construe the meaning of the term “literature assembly
algorithm” as used by the Appellant in the claims. We determine the scope
of the claims in patent applications “not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction ‘in
light of the specification as it would be interpreted by one of ordinary skill in
the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004)). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
Though understanding the claim language may be
aided by the explanations contained in the written
description, it is important not to import into a
claim limitations that are not a part of the claim.
For example, a particular embodiment appearing in
the written description may not be read into a
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claim when the claim language is broader than the
embodiment.

The challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003).
Turning to the portion of the Specification referred to by the
Appellant:
The literature assembly algorithm 205 can
comprise a series of computer-executable steps (a
"program") which can be stored in the memory
201 and executed by the processor 215. That is,
the literature assembly algorithm 205 is preferably
configured to cause the processor 215 to access the
database 203 and to retrieve there from the specific
literature which is requested by the client "C."
After accessing the database 203, and retrieving
the requested literature therefrom, the literature
assembly algorithm 205 causes the processor 215
to organize the requested literature together in a
logical sequence and order, and formats the
literature for printing in the booklet "B" to be
produced by the booklet-producing device 130.

(Specification 10, emphasis added.)

Here the Specification only states that the literature assembly “can”
comprise or is “preferably configured” to access the database 203. There is
no requirement in the Specification that this step takes place or that the next
step to “organize the requested literature together in a logical sequence and
order” takes place. Accordingly, there is no description in the Specification
that would lead one of ordinary skill in the art to view the term “literature
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assembly algorithm” to include the requirement that it would be
“automatically organizing the requested literature together in a logical
sequence and order.”

Rejection of claims under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claims 19 and 27 under 35
U.S.C. § 103(a) as unpatentable over Tonkin and Long is improper because
the Examiner has not shown appropriate motivation to combine the
references (Br. 6-9 and 13-15). The Appellant also argues that the Examiner
has made the combination of references with impermissible hindsight (Br. 9-
10 and 15-16). The Appellant also argues that the prior art references teach
away from the claimed invention (Br. 10-11 and 17). The Appellant also
argues that Tonkin expressly teaches that the user inputs information
specifying the arrangement of the document while the claims require that an
algorithm automatically specifies arrangement of the document (Reply Br.
4).
The Examiner has determined that Tonkin does disclose the algorithm
to automatically specify arrangement of the document (Ans. 5). The
Examiner has determined that it would be obvious to calculate the postage
for a booklet of Tonkin based on the weight of the booklet and to print the
image for the purpose of charging the proper postage for the booklet (Ans.
7).
We agree with the Examiner. Initially we note that claim 19 requires
that “in response to receiving the client selection, assembling the selected
information into a document, wherein the algorithm automatically specifies
an arrangement of components to create the document” (FF2). Claim 27
contains a similar limitation (FF3). The claimed limitation for the algorithm
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automatically specifying an arrangement of the components to create the
document is only in response to receiving the client selection. That is, after
receiving the user selection, the algorithm automatically specifies an
arrangement of the documents. Tonkin meets this claimed limitation and
has disclosed that the systems computer specifies the arrangement of the
components to create the document (FF9). The Appellant has also argued
the word “booklet” does not appear in the Tonkin reference (Br. 9, 16) and is
not suggested. We disagree in this regard as Tonkin clearly discloses a
booklet being previewed (FF6) even though the term “booklet” is not used.
With regards to the Appellant’s argument that there is no motivation
to combine the references note that in KSR, the Supreme Court rejected the
Federal Circuit’s rigid application of its teaching, suggestion, motivation test
in favor of an expansive and flexible approach. Id., 127 S. Ct. at 1739.
Here, Tonkin discloses system to enable a user to preview and create a
document using a user interface (FF4). Long discloses determining the
weight of an envelope stuffed with inserts and using a franking machine to
print the proper postage onto printed material (FF12). One of ordinary skill
in the art would see the advantage of both previewing and preparing for
mailing a document in the same system to save time and for efficiency.
Clearly, the system of Tonkin would be used to print material and Long has
disclosed printing postage onto printed material (FF12). The modification of
the system of Tonkin which is used to create and print a document to also
determine the weight of the document and to print the proper postage onto
the printed material as disclosed by Long is considered an obvious
combination of familiar elements yielding predictable results with rational
underpinning.
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For the above reasons the rejection of claims 19 and 27 under 35
U.S.C. § 103(a) as unpatentable over Tonkin and Long is sustained. The
Appellant has not argued the limitations of claims 20-26 and 28-34
separately and the rejection of these claims is accordingly sustained for the
same reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner
erred in rejecting claims 19-34 under 35 U.S.C. § 112, first paragraph.
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 19-34 under 35 U.S.C. § 103(a) as unpatentable
over Tonkin and Long.

DECISON
The Examiner’s rejection of claims 19-34 is sustained.
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) (2007).

AFFIRMED

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