Ex Parte Crandall

Board of Patent Appeals and Interferences

Aug 29, 2007

09822152 (B.P.A.I. Aug. 29, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN CHRISTOPHER CRANDALL
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Appeal 2007-1412
Application 09/822,152
Technology Center 2100
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Decided: August 29, 2007
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Before LANCE LEONARD BARRY, ANITA PELLMAN GROSS, and
JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b) to decide this appeal.
We reverse.
Appeal 2007-1412
Application 09/822,152

Appellant invented a method and system for censoring documents for
sensitive information. Particularly, the invention entails the use of a censor
database (100) and a text comparator (101) for locating sensitive terms in a
document (10). The invention further involves a generalization database
(104) for subsequently replacing the sensitive terms with alternate
expressions of a more generalized nature. (Specification 6).
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. A computerized document censor comprising:

a censor database of restricted terms;

a text comparator program for finding ones of said restricted terms in
said document; and

a text highlighter program for highlighting said restricted terms found
in said document.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Aras US 5,757,417 May 26, 1998
Cragun US 5,832,212 Nov. 3, 1998
Lapiere US 6,075,550 Jun. 13, 2000
DeStefano US 6,184,885 B1 Feb. 6, 2001
Dieterman US 6,393,464 B1 May 21, 2002
Goddard US 6,684,240 B1 Jan. 27, 2004
The Examiner rejects the claims on appeal as follows:
A. Claims 1, 3, 4, 9 through 12, and 16 through 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Lapierre,
Goddard, and DeStefano.
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Application 09/822,152

B. Claims 2 and 5 through 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Lapierre, Goddard, DeStefano
and Cragun.
C. Claims 13 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lapierre, Goddard, DeStefano and
Aras.
D. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lapierre, Goddard, DeStefano and
Dieterman.
ISSUES
Appellant contends1 that the combination of Lapierre, Goddard, and
DeStefano yields no expectation of success, and would render the prior art
invention unsatisfactory for its intended purpose. (Br. 7.) More specifically,
Appellant contends the following:
Lapierre expressly teaches away from the use of a rating system, see
column 2, lines 14-21. In contrast, the system of Goddard could not
operate without rating information accompanying the content to
facilitate the censorship determination. The proffered combination of
Lapierre and Goddard is fundamentally incompatible, and thus, there
can be no expectation of success… The purpose of Lapierre is to
screen closed-captioning content so that it may be viewed safely.
Blocking the entire closed-caption data stream, as would result from
the proffered combination of Lapierre in view of Goddard, would

1 This decision considers only those arguments that Appellant submitted in
the Appeal Brief. Arguments that Appellant could have made but chose not
to make in the Brief are deemed to have been waived. See 37 C.F.R. §
41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362,
1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).

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Application 09/822,152

prevent any viewing of the closed captioning, therefore preventing a
safe viewing or any other viewing. Therefore, modifying Lapierre
with Goddard, if even possible, would result in the preventing safe,
censored viewing of the closed-captioning content, thus rendering
Lapierre unsatisfactory for its intended purpose.
(Brief 10.)

Further, Appellant contends that the Examiner’s suggested modification
of Lapierre by integrating DeStefano’s highlighting of words therein would
also render Lapierre unsatisfactory for its intended purpose. Instead of
removing the objectionable language from the caption, as contemplated by
Lapierre, the proposed modification would highlight the objectionable
language in order to draw the viewer’s attention to the potentially offensive
material. One of ordinary skill would not have been led to draw the
attention of a viewer, such as a child, to highlighted objectionable text in the
closed captioning displayed by Lapierre. (Id. 9.) In response, the Examiner
contends that one of ordinary skill would have been motivated to combine
the cited references because it would have drawn the attention of the viewer
to the potentially offensive material used to adjust the content rating
parameters. (Answer 4 and 11.)

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The pivotal issue in the appeal before us is as follows:
Has Appellant shown2 that the Examiner failed to establish that one of
ordinary skill in the art, at the time of the invention, would have found that
the combined disclosures of Lapierre, Goddard and DeStefano render the
claimed invention unpatentable under 35 U.S.C. § 103(a)? More
particularly, would the ordinarily skilled artisan have been led to modify
Lapierre’s closed-caption system by highlighting potentially objectionable
words, previously blocked by Lapierre’s system, in order to draw the
viewer’s attention to such words to adjust their contents?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.

2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When
that burden is met, the burden then shifts to the applicant to rebut. Id.; see
also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed.
Cir. 2005) (finding rebuttal evidence unpersuasive). If the applicant
produces rebuttal evidence of adequate weight, the prima facie case of
unpatentability is dissipated. Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Thereafter, patentability is determined in view of the entire record. Id.
However, on appeal to the Board it is an appellant's burden to establish that
the Examiner did not sustain the necessary burden and to show that the
Examiner erred -- on appeal we will not start with a presumption that the
Examiner is wrong.

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The Invention
1. Appellant invented a censor method and system that reviews
documents for filtering selected sensitive terminology in said document.
(Specification 4.)
2. As depicted in Figure 1, the censor system uses a text comparator
(101) to match terms in the document (10) with prohibited or sensitive terms
in a censor database (100). (Id. 6.)
3. Upon locating sensitive terms in the document, a highlighter (102)
highlights those terms and visibly draws the user’s attention to such terms at
a graphical user interface display (103). (Id.)
4. Subsequently, alternate expressions (correlated with sensitive terms in
the censor database) of a more generalized nature stored in a generalization
database (104) are used to replace the highlighted sensitive terms. (Id.)
The Prior Art Relied upon
5. Lapierre teaches a censoring system for use with a closed caption
television. The censoring system includes a closed caption decoding device
for converting a closed caption signal into uncensored text. The censoring
system also includes a censoring device for deleting potentially offensive
words in the uncensored text that match words on a list of preloaded
offensive words. (Abstract.)
6. Lapierre teaches that the closed caption system is intended to remove
undesired words and phrases from the closed caption associated with
programming viewed on television. (Col. 1, ll. 24-31.)
7. Lapierre indicates that the censoring system is intended to remove
undesired parts of a program (i.e. objectionable language from the closed
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caption rather than censoring entire programs, which depend on a rating
system.) (Col. 2, ll. 15-21.)
8. Goddard teaches a method and content control system for setting and
adjusting the content rating parameters of a television program to block or
unblock future access to the program in its entirety. (Col. 3, ll. 28-55.) The
content control system compares the content rating of an example content to
previously set acceptable content rating parameters and adjusts the content
rating parameters of the system based on the comparison to block or unblock
future access to the example content and content similar to the example
content. (Col. 2, ll. 47-52.)
9. DeStefano teaches a method and system for highlighting logically
related terms within a document to visually showcase the relationship
between various concepts within said document. (Col. 3, ll. 6-22.)

PRINCIPLES OF LAW
1. OBVIOUSNESS (Prima Facie)
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966), stated that three factual inquiries underpin any
determination of obviousness:
Under § 103, [1] the scope and content of the prior art are to be
determined; [2] differences between the prior art and the claims
at issue are to be ascertained; and [3] the level of ordinary skill
in the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
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the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
Where the claimed subject matter involves more than the simple substitution
of one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement, a holding of
obviousness must be based on “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct.
1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). That is, “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at
1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006)). Such reasoning can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396.

2. OBVIOUSNESS (Teaching away/Expectation of success)
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 [56 USPQ2d
1456,1458-59] (Fed. Cir. 2000). Medichem S.A. v. Rolabo S.L., 437 F.3d
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1157, 1164, 77, USPQ2d 1865, 1869 (Fed. Cir. 2006). Where the teachings
of two or more prior art references conflict, the examiner must weigh the
power of each reference to suggest solutions to one of ordinary skill in the
art, considering the degree to which one reference might accurately discredit
another. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991.) If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984.) Further, our
reviewing court has held that:
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 applicant. In
re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994);
See also Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1090, 37 USPQ2d 1237, 1241 (Fed. Cir. 1995).

ANALYSIS
A. 35 U.S.C. § 103(a) REJECTION
We begin our analysis by noting that all the independent claims (1, 9
and 16), currently pending before us, require the limitation of highlighting/
visibly marking restricted/objectionable terms found in a document. (Br.
Appendix A.) As detailed in the Findings of Fact section above, we found
that Lapierre discloses a closed caption system for retrieving objectionable
terms in a television program, and blocking them from the displayed caption
to prevent the viewer from seeing them. (Findings 5 and 6.) Further, we
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found that Goddard teaches setting and adjusting the rating parameters of a
program to block or unblock a viewer’s access to said program. (Finding 8.)
We agree with Appellant that combining Goddard’s disclosed system with
Lapierre’s would not yield a reasonable expectation of success as such a
combination would render Lapierre’s system unsatisfactory for its intended
purpose. Particularly, the ordinarily skilled artisan would have aptly
recognized that integrating into Lapierre’s system Goddard’s teaching of
blocking a program due to a detected objectionable content therein would
deprive the viewer of such system of the entire program including the
captions. Similarly, integrating Goddard’s teaching of unblocking a
previously blocked program into Lapierre’s system, as suggested by the
Examiner, would yield the undesirable result of displaying the objectionable
contents that the Lapierre system seeks to block. This is due to the fact that
Goddard operates to either block or unblock a program in its entirety
depending on whether or not the program contains objectionable material.
Further, we agree with Appellant that Goddard teaches away from the
Lapierre reference. Lapierre specifically discourages the ordinarily skilled
artisan from following the path set forth in the Goddard patent by
recommending to merely block the undesired terms in the captions as
opposed to blocking the entire program. (Finding 7.) Therefore, we
conclude that the Examiner improperly combined Lapierre and Goddard to
yield the claimed invention.
Additionally, we agree with Appellant that combining DeStefano with
Lapierre would not yield a reasonable expectation of success and would
render Lapierre’s system unsuitable for its intended use. We find that the
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ordinarily skilled artisan would have readily recognized that incorporating
DeStefano’s teaching into Lapierre's system would defeat the intended
purpose of such system. In other words, by highlighting an objectionable
term within a document, DeStefano’s teaching would bring to the viewer’s
attention the offensive terms in the caption that Lapierre intended to block.
Therefore, we conclude that the Examiner improperly combined Lapierre
with DeStefano. It follows that the Examiner erred in rejecting claims 1, 3,
4, 9 through 12, and 16 through 19 as being unpatentable over the
combination of Lapierre, Goddard and DeStefano. We find that the
Examiner erred in rejecting dependent claims 2, 5 through 8, 13, and 20
since neither Cragun nor Aras cures the deficiencies of the Lapierre,
Goddard, and DeStefano combination.

CONCLUSION OF LAW
On the record before us, Appellant has shown that the Examiner failed
to establish that claims 1 through 20 are unpatentable over the combination
of Lapierre, Goddard, DeStefano, Cragun and/or Aras under 35 U.S.C.
§ 103(a).

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DECISION
We have reversed the Examiner’s decision rejecting claims 1 through
20.

REVERSED

pgc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400

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