Ex Parte Damery et al

Patent Trial and Appeal Board

Aug 22, 2017

11623529 (P.T.A.B. Aug. 22, 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.
11/623,529 01/16/2007 Eric Damery 1589.42 5027
21901 7590
Smith & Hopen (private clients)
Attn: General Patent Matters
180 Pine Avenue North
Oldsmar, EL 34677
EXAMINER
NAZAR, AHAMED I
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
patents @ smithhopen .com
pair @ smithhopen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC DAMERY, JOSEPH STEPHEN,
and OLGA ESPINOLA
Appeal 2017-002838
Application 11/623,529
Technology Center 2100
Before MAHSHID D. SAADAT, CATHERINE SHIANG, and
JOHN P. PINKERTON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1, 3, 4, 6—8, 10-13, and 15—19, which
are all the claims pending and rejected in the application. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
Appeal 2017-002838
Application 11/623,529
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
screen reader software products. See generally Spec. 1. Claim 1 is
exemplary:
1. A non-transitory computer-readable media having
computer-executable instructions that, in response to
being executed by a computing device, cause the
computing device to perform operations comprising:
collecting tabular display information, the tabular
display information comprising a cell address having
alphanumeric data and a cell label for the cell address;
retrieving cell labels corresponding to the cell
address from a document object model file;
generating a custom summary of cell labels
selected by a screen reader user, the custom summary
presenting the alphanumeric data for each cell address
associated with the selected cell label, the alphanumeric
data reordered according to screen reader user
preferences without modifying the document object
model file; and
outputting the custom summary to an output
device selected from the group consisting of a speech
synthesizer and a Braille reader, whereby the broadcast
module automatically broadcasts the alphanumeric data.
References and Rejections
Claims 1, 3, 4, 6, 7, 8, 10-13, 15, 17, and 18 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Baker (US
2005/0034063 Al; Feb. 10, 2005), Anderson (US 2004/0199870 Al;
Oct. 7, 2004), Jay D. Leventhal, How Accessible is Microsoft Office
2000? AFB AccessWorld® Magazine, Vol. 1, No. 4, July 2000)
(“Leventhal”), Joseph J. Lazzaro, (Taking the Mystery Out of
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Microsoft Active Accessibility, AFB AccessWorld® Magazine,
Vol. 1, No. 4, July 2000) (“Lazzaro”), and Collie (US 2006/0090129
Al, Apr. 27, 2006).
Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baker, Anderson, Leventhal, Lazzaro, Collie,
and Row and Column Headers in Word and Excel with JAWS 6 JO,
March 2005.
PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain
known elements, discovery of a successful means of combining them
is more likely to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) (citation omitted).
“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 Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citation omitted).
The “mere disclosure of alternative designs does not teach
away” and “just because better alternatives exist in the prior art does
not mean that an inferior combination is inapt for obviousness
purposes.” In reMouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012)
(citations omitted).
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. A known or obvious composition
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does not become patentable simply because it has been
described as somewhat inferior to some other product for
the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
ANALYSIS
Claims 1, 3, 4, 6, and 15—19
We have reviewed the Examiner’s rejection in light of
Appellants’ contentions and the evidence of record. We concur with
Appellants’ contention that the Examiner erred in finding the cited
prior art portions teach “generating a custom summary of cell labels
selected by a screen reader user, the custom summary presenting the
alphanumeric data for each cell address associated with the selected
cell label,” as recited in independent claim 1 (emphasis added).1 See
App. Br. 10-12.
The Examiner initially cites Baker’s paragraphs 31—78 for
teaching the disputed limitation. See Final Act. 5—6. Appellants
argue Baker teaches a custom summary of Placemarkers—not the
claimed “cell labels,” and the Examiner has not explained why such
disclosure renders the disputed limitation obvious. See App. Br. 10—
11.
In response, the Examiner specifically cites a number of
Baker’s paragraphs. See Ans. 2-4. In particular, the Examiner maps
1 Appellants raise additional arguments with respect to this group of
claims. Because the identified issue is dispositive of the appeal with
respect to this group of claims, we do not reach the additional
arguments.
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Application 11/623,529
the claimed “custom summary” to Baker’s .PMI file, and provides
further findings. See Ans. 2-4. However, the Examiner’s further
findings confirm Appellants’ argument that Baker teaches generating
a custom summary of Placemarkers. See Ans. 2-4; Baker 175
(“Placemarker information is stored in .PMI files.”); 131 (“The
present invention is directed toward a method and apparatus ... for
providing text markers for a document obtained from an outside
source. . . . These text markers are referred to as “Placemarkers” in the
following description. The Placemarkers are relative locations in a
virtual document that corresponds to the original document.”).
The Examiner also finds Baker separately teaches “cell labels”
that are not Placemarkers (Ans. 3), but that finding does not explain
why Baker’s teaching of generating a customary summary of
Placemarkers renders the disputed limitation “generating a custom
summary of cell labels selected by a screen reader user” obvious.
Further, the Examiner does not assert one skilled in the art would have
modified Baker’s disclosure to result in a customary summary of cell
labels. Nor does the Examiner provide any reasoning for such
modification.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record
to reverse the Examiner’s rejection of claim 1.
Independent claim 15 recites a limitation that is substantively
similar to the disputed limitation of claim 1. See claim 15. Therefore,
for similar reasons, we reverse the Examiner’s rejection of
independent claim 15.
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We also reverse the Examiner’s rejection of corresponding
dependent claims 3, 4, 6, and 16—19.
Claims 7, 8, and 10—13
We disagree with Appellants’ arguments, and agree with and
adopt the Examiner’s findings and conclusions in (i) the action from
which this appeal is taken and (ii) the Answer to the extent they are
consistent with our analysis below.2
On this record, the Examiner did not err in rejecting claim 7.
I
Claim 7 recites “generating a custom summary of links to the
cell addresses associated with the cell labels selected by a screen
reader user” (emphasis added). Because Appellants have not shown
claim 7 includes the disputed limitation of claim 1, many of
Appellants’ arguments (App. Br. 10—12) are not directed to the
specific limitation of claim 7 and therefore, are unpersuasive.
II
Appellants contend:
In sharp contrast to Baker, claim[] ... 1 .. . require[s]
that a summary is generated using the content of the cells
associated with the selected cell label and that the data is
reordered based on user-preferences. None of the cited
prior art references disclose these limitations, and
2 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments.
See 37 C.F.R. § 41.41(b)(2).
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therefore, combination of Baker with the other cited prior
art does not yield the claimed invention.
Combining Baker with Anderson, Leventhal, Lazzaro,
and Collie does not cure the deficiencies of Baker outlined
above because none of these references teach the limitations of
generating a custom summary based on cell labels and
reordering cell data per user preferences.
App. Br. 12.
First, Appellants’ arguments are not commensurate with the
scope of the claim 7, as Appellants have not shown claim 7 requires
“a summary is generated using the content of the cells associated with
the selected cell label” or “generating a custom summary based on
cell labels” (App. Br. 12 (emphasis omitted)).
Second, Appellants’ arguments regarding reordering is
unpersuasive. The Examiner provides specific findings showing
Baker teaches “reordering the alphanumeric data according to screen
reader user preferences.” See Final Act. 6—7, 9; Ans. 4.3 Appellants
do not critique that specific finding. Therefore, Appellants fail to
show Examiner error. See In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court [or this
Board] to examine the claims in greater detail than argued by an
appellant, looking for [patentable] distinctions over the prior art.”).
3 Appellants argue the reordering limitation of claims 1,7, and 15
together, and the claims recite “reordering the alphanumeric data
according to screen reader user preferences” or similar language. See
App. Br. 12; claims 1,7, 15. The Examiner refers to the reordering
limitation of claim 15 as an example (Ans. 4), and that response is
applicable to claims 1, 7, and 15.
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Further, Appellants’ arguments that “[t]he Office recognized
that Baker relies on HTML parsing and does not teach reordering of
alphanumerical data according to user preferences using the DOMfile,
but found that these limitations are disclosed in LeventhaF and “none
of the cited references, individually or in combination, disclose the
step of reordering alphanumerical data contained within the cells of a
table by using the DOMfile according to the user preferences” (App.
Br. 12 (emphases added)) are not commensurate with the scope of the
claim, as Appellants have not shown claim 7 requires such a
limitation. Instead, claim 7 recites “reordering the alphanumeric data
according to screen reader user preferences without modifying the
document object model file” (emphasis added).
Ill
Appellants contend modifying Baker’s teachings to incorporate
LeventhaFs feature of a document object model (“DOM”) would alter
Baker’s principle of operation, and Baker teaches away from using
DOM. See App. Br. 13-14.
Appellants’ argument is unpersuasive because Appellants do
not provide any evidence or persuasive explanation to support their
assertion that Baker’s principal of operation is based on HTML
parsing.4 Contrary to Appellants’ unsupported assertion, Baker
4 Similarly, Appellants’ unsupported assertions that “Baker is
exclusively limited to parsing HTML tags because there is no formal
structure to an HTML document. Baker is a string-handling
technology . . . The technology disclosed in Baker is based on string-
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broadly states “[t]his invention relates to data processing and more
specifically to accessing, locating and collecting data from a
predetermined position in a document.” Baker 12. Consistent with
that broad statement, Baker states “it is intended that all matters
contained in the foregoing description or shown in the accompanying
drawings shall be interpreted as illustrative and not in a limiting
sense.” Baker 179.
Further, Appellants’ teaching away argument is unpersuasive
because Appellants fail to provide adequate analysis under the case
law. In particular, Appellant fails to show one skilled in the art
“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.” Kahn, 441 F.3d at 990. Appellants’
assertion that “DOM involves a lot of time and programming” (App.
Br. 14) is insufficient for showing teaching away.
In addition, the Examiner has provided articulated reasoning
with a rational underpinning as to why one skilled in the art would
have found it obvious to combine the teachings of Baker and
Leventhal. See Final Act. 4—5; Ans. 4—6. Appellants do not
persuasively show why such reasoning is incorrect. In particular,
Appellants’ assertion that the “Examiner has provided no support that
Baker works for other ‘MS Documents’” (Reply Br. 3) is
unpersuasive, because the Examiner finds Baker can be adapted to
work different documents, such as Microsoft Office documents (Ans.
handling” (Reply Br. 3) are unpersuasive and contradict Baker’s broad
statements discussed below.
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6). In any event, Appellants have not shown the claim requires “MS
Documents” (Reply Br. 3).5
The Examiner’s findings and conclusion are reasonable because
the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
420-21. Appellants do not present adequate evidence that the
resulting arrangements would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418—19). As a result, Appellants fail to show Examiner error.
Because Appellants have not persuaded us the Examiner erred,
we sustain the Examiner’s rejection of independent claim 7.
We also sustain the Examiner’s rejection of corresponding
dependent claims 8 and 10-13, as Appellants do not advance separate
substantive arguments about those claims.
DECISION
We reverse the Examiner’s decision rejecting claims 1,3,4, 6,
and 15—19.
5 Appellants’ argument about the versions of JAWS screen reader
(Reply Br. 2—3) is unpersuasive. As discussed above, the Examiner
modifies Baker’s teachings to incorporate Leventhal’s teaching of
DOM, and Appellants have not shown that modification requires
Baker and Leventhal to use the exact same version of JAWS.
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We affirm the Examiner’s decision rejecting claims 7, 8, and
10-13.
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).
AFFIRMED-IN-PART
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