Ex Parte Etesse et al

Patent Trial and Appeal Board

Oct 23, 2014

10443149 (P.T.A.B. Oct. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER E. ETESSE, JENNIFER R. WEST, and
MICHAEL L. CHASEN
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Appeal 2012-005055
Application 10/443,1491
Technology Center 2400
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21–44, 46–58 and 60. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 According to Appellants, the real party in interest is Blackboard Inc.
(Appeal Br. 3).

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Application 10/443,149

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STATEMENT OF THE CASE
The claims are directed to dynamically discovering and utilizing
current context information by a digital identity device. Independent
claim 1, reproduced below, is representative:
21. A method for providing data to a web browser,
comprising the steps of:
generating the data which includes a display region having
associated content;
determining if a pre-selected locale is mandatory;
if the pre-selected locale is mandatory, formatting at least a
portion of the
associated content according to the pre-selected locale when
generating the data;
if the pre-selected locale is not mandatory:
identifying a user-selected locale, and
formatting at least a portion of the associated content according
to the
user-selected locale when generating the data; and
transmitting the data to the web browser of a computer.
Appeal Br., Claims App’x 1.
THE REJECTIONS
Claims 21–44, 46–58 and 60 are rejected under 35 U.S.C. § 103(a)
over L’Allier (US 6,039,575, issued Mar. 21, 2000) in view of Cox (US
2003/0149557 A1, published Aug. 7, 2003).
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ISSUE
Did the Examiner err in rejecting claims 21–44, 46–58 and 60 under
35 U.S.C. § 103(a) over L’Allier in view of Cox?
ARGUMENT
The Examiner found that L’Allier at col. 4, ll. 1-23 teaches “if the pre-
selected locale is not mandatory, identifying a user-selected locale, and
formatting at least a portion of the associated content according to the user-
selected locale when generating the data.” Ans. 4–5, 11.
The Examiner found that L’Allier does not disclose “if the pre-
selected locale is mandatory; formatting at least a portion of the associated
content according to the pre-selected locale” and found that Cox at
paragraphs 15–17 and 32 teaches “determining if a preselected locale is
mandatory, if mandatory, formatting at least a portion of the associated
content according to the pre-selected locale when generating the data.”
Ans. 4–5, 11.
The Examiner concludes that it would be obvious to combine Cox’s
system with L’Allier to provide “a more efficient use of translation
services”. Para [0024]. Ans. 5.
Appellants argue that Cox does not teach “if mandatory, then…” as
there is no requirement that the pre-selected language(s) be “mandatory”
because “if the user does not desire the most probable language for
translation, the user may easily access other likely languages for selection.”
Para. [0016]. Appeal Br. 14, Reply Br. 5.
Appellants argue that the Examiner has not presented a prima facie
case of obviousness as both cited references are missing required limitations.
Appeal 2012-005055
Application 10/443,149

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ANALYSIS
THE 35 U.S.C. § 103(a) REJECTION OF CLAIMS 1, 21-44, 46-58 and 60
UNDER 35 USC 103 OVER L’ALLIER IN VIEW OF COX
We are persuaded of error by the Examiner by Appellants’ argument
that Cox does not teach “determining if a preselected locale is mandatory, if
mandatory, formatting at least a portion of the associated content according
to the pre-selected locale when generating the data.” Generally, Cox teaches
a language translation system in which a mobile language translation device
includes capability to determine its location and to be provided with likely
translation languages for that location. The device can generate the user’s
message using a pre-selected language or a user-selected language. We find
that the plain and ordinary meaning of “mandatory,” consistent with the
specification, means “required” and the language capabilities provided in
Cox are suggested, not required, because the user can select the suggested
languages or access other likely languages. Para. [0016].
In view of our finding that Cox does not disclose the “if
mandatory…” claim limitation acknowledged by the Examiner to be missing
in L’Allier, we find that a prima facie case of obviousness has not been
made out for the subject matter of independent claims 21, 31, 36, 44, 55, 56
and 60, all of which recite similar limitations, over L’Allier in view of Cox
by a preponderance of the evidence. Therefore, we will not sustain the
rejection of these claims.
Claims 22–30, 32–35, 37–43, 46–54 and 57–58 are dependent claims.
Accordingly, for the same reasons, we will not sustain the rejections of these
claims over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed.
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Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims
from which they depend are nonobvious.”).
CONCLUSION
The rejection of claims 21-44, 46-58 and 60 under 35 U.S.C. § 103(a)
over L’Allier in view of Cox is not sustained.
DECISION
For the above reasons, the Examiner’s decision rejecting claims 21–
44, 46–58 and 60 is reversed.
REVERSED

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