Ex Parte Fritsch et al

Patent Trial and Appeal Board

Feb 27, 2017

12018453 (P.T.A.B. Feb. 27, 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.
12/018,453 01/23/2008 Juergen Fritsch M0002-1015 8154
24208 7590
Robert Plotkin, P.C.
1500 District Ave.
Burlington, MA 01803
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
mail@rplotkin.com
hdas@rplotkin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN FRITSCH, DETLEF KOLL, KJELL SCHUBERT, and
CHRISTOPHER M. CURRIVAN
Appeal 2015-006145
Application 12/018,453
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—6, 12—37, 43—56, and 84—97. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a method of “Monitoring User
Interactions With A Document Editing System” (Spec. 1).
Appeal 2015-006145
Application 12/018,453
Claim 1 is illustrative:
1. A method performed by at least one computer processor
executing computer program instructions stored on at least one non-
transitory computer-readable medium, wherein the computer program
instructions are executable by the at least one computer processor to
perform a method for use with a document editing system and a first
plurality of documents, the method comprising:
using the at least one computer processor to provide, to a user,
output including (i) an audio playback of an audio stream transcribed
to produce the first plurality of documents and (ii) a display of the
contents of the draft document as it is being edited by the user;
using the at least one computer processor to identify, during
editing of the first plurality of documents, use of a first feature of the
document editing system by the user while editing the first plurality of
documents;
using the at least one computer processor to derive a statistic
from the use of the first feature, wherein the statistic comprises a
frequency of use of the first feature; and
using that at least one computer processor to identify potential
editing behavior, suitable for application by the user to the document
editing system to edit the documents, based on the derived statistic.
Appellants appeal the following rejections:
Claims 1—6, 12—37, 43—56, and 84—97 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the enablement requirement.
Claims 1—6, 12—37, 43—56, and 84—97 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
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Application 12/018,453
Claims 1—6 12, 16—21, 23—33, 34-37, 43-45, 47-56 and 84 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Christine A. Halverson et al,
The Beauty of Errors: Patterns of Error Correction in Desktop Speech
Systems, Human — computer Interaction — Interact 99, pp 1—10, (1999)
(hereinafter “Halverson”) in view Official Notice.
Claims 13, 15, 22, 46, and 86—97 are rejected under 35 U.S.C. § 103
as unpatentable over Halverson in view of Sunil Vemuri et al, Improving
Speech Playback Using Time-Compression and Speech Recognition, pp 1—9,
(2004) (hereinafter “Vemuri”).
Claims 14, 85, and 92 are rejected under 35 U.S.C. § 103 as
unpatentable over Halverson in view of Vemuri, and further in view of
David Rossiter et al, Automatic Audio Indexing and Audio Playback Speed
Control as Tools for Language Learning, pp 290—299, (2006) (hereinafter
“Rossiter”).
ISSUE
Did the Examiner err in rejecting claims 1—6, 12—37, 43—56, and
84—97 under 35 U.S.C. § 112, first paragraph, enablement requirement
because the specification provides support for the claims and because a
person of ordinary skill in the art would have known how to implement the
invention?
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Did the Examiner err in rejecting claims 1—6, 12—37, 43—56, and
84—97 under 35 U.S.C. § 112, first paragraph, written description
requirement because a determination of whether a claim satisfies the written
description requirement must focus on what is recited in the claims not on
what is described in the Specification?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a)
because Halverston does not disclose a processor to identify during editing
of the first plurality of documents use of a first feature of the document
editing system ?
FACTUAL FINDINGS
We adopt all of the Examiner’s findings as our own. Ans. 4—8, Final
Office Act. 29—32. Additional findings of fact may appear in the Analysis
that follows.
ANALYSIS
Enablement
We are not persuaded of error on the part of the Examiner by
Appellants arguments (1) that the Specification provides ample support for
the limitations at issue and (2) that a person of ordinary skill in the art would
encounter no difficulty implementing the invention.
The Examiner finds that the specification does not describe how the
software/hardware disclosed in the specification quantifies individual editing
behavior (Ans. 34).
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The enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed.
Cir. 2003) (quoting In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988));
see Auto. Techs. Int'l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1282
(Fed. Cir. 2007) (citing AK Steel and Wands)', Manual of Patent Examining
Procedure (“MPEP”) § 2164.08 (9th ed., rev. 7, Nov. 2015) (“The Federal
Circuit has repeatedly held that ‘the specification must teach those skilled in
the art how to make and use the full scope of the claimed invention without
‘undue experimentation’”; “what is well-known is best omitted” (internal
citations omitted)). Factors to consider in determining if undue
experimentation is required are: (1) the quantity of experimentation needed,
(2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the level of ordinary skill in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. See Wands;
MPEP § 2164.01(a) Undue Experimentation Factors. The PTO bears an
initial burden of explaining why the claim scope is not enabled by the
specification. In re Wright, 999 F.2d 1557, 1561-62 (1993).
Whether undue experimentation is required is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations. Street, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d
1269, 1288 (Fed. Cir. 2012).
In explaining the rejection, the Examiner finds that a person of
ordinary skill in the art at the time of invention would not have been able to
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perform the invention without undue experimentation. The Examiner
extensively addresses each of the Wands factors (Non. Fin. Act. 12—28).
Appellants do not address the Wands factors discussed by the
Examiner in the Final Action. In fact, the Appellants do not address undue
experimentation at all. One of Appellants argument in response to this
rejection is related that the Specification provides support for the claimed
language.
The Appellants appear to be confusing the enablement requirement of
35 U.S.C. § 112, first paragraph with the written description requirement of
that paragraph. The written description requirement is separate from the
enablement requirement. Abb Vie Deutschland GmbH v. Janssen Biotech,
Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). Written description requires that
an application “must describe an invention,” whether in text or drawings,
whereas enablement requires that a person of ordinary skill in the art be able
to “make and use” that invention. AriadPharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1345 (Fed. Cir. 2010). Although written description and
enablement often rise and fall together, there are many cases in which one
may be satisfied but not the other. Id. at 1352. For example, some claims “do
not require undue experimentation to make and use, and thus satisfy
enablement,” yet lack written description because those claims are not
disclosed in the specification. Id. Conversely, even if a claim appeared
verbatim in the disclosure of the original application and thus, had adequate
written description, the claim still could lack enablement if a person of
ordinary skill in the art at the time would not know how to make or use the
device.
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Appellants’ arguments regarding the support for the claimed language
in the Specification are not persuasive in regard to the rejection under the
enablement requirement of 35 U.S.C. § 112, first paragraph.
In responding to the enablement rejection, the Appellants also argue,
without anything further, that a person skilled in the art would have known
how to implement the invention. However, as these arguments are
conclusory in nature and do not relate to whether undue experimentation
would have been needed to practice the invention, they are not persuasive of
error on the part of the Examiner.
Appellants further argue that the disclosure in paragraphs 86 and 88 of
the Specification provide examples of behavior recommendations. While it
is correct that paragraphs 86 and 88 disclose that if it is determined that there
is a frequent or less frequent use of a particular feature, the recommender
1006 may recommend that the feature be used more or less frequently, there
is no disclosure in these paragraphs regarding how the determinations
regarding the frequency of use of the feature is derived.
In view of the foregoing, we will sustain this rejection of the
Examiner.
Written Description
We will not sustain the Examiner’s rejection of claims 1—6, 12—37,
43—56, and 84—97. The Examiner argues that the Specification describes a
productivity assessor and a behavioral metric identifier but the Specification
does not describe how these elements function to provide the described
functionality. The claims do not recite a productivity assessor or a
behavioral metric identifier. We agree with the Appellants that the
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determination of whether a claim satisfies the written description
requirement must focus on what is recited in the claims and whether the
recitations in the claims is supported by the Specification not on what is
described in the Specification. In addition, the question of how an invention
works is a question of enablement not a question of whether the
Specification includes a proper written description.
The Examiner also states that the Specification fails to show that the
Appellants reduced the features of the invention to practice at the time of
filing. However, “it is well settled that an invention may be patented before
it is reduced to practice.” Pfaff v. Wells Elec., Inc., 525 U.S. 55, 61 (1998).
Obviousness
We are not persuaded of error on the part of the Examiner by
Appellants' argument that Halverston does not disclose a processor to
identify, during editing of the first plurality of documents, use of a first
feature of the document editing system (Brief 19-20). Appellants argue that
Halverson does not identify editing behavior until after the subjects have
completed dictating.
We agree with the Examiner that Halverson teaches that the step of
identifying behaviors is done by videotyping the editors actually editing a
document (3.3-3.4). As such, Halverson does disclose identifying editing
behaviors during editing as recited in claim 1.
In addition, in our view, the choice to identify the editing behaviors
during or after editing is a design choice. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (use of claimed feature solves no stated problem and presents
no unexpected result and “would be an obvious matter of design choice
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design within the skill of the art”). In this regard we note that the Appellants
own Specification indicates at paragraph 66 that the statistics can be derived
from the number of times a certain keyboard was pressed during an editing
session. Therefore, even Appellants own Specification teaches that the
identifying can take place after editing and as such there is no disclosed
problem solved not is there an unexpected result achieved by identifying the
behaviors during rather than after editing.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35U.S.C. §103. We will also sustain the rejection as it is
directed to claims 2—8, 12, 16—21, 23—33, 34-37, 43—45, 47—56, and 84
because the claims do not argue the separate patentability of these claims.
We will also sustain the rejections of the remaining claims under 35
U.S.C. § 103(a) because the Appellants do not address the rejections of these
claims.
DECISION
We affirm the Examiner’s rejection under 35U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement of claims
1-6, 12-37, 43-56, and 8A-97.
We do not affirm the Examiner’s rejection under 35U.S.C. § 112, as
failing to comply with the written description requirement of claims 1—6,
12-37, 43-56, and 8A-97.
We affirm the Examiner’s rejection under 35 U.S.C. § 103(a)
rejection of claims 1—6, 12—37, 43—56, and 84-97.
TIME PERIOD
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).
ORDER
AFFIRMED
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