13092868 (P.T.A.B. Jan. 29, 2016)

Ex Parte Gillick

Patent Trial and Appeal BoardJan 29, 2016

13092868 (P.T.A.B. Jan. 29, 2016)

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. 13/092,868 04/22/2011 John Gillick 7535 7590 02/01/2016 John B. Gillick, Jr. 8 Franklin Ave Claymont, DE 19703 EXAMINER STORK, KYLE R ART UNIT PAPER NUMBER 2144 MAIL DATE DELIVERY MODE 02/01/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN GILLICK Appeal 2014-0024781 Application 13/092,868 Technology Center 2100 ____________________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and KARA L. SZPONDOWSKI, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as John Gillick. App. Br. 1. Appeal 2014-002478 Application 13/092,868 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 4–6, 9–11, and 14–21. Claims 2, 3, 7, 8, 12, and 13 have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention Appellant invented an audience-vote-based copyediting tool in an online blog for automatically integrating similarly suggested edits into an identified textual content of the blog when the suggested edits meet or exceed a predetermined threshold. Spec. ¶¶ 6 and 13, Fig. 2A–2C. Representative Claim Independent claim 1 is representative, and reads as follows: 1. A method for flag-based user editing, comprising: receiving, with an electronic processor, text from a publisher user; publishing, with the electronic processor, the text over a network accessible by a plurality of users; providing tools for marking suggested edits to each user; receiving input from each user including suggested edits; compiling the suggested edits; and automatically integrating an edit into the text conditioned on a plurality of similar suggested edits being greater than a threshold. Appeal 2014-002478 Application 13/092,868 3 Prior Art Relied Upon Ben-Shachar US 2008/0034320 A1 Feb. 7, 2008 McNally US 2009/0165128 A1 June 25, 2009 Therrien US 2010/0306412 A1 Dec. 2, 2010 Hood WO 2010/0142982 A1 Dec. 16, 2010 Rejections on Appeal The Examiner rejects the claims on appeal as follows: Claims 1, 4–6, 9–11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of McNally and Hood. Claims 16, 18, and 20 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over the combination of McNally, Hood, and Ben- Shachar. Claims 17, 19, and 21 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over the combination of McNally, Hood, and Therrien. Appeal 2014-002478 Application 13/092,868 4 ANALYSIS We consider Appellant’s arguments seriatim as they are presented in the Appeal Brief, pages 3–7.2 Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding that the combination of McNally and Hood teaches or suggests automatically integrating into a text similarly suggested edits exceeding a threshold, as recited in independent claim 1? Appellant argues although Hood discloses receiving a suggested edit, it also discloses separately receiving votes that are tallied for the suggested edit as a basis for incorporating the suggested edit into the textual content if the number of tallied votes exceed a predetermined threshold. App. Br. 3–4. According to Appellant, even under the broadest reasonable interpretation, the claimed suggested edit cannot be construed to encompass voting. App. Br. 4. Therefore, Appellant submits the cited disclosure of Hood does not teach the disputed limitations. Id. This argument is not persuasive. At the outset, we note Appellant’s Specification does not explicitly define “suggested edit”. Therefore, consistent with the Specification, we construe “suggested edit” as any proposed change to correct typographical, spelling or grammatical errors in a text as perceived by a user. Spec. ¶¶ 2, 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed July 29, 2013), and the Answer (mailed October 2, 2013) for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2014-002478 Application 13/092,868 5 10. Although we agree with Appellant that “suggested edit” cannot be reasonably construed to encompass voting, its operation in the disputed claim limitation necessitates the additional step of voting as a way to determine whether the “suggested edit” should be incorporated into the text. Therefore, the issue before us does not turn on whether “suggested edit” can be reasonably construed to encompass voting, but whether the combination of McNally and Hood teaches or suggests automatically incorporating a suggested edit into a document if tallied number of similarly “suggested edits” exceeds a predetermined threshold. We answer this inquiry in the affirmative. First, we note Appellant’s arguments fail to address the specific findings made by the Examiner in the rejection. The Examiner relies upon the combination of McNally and Hood, whereas Appellant’s arguments are directed solely to Hood at the exclusion of McNally. We find unchallenged the Examiner’s finding that McNally’s disclosure of presenting accumulated edits provided by users to a document owner for integration into the document teaches the claimed “suggested edits”. Ans. 3 (citing McNally ¶ 46). Second, we note the Examiner only relied upon Hood’s disclosure of incorporating a suggested edit into the document if the votes associated with the suggested edit exceed a predetermined threshold to complement the cited McNally’s teaching. Ans. 3–4 (citing Hood 20:15–22, 22:3–18.) Consequently, the proposed combination of McNally and Hood would predictably result in a collaborative tool including a mechanism for automatically selecting a “suggested edit” if the tallied number of votes cast Appeal 2014-002478 Application 13/092,868 6 exceeds a predetermined threshold. Accordingly, we are satisfied that the proposed combination of references teaches or suggests the disputed limitations. It follows, Appellant has not shown error in the Examiner’s obviousness rejection. Regarding the rejection of claim 16, Appellant argues the combination of McNally, Hood, and Ben-Shachar does not teach or suggest that the users editing the document are not collaborators. App. Br. 5. This argument is not persuasive. We agree with the Examiner that Ben-Shachar’s disclosure of a non-collaborative document system that can be used for group editing teaches that the user editors are different from the producer/author of the document. Ans. 4 (citing Ben-Shachar ¶ 33). Regarding claims 4–6, 9–11, 14, 15, and 17–21, because Appellants reiterate substantially the same arguments as those previously discussed for patentability of claims 1 and 16, or do not provide separate patentability arguments therefor, claims 4–6, 9–11, 14, 15, and 17–21 fall with claims 1 and 16 for the foregoing reasons. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2014-002478 Application 13/092,868 7 DECISION We affirm the Examiner’s rejections of claims 1, 4–6, 9–11, and 14– 21, as set forth above. 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). AFFIRMED ELD