Ex Parte Gross et al

Patent Trial and Appeal Board

Jan 17, 2017

12206599 (P.T.A.B. Jan. 17, 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.
12/206,599 09/08/2008 John N. Gross JNG 98001-C3 9126
23694 7590 01/19/2017
Law Office of J. Nicholas Gross, Prof. Corp.
PO BOX 9489
BERKELEY, CA 94709
EXAMINER
BLACKWELL, JAMES H
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
01/19/2017 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):
eofficeaction @ appcoll.com
jngross@pacbell.net
anthonygreek @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN N. GROSS and ANTHONY A. GROSS
Appeal 2015-006336
Application 12/206,599
Technology Center 2100
Before CAROLYN D. THOMAS, JOHN A. EVANS, and
ROBERT J. WEINSCHENK, Administrative Patent .Judges.
WEINSCHENK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 83—89 and 91—101. Claims 1—82 and 90 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-006336
Application 12/206,599
STATEMENT OF THE CASE
Introduction
We review the Examiner’s rejections in light of Appellants’
contentions the Examiner erred. We refer herein to the Non-Final Office
Action mailed May 8, 2014 (“Non-Final Act.”), Appellants’ Appeal Brief
filed November 10, 2014 (“App. Br.”), the Examiner’s Answer mailed April
9, 2015 (“Ans.”), and Appellants’ Reply Brief filed June 9, 2015 (“Reply
Br.”).
Appellants’ invention relates to a word checker that checks for and
identifies inappropriate word choices (Spec. 1:7—10). Claim 83, which is
illustrative, reads as follows:
83. A method of checking electronic text document
files containing descriptions of products and/or services on a
computing system comprising:
defining a plurality of separate target audiences for the
electronic text document files using the computing system;
wherein said plurality of separate target audiences are
associated with a plurality of separate associated undesirable
content vocabularies;
receiving a plurality of electronic text document files
designated to be communicated to said plurality of separate
target audiences including a plurality of identified intended
recipients;
wherein at least two of said plurality of intended
recipients are from different ones of said plurality of separate
target audiences;
providing at least one first electronic filter containing a
first set of words corresponding to a first one of said separate
associated undesirable content vocabularies for a first target
audience;
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Application 12/206,599
providing at least one second electronic filter containing
a second set of words corresponding to a second one of said
separate associated undesirable content vocabularies for a
second target audience;
wherein said first set of words and said second set of
words are designated as offensive and/or inappropriate for
communication with a corresponding designated first or second
target audience respectively for the products and/or services;
checking said plurality of electronic text document files
for inappropriate content concerning the products and/or
services with the computing system using said first and/or
second electronic filter;
wherein said first and second electronic filters can be
invoked selectively by an operator of the computing system on
a document-by-document basis, such that a first content in a
first electronic text document file is not processed with said
electronic filters, and a second content in a second electronic
text document file is processed based on both said first
electronic filter and said second electronic filters;
controlling distribution of said plurality of electronic text
document files to corresponding designated target audiences
and said plurality of identified intended recipients with the
computing system based on checking content with said
electronic filters.
Rejections on Appeal
Claims 83—89 and 91—93 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cohen (US 5,796,948; issued Aug. 18, 1998) and
Qualcomm (Eudora Mail Pro Version 3.0 For Windows User Manual (Oct.
1996)) (Non-Final Act. 2—27).
Claims 94 and 98 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Qualcomm, and Post (US 5,822,527; issued Oct.
13, 1998) (Non-Final Act. 28).
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Appeal 2015-006336
Application 12/206,599
Claims 95 and 99 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Qualcomm, Post, and INTEGRALIS
MIMESweeper (Functional Guide and Reference for MIMESweeper
Version 2.3 (Jan. 1996)) (Non-Final Act. 29-30).
Claims 96 and 100 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Qualcomm, and Schloss (US 5,706,507; issued
Jan. 6, 1998) (Non-Final Act. 30-31).
Claims 97 and 101 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen, Qualcomm, and Cobb (US 6,199,102 Bl; issued
Mar. 6, 2001) (Non-Final Act. 31—32).
Issues on Appeal
Did the Examiner fail to articulate sufficiently a reason why it would
have been obvious to combine the teachings in Cohen and Qualcomm?
Did the Examiner err in finding the combination of Cohen and
Qualcomm teaches or suggests all the limitations of claims 83, 88, and 92?
Did the Examiner err in finding the combination of Cohen,
Qualcomm, and Schloss teaches or suggests all the limitations of claims 96
and 100?
Did the Examiner err in finding the combination of Cohen,
Qualcomm, and Cobb teaches or suggests all the limitations of claims 97 and
101?
ANALYSIS
With respect to claim 83, Appellants argue the Examiner erred by
failing to articulate sufficiently a reason to combine the teachings in Cohen
and Qualcomm (App. Br. 9-10). Specifically, Appellants argue the
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Application 12/206,599
Examiner “simply stated that the claims are obvious because the
combination of two elements would have the features of the claim” (App.
Br. 9). The Examiner’s Answer does not respond specifically to Appellants’
argument (see Ans. 2—13). We agree with Appellants.
The Examiner relies on the combination of Cohen and Qualcomm as
teaching or suggesting the limitations recited in claim 83 (Non-Final Act. 2—
13). For each limitation, the Examiner states it would have been obvious to
combine the teachings in Cohen and Qualcomm because: 1) both references
relate to the electronic exchange of content; and 2) adding the teachings in
Qualcomm to Cohen would have provided Cohen with the additional
functionality recited in claim 83 (Non-Final Act. 4—7, 9, 11—13). For
example, with respect to one of the limitations recited in claim 83, the
Examiner states:
It would have been obvious to one of ordinary skill in the art at
the time of invention to have combined the teachings of Cohen
and Qualcomm as both inventions are related to the electronic
exchange of content. Adding the teaching of Qualcomm to
Cohen would have provided additional functionality to allow
Cohen to address message(s) to multiple groups of recipients
and further screen those messages for inappropriate content
using multiple vocabularies.
(Non-Final Act. 5—6). In other words, the Examiner’s rationale for
combining Qualcomm with Cohen merely repeats features of the claimed
invention itself.
However, to demonstrate that a claim would have been obvious over a
combination of prior art references, the Examiner “must articulate a reason
why a [person having ordinary skill in the art] would combine the prior art
references.” In re Nuvasive, No. 2015-1670, 2016 WL 7118526, at *4 (Fed.
Cir. Dec. 7, 2016); see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418
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(2007) (“there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). Here, the
Examiner states only that it would have been obvious to combine Cohen and
Qualcomm because doing so would have provided Cohen with the additional
functionality recited in claim 83 (Non-Final Act. 4—7, 9, 11—13). We agree
with Appellants that such a statement alone, i.e., repeating the claimed
features, does not articulate sufficiently a reason why a person of ordinary
skill in the art would have combined the teachings in Cohen and Qualcomm.
See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 577—78 (Fed.
Cir. 2016) (explaining that “[bjroad, conclusory statements” are not
sufficient to show “why a person of ordinary skill in the art would modify
the prior art references to create the claimed invention.”).
Therefore, we do not sustain the Examiner’s rejection of claim 83.
The Examiner’s rejection of claim 93 includes the same deficiency discussed
above with respect to claim 83 (Non-Final Act. 19, 21, 22, 24, 26, 27), and,
thus, we do not sustain the Examiner’s rejection of claim 93 for the same
reasons discussed above. Claims 84—89, 91, 92, and 94—101 depend,
directly or indirectly, from claim 83 or claim 93, and, thus, we do not sustain
the Examiner’s rejection of claims 84—89, 91, 92, and 94—101.
DECISION
The decision of the Examiner rejecting claims 83—89 and 91—101 is
reversed.
REVERSED
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