Ex Parte Haynes et al

Patent Trial and Appeal Board

Jun 22, 2016

12625407 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/625,407 11124/2009
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
06/24/2016
FIRST NAMED INVENTOR
Thomas Richard Haynes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920090097US 1 1189
EXAMINER
YI,RINNA
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS RICHARD HA YNES and LIN SUN1
Appeal2015-000800
Application 12/625,407
Technology Center 2100
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection ("Non-Final Act.") of claims 1, 4--9, 12-18, and 20-
24.2 We have jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. (App. Br. 2.)
2 Claims 3, 11, and 19 are objected to as being dependent upon rejected base
claims, but the Examiner has indicated these claims are allowable if
rewritten in independent form. (Non-Final Act. 18.) These claims are,
therefore, not before us. Claims 2 and 10 were canceled in an Amendment
submitted with a Request for Continuing Examination on August 28, 2012.
Appeal2015-000800
Application 12/625,407
Introduction
According to Appellants, "[a]spects of the present invention relate in
general to the display of digitally stored time-based entries, and more
particularly, to the chronological navigation among such time-based
entries." (Spec. i-f 1.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A method for chronologically navigating among time-
based entries stored by a physical computing device comprising
a processor to execute a time-based application, the method
compnsmg:
displaying, with said computing device, a time-based entry
with at least one of a forward control and a backward control;
in response to a user selecting said forward control,
displaying with said computing device a subsequent time-based
entry, said subsequent time-based entry comprising a shared
property with said displayed time-based entry;
in response to said user selecting said backward control,
displaying with said computing device a previous time-based
entry, said previous time-based entry comprising a shared
property with said displayed time-based entry,
in which the shared property is assigned by a user.
2
Appeal2015-000800
Application 12/625,407
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wynn
Land
Rosenberg
Crystal
US 6, 734,883 B 1
US 2006/0080306 Al
US 2008/0034047 Al
US 2009/0144642 Al
REJECTIONS
May 11, 2004
Apr. 13, 2006
Feb. 7,2008
June 4, 2009
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg and Land. (Non-Final Act. 2--4.)
Claim 1 stands alternatively rejected under 35 U.S.C. § 102(b) as
being anticipated by Rosenberg. (Ans. 10-12.)
Claims 4--7, 9, 12-15, 17, 18, 20, 23, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Rosenberg, Land, and Crystal.
(Non-Final Act. 4--15.)
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg, Land, and Wynn. (Non-Final Act. 15-16.)3
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg, Land, Crystal, and Wynn. (Non-Final Act.
16-17.)4
3 Although the heading for the rejection of claim 8 in the Non-Final Office
Action references anticipation under 35 U.S.C. § 102(b) (Non-Final Act.
15), the body of the rejection makes clear that the rejection is for
obviousness (id. at 15-16), and hence the proper statutory reference is 3 5
U.S.C. § 103(a).
4 Although the heading for the rejection of claim 16 in the Non-Final Office
Action references anticipation under 35 U.S.C. § 102(b) (Non-Final Act.
16), the body of the rejection makes clear that the rejection is for
3
Appeal2015-000800
Application 12/625,407
ISSUE
Whether the Examiner erred in finding the combination of Rosenberg
and Land teaches or suggests:
in response to a user selecting said forward control,
displaying with said computing device a subsequent time-based
entry, said subsequent time-based entry comprising a shared
property with said displayed time-based entry;
in response to said user selecting said backward control,
displaying with said computing device a previous time-based
entry, said previous time-based entry comprising a shared
property with said displayed time-based entry,
in which the shared property is assigned by a user[,]
as recited in claim 1.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the Action from which this appeal is taken (Non-Final
Act. 2-17) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief. (Ans. 2-12.) We concur
with the conclusions reached by the Examiner, and we highlight the
following for emphasis. 5
obviousness (id. at 16-17), and hence the proper statutory reference is 3 5
U.S.C. § 103(a).
5 Only those arguments made by Appellants have been considered in this
Decision. Arguments Appellants did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
4
Appeal2015-000800
Application 12/625,407
A. Claim 1
1. The Examiner Did Not Err in Finding the Prior Art Teaches or
Suggests " ... shared property is assigned by a user"
The Examiner finds Rosenberg teaches the limitations of claim 1,
except the Examiner finds "Rosenberg does not appear to explicitly teach
that said subsequent time-based entry comprising a shared property with said
displayed time-based entry; said previous time-based entry comprising a
shared property with said displayed time-based entry, in which the shared
property is assigned by a user." (Non-Final Act. 3.) The Examiner then
finds:
[I]n the same field of the invention, Land teaches . . . said
subsequent time-based entry comprising a shared property with
said displayed time-based entry (fig. 2, pars. 33-37, a pressing a
next button 124 causes a system to display a next thumbnail
image from a group of thumbnail images that are relevant to a
thumbnail image currently displayed, for example, relevant to a
word "sail" 106); said previous time-based entry comprising a
shared property 1vith said displayed time-based entry (fig. 2,
pars. 33-37, a pressing a back button 120 causes a system to
display a previous thumbnail image from the group of thumbnail
images that are relevant to the thumbnail image currently
displayed, for example, relevant to a word "sail" 106), in which
the shared property is assigned by a user (fig. 2, pars. 33-37, the
word "sail" 106 is assigned/typed/entered by a user).
(Non-Final Act. 3 (emphases added).)
Appellants argue the Examiner's findings regarding Land are in error
because, according to Appellants, Land fails to teach "the shared property is
assigned by a user." (App. Br. 11 (emphasis added).) In particular,
Appellants argue Land teaches queries to a search engine for a database that
"return images that are relevant to the indicated text." (Id.) Appellants
further argue "it is the search engine that has assigned the shared property
5
Appeal2015-000800
Application 12/625,407
(i.e., the term 'sail') as a means to display a number of related images. The
user did not do this. Instead, the user simply selects a word for the search
engine to look up and react to." (App. Br. 11-12 (emphasis added).)
Appellants provide no support for the assertion that the search engine,
and not the user, "assigns" the shared property in Land. Notably, in making
this contention, Appellants do not offer a construction of "assigned." The
Examiner, however, concludes the term "assigned" is reasonably construed
as meaning "'typed', 'entered', 'selected', or 'indicated."' (Ans. 5; see also
Ans. 4 (citing definitions from vocabulary.com, onelook.com, and
tresaurus[sic, thesaurus].com).) Thus, the Examiner has construed the
phrase "in which the shared property is assigned by a user" in claim 1 as
meaning the shared property has been "typed," "entered," "selected," or
"indicated" by the user. Appellants do not challenge the Examiner's
construction.
We agree the Examiner's construction is reasonable in light of the
Specification. Appellants' Specification states "[t]hrough the user interface,
a user may assign tags (208) to a calendar entry (202). A tag (208) may be
assigned to indicate a particular property associated with the calendar entry
(202)." (Spec. i-f 36.) Thus, the Specification teaches that a user may
"assign" a particular property to be associated with an entry by, e.g.,
selecting the property and typing it into a user interface. The Examiner's
construction is also consistent with the teachings of Land. Land discloses
images are searched based on "metadata" associated with the images. (Land
i-f 28.) The "metadata" may include "an image identification number, author,
original date that image of subject matter was captured, location and
descriptive title." (Land i-f 42 (emphasis added).) Land also discloses the
6
Appeal2015-000800
Application 12/625,407
image database that is searched may reside on the user's "local drive, e.g., a
hard disk, floppy disk ... ,"etc. (Land i-f 49.) Although Land does not
disclose who associated the images with metadata to allow the searching
(such as the "descriptive title"), it is at least obvious that images residing on
a user's own hard drive could have been associated with metadata by the
user.
Appellants further argue, with regard to Land:
It would be unreasonable to say that the user had assigned any
such property to any of those images. The user had never seen
or had any contact with the returned images at the time when the
user selected the term "sail" to be a search query term. Whatever
property the images had that identified with the search term
"sail," they had that property intrinsically before the user
initiated the search.
(Reply Br. 5 (emphasis added).) Although we agree with Appellants that the
searched images in Land intrinsically had the identified property "before the
user initiated the search," this point undercuts Appellants' argument that, in
Land, it is the "search engine that has assigned the shared property" to the
images. (App. Br. 11.) A search engine does not "assign" properties to the
objects it searches, but instead searches existing metadata associated with
those objects for properties matching a query. (See, Land i-fi-129, 42, 49).
Moreover, Appellants point to no basis in Land to support their contention
that the images searched by the user were "never seen" by the user
previously and had not, for example, been associated by the user with the
necessary metadata to be located by the search engine. This is especially so
in the case where, as we note above, the images searched reside on the user's
hard drive. (Land i-f 49.) Thus, Appellants' conclusory contention amounts
to unsupported attorney argument, which is entitled to little probative value.
7
Appeal2015-000800
Application 12/625,407
Jn re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); Jn re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). In short, we are not persuaded of error in the
Examiner's finding Land teaches or suggests a user has "assigned" a "shared
property" to the images being searched.
2. The Examiner Did Not Err in Finding Land is Analogous Art
Appellants also challenge the Examiner's combination of Rosenberg
and Land by arguing "Land is not analogous art to Rosenberg." (App. Br.
13.) In particular, Appellants assert "Land is directed to inserting images
into a document" while Rosenberg is directed to a "functionally rich timeline
bar" that allows "calendar events" to be "viewed and managed from within
the e-mail window." (App. Br. 14.)
A reference must be from an analogous art to be available for use in a
section 103(a) rejection. "Whether a reference in the prior art is 'analogous'
is a fact question." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir.
1987)). Two criteria have evolved for answering the question: "(1) whether
the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." Clay, 966 F.2d 656 at 658-
59 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood,
599F.2d1032, 1036(CCPA1979)). "A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor's
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's attention in
8
Appeal2015-000800
Application 12/625,407
considering his problem." Id. at 659. To qualify as analogous art under the
second criterion, a prior art reference need not "be reasonably pertinent to
each and every problem with which an inventor is involved; reasonable
pertinence to a single such problem suffices." Ex parte Gaechter,
65 USPQ2d 1690, 1692 (BP AI 2002).
As the Examiner finds, and we agree:
Both Rosenberg and Land teach the system that can retrieve the
previous or subsequent data that are relevant to the currently
display data. The only difference between Rosenberg and Land
is the type of data. The data retrieved in Rosenberg is the string
of calendar events and the data retrieved in Land is the images.
The Examiner asserts that Land is analogous art to Rosenberg in
terms of retrieving of the data relevant to the indicated or selected
data.
(Ans. 6.) We, thus, concur with the Examiner's finding that Land is
analogous art and, as such, is available for use in a section 103(a) rejection.
3. The Examiner Did Not Rely on Impermissible Hindsight
Appellants further argue the Examiner's combination of Rosenberg
and Land is in error because it is based on "hindsight reconstruction." (App.
Br. 14.) In particular, Appellants assert:
[NJ either Rosenberg nor Land suggests that the email application
of Rosenberg could include the ability to display a "subsequent
time-based entry comprising a shared property with said
displayed time-based entry." (Claim 1) (emphasis added). It
appears, therefore, that the Office Action has gleaned
information solely form [sic, from] Appellant's [sic, Appellants']
specification to reconstruct the described system therein.
(Id.) Appellants also argue "that which is imported from Land to Rosenberg
by the Answer is the idea of navigating through images in a search result. If
the timeline bar taught by Rosenberg were instead used to scan through
9
Appeal2015-000800
Application 12/625,407
images in a search result, that would completely change the purpose and
function of what Rosenberg describes." (Reply Br. 7.)
We first disagree with Appellants' unduly narrow reading of the cited
references and the Examiner's findings, which assume the Examiner's
findings are premised on bodily incorporating the teachings of Land into
Rosenberg. As noted above, the Examiner finds the ordinarily skilled artisan
would have combined the teachings of these references in the manner recited
in the claims. (See Ans. 6.) "The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations
omitted). We further note the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). Rather, as the Supreme Court has explained, the
skilled artisan would "be able to fit the teachings of multiple patents together
like pieces of a puzzle" because the skilled artisan is "a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
420-21 (2007). Here, Appellants have not demonstrated that the Examiner's
proffered combination would have been "uniquely challenging or difficult
for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
We also disagree the Examiner has engaged in improper hindsight
reconstruction. The Examiner has provided an articulated reason for
10
Appeal2015-000800
Application 12/625,407
combining Rosenberg and Land that includes a rational underpinning. (See
Ans. 7.) In particular, the Examiner finds, and we agree:
Land teaches a search engine that creates search criteria
for a query from the text, which is indicated or selected by the
user, and retrieves a number of images by using a metadata
associated with the indicated text that is relevant to the user
indicated/selected text. The system of a client enables a forward
or backward navigation of the images by using a back button 120
and a next button 124 such that the metadata results for the
relevant images based on the indicated/ entered text can be
sequentially displayed in the forward or backward direction
(Land, pars. 28, 33-37, 42, 49, and 52).
Therefore, [i]t is obvious to apply the concept of retrieving
the metadata associated with the indicated or entered text taught
by the Land on the system of Rosenberg such that the timeline
bar can retrieve[] the metadata results from the database and
display the previous or next string of calendar events that are
relevant to the string of calendar events currently displayed by
using the previous or next button that allows a user to easily
retrieve the previous or the subsequent calendar event associated
\vith the currently displayed calendar event.
(Ans. 7.)
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claim 1 as unpatentable over the
combination of Rosenberg and Land, and we, therefore, sustain that
rejection.
B. Alternative Rejection of Claim 1under35 U.S.C. § 102(b)
In a new ground of rejection of claim 1 made in the Answer, the
Examiner rejects claim 1under35 U.S.C. § 102(b) as anticipated by
Rosenberg alone. (Ans. 10-12.) Specifically, the Examiner finds
"Rosenberg teaches a timeline bar embedded within an e-mail window that
11
Appeal2015-000800
Application 12/625,407
displays string of calendar events in a content area of the timeline bar and
allows the user to navigate a previous or subsequent string of calendar
events relevant to the currently displayed calendar events, and this
information of the calendar events is provided or entered by the user." (Ans.
11-12 (emphasis added).)
We agree these findings, which are not addressed or rebutted by
Appellants, are supported by Rosenberg. For example, Rosenberg teaches
"DISPLAY OF ALL CALENDAR EVENTS ASSOCIATED WITH THE
PARTICULAR DATE AND THE USER." (Rosenberg Fig. 3 (emphasis
added).) Rosenberg further teaches scrolling, forward and backward,
through entries associated with a particular date. (Rosenberg Figs. 1, 2; i-fi-1
23-25, 38.) Calendar entries associated with a particular date share at least
the common property of date, and this shared property is "assigned by a
user" where the user has entered the calendar events, as the Examiner
correctly finds. (Ans. 11-12.)
We, therefore, agree with the Examiner's findings in rejecting claim 1
under 35 U.S.C. § 102(b) as anticipated by Rosenberg, and summarily
sustain the Examiner as Appellants have not addressed this rejection.
C. Claims 4-9, 12-18, and 20--24
In their Appeal Brief, Appellants do not present separate substantive
arguments for claims 4--9, 12-18, or 20-24. Rather, Appellants either
reiterate or incorporate by reference the arguments presented for claim 1.
(App. Br. 17-21.) Therefore, for the reasons stated above with regard to the
Examiner's 35 U.S.C. § 103(a) rejection of claim 1, we also sustain the
Examiner's 35 U.S.C. § 103(a) rejection of claims 4--9, 12-18, and 20-24.
12
Appeal2015-000800
Application 12/625,407
In their Reply Brie±: Appellants raise an additional argument
regarding claim 9, arguing that "[Crystal] does not teach the subject matter
missing from Rosenberg and Land. Beyond merely noting that metadata can
comprise a tag, Crystal does not teach or suggest the idea of a shared
property among a set of time-based entries," as recited in claim 9. (Reply
Br. 9.) Not only is Appellants' piecemeal challenge to Crystal an improper
attack that fails to address the Examiner's combination of references (see In
re Keller, 642 F.2d 413, 425 (CCPA 1981)), but we find nothing in the
Examiner's Answer that would have prompted this new argument raised by
Appellants for the first time in the Reply Brief. Indeed, the Examiner's
discussion in the Answer regarding claim 9 does not mention Crystal (see
Ans. 7-8); rather, the Examiner's discussion of Crystal is provided only in
the Non-Final Office Action. (See Non-Final Act. 9-10.) Therefore,
Appellants' new argument regarding claim 9 should have been raised in the
opening brief, and its untimely and unjustified inclusion in Appellants'
Reply Brief does not warrant our consideration. Optivus Tech., Inc. v. Ion
Beam Appl'ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for
the first time in the reply brief that could have been raised in the opening
brief is waived); accord Ex parte Borden, 93 USPQ2d 1473, 1473-74
(BPAI 2010) (informative opinion) (absent a showing of good cause, the
Board is not required to address an argument newly presented in the reply
brief that could have been presented in the principal brief on appeal).
13
Appeal2015-000800
Application 12/625,407
DECISION
For the above reasons, the Examiner's rejections of claims 1, 4--9, 12-
18, and 20-24 are affirmed. 6
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
6 Should there be further prosecution with respect to any of claims 17-22,
the Examiner should consider whether these claims (which recite "a
computer readable storage medium") cover transitory media, which is not
patent eligible. See Ex parte !Vfe1!\.1herter, 107 USPQ2d 1857, 1862 (PTAH
2013) (precedential) (holding that "those of ordinary skill in the art would
understand the claim term 'machine-readable storage medium' would
include signals per se," and where "the broadest reasonable interpretation[]"
of a claim "covers a signal per se," the claim "must be rejected under
35 U.S.C. § 101 as covering non-statutory subject matter") (citing In re
Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)).
14