Ex Parte HEO

Patent Trial and Appeal Board

Mar 13, 2017

13955463 (P.T.A.B. Mar. 13, 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.
13/955,463 07/31/2013 Dongkyu HEO 0203-1115 1169
03/15/201768103 7590
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
EXAMINER
CHU, JENQ-KANG
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
u sdocketing @ j effersonip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONGKYU HEO
Appeal 2017-000507
Application 13/955,463
Technology Center 2100
Before ALLEN R. MacDONALD, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000507
Application 13/955,463
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—18. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 17 under appeal read as follows (emphasis,
formatting, and bracketing added):
1. A method for configuring an e-book, the method comprising:
[A.] displaying the e-book to a user;
[B.] receiving, when an input is detected to select at
least one content in the ebook, one or more user effects for the
selected at least one content that are configured by the user;
[C.] creating metadata including information
associating the one or more user effects with the selected at
least one content;
[D.] storing the metadata associated with the e-book;
and
[E.] playing back, when an input is detected to play
back the one or more user effects, the one or more user effects
according to at least one of
[i.] an output order of the selected at least one
content,
[ii.] structural information of the e-book,
[iii.] an order of the one or more user effects
added to an item of the selected at least one
content,
[iv.] an output order of the one or more user
effects, and
[v.] a playback order of the one or more user
effects set by a user.
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17. A non-transitory computer-readable storage medium
storing instructions that, when executed, cause at least one
processor to perform the method of claim 1.
Rejection on Appeal
The Examiner rejected claims 1—18 under 35 U.S.C. § 102(a) as being
anticipated by Hudson et al. (US 2013/0124980 Al; May 16, 2013).1
Appellant’s Contentions2
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(a) because:
Hudson is directed to a digital content creation platform
for creating an electronic publication. But Hudson does not
teach . . . adding user effects by an end user.
App. Br. 4.
It is well established that compiling is a process that changes
and finalizes the content such that it cannot be edited by, in this
case, a dedicated reader of the digital content. Specifically,
Hudson states that:
the digital publication may perform differently
than expected. To account for the potential
differences, the digital publication must be
compiled, installed on the target client device, and
tested. Any changes that need to be made then
require returning to the development device,
making the change, recompiling, re-installing, and
re-testing. See Hudson at 1123.
1 Separate patentability is not argued for claims 2—18.
2 To the extent Appellant argues issues related solely to a rejection under
35 U.S.C. § 103(a), e.g., “Hudson does not. . . suggest” (App. Br. 4), we do
not address those arguments as no rejection under § 103 is before this panel.
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Application 13/955,463
Therefore, like other systems of the related art described
in the instant application, the user interaction and content
effects of Hudson’s e-book are limited; they are only
performed by the digital content creator and not a user.
Therefore, Hudson does not teach . . . “receiving, when an input
is detected to select at least one content in the e-book, one or
more user effects for the selected at least one content that are
configured by the user,” as recited in claim 1.
App. Br. 4—5 (additional emphasis added).
[T]he Examiner appears to interpret the “user” in claim 1 to
correspond to the “content creator” in Hudson. Notably,
Hudson describes that a “content creator can be any user
creating digital content, such as a professional and/or amateur
publisher, designer, editor, writer, author, reporter, and/or
producer of a digital publication.” See Hudson at 1 118
(emphasis added). . . . Appellants [sic] note that [his]
specification does not support the interpretation of the “user” to
correspond to the content creator. Rather, the specification
supports an interpretation of “user” to correspond to a person
who receives published content for consumption. . . . Thus, the
specification states that a device downloads e-book files and
then a user can add an effect to the e-books.
Reply Br. 2.
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(a) because:
In the Advisory Action, the Office admits to attempting to
interpret Hudson, which is improper because only the claims
are interpreted.
App. Br. 5 (emphasis omitted).
In the Advisory Action, the Office states “[g]iven the
broadest reasonable interpretation [of Hudson], the preview or
run the digital publication can simulate the end user with
configuring the added effects as partial of creator’s privilege
and experience the behavior of the digital publication as it
would exhibit on a client device.” See the Advisory Action.
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Application 13/955,463
This is improper because the broadest reasonable
interpretation is only applied to the pending claims.
Specifically, “[djuring patent examination, the pending claims
must be ‘given their broadest reasonable interpretation
consistent with the specification. See MPEP 2111.
App. Br. 5 (emphasis omitted).
3. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(a) because:
To the extent the Office is attempting to rely on inherency, the
Office has not established the necessary burden to show that a
user can add effects in Hudson.
App. Br. 6.
4. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(a) because:
Hudson fails to teach “creating metadata including
information associating the one or more user effects with the
selected at least one content.” The Office states that:
Hudson discloses a digital publication can
include one or more sections. A section can
conceptually be viewed as a chapter in a book or
some other unit that contains related content. See
the Final Office Action at p. 4.
However, in an example of claim 1, metadata associates
content with a user effect. Hudson is different because the
metadata describes relationships among the content created by
the creator of the digital publication. Therefore, there is no
suggestion in Hudson that the alleged “metadata” is related to a
wser-con figured effect.
The Office Action further mischaracterizes | 147-148 of
Hudson, stating that “a page can include a rendition for a tablet
device in both portrait and landscape orientations by user
[sic].” See the Office Action at p. 7 (emphasis added).
However, the cited portion of Hudson is related to the digital
content creation platform 900 that is used by the author of the
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Application 13/955,463
digital publication.
App. Br. 6—7 (emphasis added)
[T]he cited portion of Hudson [1 148] does not describe that the
end user can create or configure the portrait or landscape
orientation of the content.
App. Br. 7 (emphasis added).
5. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(a) because:
Despite the Examiner’s assertions, there is no express
description in Hudson that the added interactivity effects are
“stor[ed] [as] metadata associated with the e-book,” as recited
in claim 1.
Reply Br. 3 (emphasis omitted).
Issue on Appeal
Did the Examiner err in rejecting claim 1 as anticipated because
Hudson fails to describe the limitations required by the claim?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant’s conclusions.
As to Appellant’s above contention 1, we disagree. First, Appellant’s
argument is not commensurate with the scope of the claim language. Claim
1 is not explicitly limited to an end user or a dedicated reader, and
Appellant does not explain how claim 1 would be inherently so limited.
Second, although Appellant discusses why the Specification shows the
claimed user can be an end user, Appellant does not similarly explain why
the Specification precludes other types of users such as the user of a content
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Application 13/955,463
creator application from being the claimed user. Merely showing support
for user A does not itself preclude user B. Our finding is reinforced by
Appellant’s Specification which explicitly describes the claimed “user
effects” may be those “which have been input to an e-book during the
manufacture or that the user has input in an e-book.” Spec. 169 (emphasis
added). Similarly, Hudson states that “[a] content creator can be any user
creating digital content.” Hudson 1118. Thus, we agree with the Examiner
that the broadest reasonable interpretation of the term “user” is not limited to
“end user.” Ans. 4.
As to Appellant’s above contention 2, Appellant reads the Examiner’s
Advisory Action as stating, “Given the broadest reasonable interpretation
[of Hudson] . . .” (App. Br. 5, brackets in original). We do not agree with
Appellant’s bracketed modification of the Advisory Action. Rather, we read
the Action as referring to the broadest reasonable interpretation of the claim.
See Advisory Act. 2 (Feb. 19, 2016).
As to Appellant’s above contention 3, we disagree. Contrary to
Appellant’s argument, we find no attempt to rely on inherency for the argued
limitations. Rather, as discussed above as to contention 1, we agree with the
Examiner’s finding that Hudson discloses the claim limitations.
As to Appellant’s above contention 4, we disagree. Appellant’s
contention turns on the same “end user” versus “creator” argument of above
contention 1. App. Br. 6—7. We reach the same result.
As to Appellant’s above contention 5, we disagree. Whereas the
Appeal Brief and Answer addressed the “creating metadata” step (App. Br.
6—7; Ans. 5), the Reply Brief for the first time attempts to argue the “storing
metadata” step (Reply Br. 3 4). This conflation is unpersuasive because to
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Application 13/955,463
the extent it addresses the “storing metadata” step, it is untimely under
37 C.F.R. § 41.41(b)(2), and to the extent it addresses the “creating
metadata” step, Appellant has not explained how the argument applies to
“creating” rather than “storing.”
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—18 as being
anticipated under 35 U.S.C. § 102(a).
(2) Claims 1—18 are not patentable.3
DECISION
The Examiner’s rejection under 35 U.S.C. § 102(a) of claims 1—18 is
affirmed.
3 As the Examiner has shown that claims 1—18 are not patentable, we do not
further address whether claims 1—12 and 17 should be rejected under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. However, should there be further prosecution of
these claims, the Examiner’s attention is directed to our following concerns.
Words of a claim are given their plain meaning during examination
unless shown to be inconsistent with the specification or other evidence of
record. MPEP § 2111.01(1). Claims 1 and 7 contain limitations in a format
of “at least one of [A] and [B].” Our reviewing court has held that the plain
meaning of “at least one of A and B” is the conjunctive phrase “at least one
of A and at least one of B.” SuperGuide Corp. v. DirecTV Enters., Inc., 358
F.3d 870, 885—86 (Fed. Cir. 2004). While the Specification may provide
sufficient written description support for “at least one of [A] or [B],” the
Examiner may wish to consider whether there is sufficient written
description support for “at least one of [A] and [B].”
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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)(l)(iv).
AFFIRMED
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