Ex Parte Ikuta et al

Board of Patent Appeals and Interferences

May 15, 2002

08687195 (B.P.A.I. May. 15, 2002)

1 Although the examiner requested an “opportunity to present
arguments at the oral hearing,” (Paper No. 18 at 2), he declined
an invitation to appear.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JUNZO IKUTA, MASAKO YOSHIMURA, and KUNIKO AKIYAMA
____________
Appeal No. 2000-1515
Application No. 08/687,195
____________
HEARD: Apr. 25, 20021
____________
Before RUGGIERO, LALL, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The patent examiner rejected claims 1, 4, 6-10, 12-18, 21-23
and 26-29. The appellants appeal therefrom under 35 U.S.C.
§ 134(a). We affirm.
BACKGROUND
The appellants’ invention concerns the translation of
languages. Computer users desire to understand the meanings of
foreign languages that they read. Accordingly, the invention
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Application No. 08/687,195
Page 2
comprises a three-step translation. First, a sentence to be
translated is divided into “word trains.” Second, the original
sentence is converted into a translated sentence for each divided
word train; a symbol is inserted at partition positions of the
divided original and translated sentences to facilitate
correspondence between the sentences. Third, the original
sentence and the translated sentence are displayed in a one-to-
one word train correspondence. A further understanding of the
invention can be achieved by reading the following claim:
1. A mechanical translation method comprising:
(a) dividing an input laterally written original
sentence into a plurality of word trains in accordance
with a predetermined division rule;
(b) converting the original sentence into a
translated sentence for each divided word train, the
translated sentence being divided into word trains; and
(c) displaying the original sentence and the
translated sentence so that the divided original
sentence and the divided translated sentence are
arranged at vertically juxtaposed positions, wherein
the division rule is a rule of dividing the original
sentence into one of phrases and clauses.
The prior art applied by the examiner in rejecting the
claims follows:
Adachi et al. (“Adachi”) 4,866,670 Sep. 12, 1989
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Fujisawa et al. (“Fujisawa”) 5,729,618 Mar. 17, 1998
(filed Mar. 17, 1995)
Suzuki et al. (“Suzuki”) 4,894,779 Jan. 16, 1990
Morgan et al. (“Morgan”) 5,689,724 Nov. 18, 1997
(filed Oct. 11, 1995).
Claims 1, 4, 9, 10, 15, 17, 21, 22 and 26 stand rejected under 35
U.S.C. § 103(a) as obvious over Adachi in view of Fujisawa.
Claims 6, 7, 8, 12, 13, 14, 27, 28 and 29 stand rejected under
§ 103(a) as obvious over Adachi in view of Fujisawa further in
view of Suzuki. Claims 16, 18, and 23 stand rejected under
§ 103(a) as obvious over Adachi in view of Fujisawa further in
view of Morgan.
OPINION
After considering the record, we are persuaded that the
examiner did not err in rejecting claims 1, 4, 6-10, 12-18, 21-23
and 26-29. Accordingly, we affirm.
Rather than reiterate the positions of the examiner or
appellants in toto, we address the two points of contention
therebetween. First, the examiner asserts, "[i]t would have been
obvious to one of ordinary skill in the art at the time of the
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Application No. 08/687,195
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invention to vertically juxtapose the original text and the
translated text, because, as Fujisawa points out, in column 13
lines 35-36, this creates a clear and easy to read format.”
(Examiner's Answer at 4.) The appellants allege, "[t]he
references contain no suggestion for combining their teachings
together to obtain the claimed invention" (Appeal Br. at 8.)
“Whether motivation to combine the references was shown [is]
a question of fact.” Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1348, 53 USPQ2d 1580, 1586 (Fed. Cir. 2000)(citing In
re Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999); Monarch Knitting Mach. Corp. v. Sulzer Morat GMBH, 139
F.3d 877, 881-83, 886, 45 USPQ2d 1977, 1982, 1985 (Fed. Cir.
1998)). “‘[T]he question is whether there is something in the
prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.’” In re Beattie,
974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)
(quoting Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984)). “[E]vidence of a suggestion, teaching, or motivation to
combine may flow from the prior art references themselves, the
knowledge of one of ordinary skill in the art, or, in some cases,
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from the nature of the problem to be solved. . . .” Dembiczak,
175 F.3d at 999, 50 USPQ2d at 1617 (citing Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1630 (Fed. Cir. 1996); Para-Ordnance Mfg. v. SGS Imports Int’l,
Inc., 73 F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995)).
Here, a motivation to combine the Adachi and Fujisawa flows
from the references themselves. “[T]he screen of the display
unit 28 [of Adachi’s machine translator processor] consists, as
shown in FIG. 3, of . . . an original sentence display region 36,
and a translated sentence display region 38.” Col. 3, ll. 20-23.
Although the original and translated sentences are displayed
side-by-side in a “preferred embodiment,” col. 2, l. 30, the
primary reference invites “[v]arious modifications. . . .”
Col. 6, l. 41.
Fujisawa would have suggested such a modification.
Specifically, “[t]he image generating means outputs the
[translation] equivalent of the [original] word under the
[original] word.” Col. 13, ll. 32-33. The secondary reference
also discloses advantages flowing from displaying a translated
word under an original word. Specifically, “the present invention
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provides an image forming apparatus which intelligibly positions
the equivalents of words included in a document image, outputs an
image in an easy-to-see layout even when the equivalents
noticeably change the contents of the image, and promotes high
speed processing.” Id. at ll. 53-58. Because using Fujisawa’s
over-and-under layout to display Adachi’s translated sentence
under the latter’s original sentence would have provided
intelligible positioning of the sentences and an easy-to-see
layout and would have promoted high speed processing, we find
that the prior art as a whole would have suggested combining
teachings of the references.
Second, the examiner asserts, “Adachi discloses . . .
dividing sentences into word trains, in the abstract as dividing
into phrases. . . .” (Examiner’s Answer at 3.) He adds,
“Fujisawa discloses . . . vertical juxtaposition, in column 11
lines 17-19. . . .” (Id. at 4.) The appellants argue, “these
references do not disclose or suggest displaying a divided
original sentence and the divided translated sentence at
vertically juxtaposed positions.” (Reply Br. at 4.)
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2 “The PTO broadly interprets claims during examination of a
patent application since the applicant may ‘amend his claims to
“Analysis begins with a key legal question -- what is the
invention claimed?” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). Claims that
are not argued separately stand or fall together. In re Kaslow,
707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed. Cir. 1983) (citing
In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). When the
patentability of a dependent claim is not argued separately, in
particular, the claim stands or falls with the claim from which
it depends. In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137
(Fed. Cir. 1986)(citing In re Sernaker, 702 F.2d 989, 991, 217
USPQ 1, 3 (Fed. Cir. 1983); In re Burckel, 592 F.2d 1175, 1178-
79, 201 USPQ 67, 70 (CCPA 1979)).
“[T]he Board must give claims their broadest reasonable
construction. . . .” In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d
1664, 1668 (Fed. Cir. 2000). “Moreover, limitations are not to
be read into the claims from the specification.” In re Van
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir.
1993)(citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989)).2
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obtain protection commensurate with his actual contribution to
the art.’” In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934,
936 (Fed. Cir. 1984)(quoting In re Prater, 415 F.2d 1393,
1404-05, 162 USPQ 541, 550 (CCPA 1969)). “This approach serves
the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justified.
Applicants' interests are not impaired since they are not
foreclosed from obtaining appropriate coverage for their
invention with express claim language.” Id. at 1571-72, 222 USPQ
at 936 (citing Prater, 415 F.2d at 1405 n.31, 162 USPQ at 550
n.31).
Here, the appellants stipulate, “[c]laims 1-4, [sic] 6-8, 15
and 16 stand or fall together;” (Reply Br. at 2), “[c]laims 9,
10, 12-14 and 16-18 stand or fall together and . . . [c]laims 21-
23 and 26-29 stand or fall together.” (Reply Br. at 2.) In the
appeal brief, they do not argue separately the patentability of
claims 16, 18, and 23. To the contrary, the appellants
stipulate, “[c]laims 4-8, 11-18, 21-23 and 26-29 stand or fall
together with claims 1, 9 and 21, respectively.” (Appeal Br.
at 6.) In the reply brief, however, the appellants includes a
new argument for the separate patentability of claims 16, 18, and
23. (Reply Br. at 5.)
"We generally will not entertain arguments omitted from an
appellant's opening brief and raised initially in his reply
brief . . . . Considering an argument advanced for the first
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time in a reply brief, then, is not only unfair . . . but also
entails the risk of an improvident or ill-advised opinion. . . ."
McBride v Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1210-11
(D.C. Cir. 1986).
Here, because an examiner is no longer permitted to file sua
sponte a supplemental examiner’s answer in response to a reply
brief, 37 C.F.R. § 1.193(b)(1)(1998), we do not have the benefit
of the examiner’s response to the appellants’ new argument.
Considering the new argument would not only be unfair but would
entail the risk of an improvident or ill-advised opinion.
Accordingly, we will not consider the new argument. Cf. Kaufman
Co. v Lantech Inc., 807 F.2d 970, 973 n.*, 1 USPQ2d 1202, 1204
n.* (Fed. Cir. 1986). Therefore, claims 4, 6-8, 15, and 16 stand
or fall with representative claim 1; claims 10, 12-14, and 16-18
stand or fall with representative claim 9; and claims 22, 23, and
26-29 stand or fall with representative claim 21.
For its part, claim 1 specifies in pertinent part the
following limitations: “displaying the original sentence and the
translated sentence so that the divided original sentence and the
divided translated sentence are arranged at vertically juxtaposed
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positions, wherein the division rule is a rule of dividing the
original sentence into one of phrases and clauses.” Similarly,
claim 9 specifies in pertinent part the following limitations:
"division means for dividing the original sentence into word
trains in accordance with a predetermined division rule, wherein
the division rule is a rule of dividing the original sentence
into one of phrases and clauses . . . and display means for
displaying the original sentence and the translated sentence so
that the divided original sentence and the divided translated
sentence are arranged at vertically juxtaposed positions.” Also
similarly, claim 21 specifies in pertinent part the following
limitations: “(a) dividing an input laterally written original
sentence into a plurality of word trains in accordance with a
predetermined division rule wherein the division rule is a rule
of dividing the original sentence into one of phrases and clauses
. . . and (c) displaying the original sentence and the translated
sentence so that the divided original sentence and the divided
translated sentence are arranged at vertically juxtaposed
positions.” Giving the representative claims their broadest
reasonable interpretation, the limitations merely require
dividing an original sentence into either phrases or clauses and
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then displaying the divided, original sentence and a divided,
translated sentence in vertically juxtaposed positions.
Having determined what subject matter is being claimed, the
next inquiry is whether the subject matter is obvious. "’A prima
facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art.’" In re
Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976)).
Here, Adachi’s translator divides an original sentence into
phrases, viz., “the original is divided into phrases by said
dividing means and the phrases are translated by said translation
processing means.” Col. 2, ll. 25-27. More specifically, the
original sentence is divided “in accordance with a predetermined
rule for division. . . .” Id. at ll. 21-22. “The original
sentence division unit 24 performs division processing by the use
of the division grammar. (step 108) Namely, when an example of
English sentence as shown in FIG. 5A is input, it is divided into
elemental units of the sentence. . . .” Col. 4, ll. 52-57.
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“Then, those three [resultant] phrases are sent to the
translation unit 18,” id. at ll. 59-60, for translation.
As mentioned regarding the first point of contention, the
primary reference then displays the original sentence and a
translated sentence. Figure 5B of Adachi shows that the original
and translated sentences are displayed as divided. When
Fujisawa’s over-and-under layout was used to display Adachi’s
divided, translated sentence under its divided, original
sentence, the combination of teachings would have suggested
displaying the divided, original sentence and the divided,
translated sentence in vertically juxtaposed positions.
Therefore, we affirm the rejection of representative claim 1;
claims 4, 6-8, 15, and 16, which fall therewith; representative
claim 9; claims 10, 12-14, and 16-18, which fall therewith;
representative claim 21; and claims 22, 23, and 26-29, which fall
therewith.
CONCLUSION
In summary, the rejection of claims 1, 4, 6-10, 12-18, 21-23
and 26-29 under § 103(a) is affirmed. Our affirmance is based
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only on the arguments made in the briefs. Arguments not made
therein are neither before us nor at issue but are considered
waived.
No time for taking any action connected with this appeal may
be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-1515
Application No. 08/687,195
Page 14
JAMES E. LEDBETTER, ESQ.
STEVENS, DAVIS, MILLER & MOSHER, L.L.P.
1615 L. STREET, N.W. SUITE 850
P.O. BOX 34387
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