Ex Parte Kelley et alDownload PDFPatent Trial and Appeal BoardSep 13, 201310448581 (P.T.A.B. Sep. 13, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MIRIAM KELLEY, SCOTT H. MCILVAIN, and MATTHEW K. BROWN ____________ Appeal 2011-008381 Application 10/448,581 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008381 Application 10/448,581 2 STATEMENT OF THE CASE Miriam Kelley, Scott H. McIlvain, and Matthew K. Brown (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 22 and 25-28. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 22, 25, and 28 are the independent claims on appeal. Claims 22 and 25 are illustrative of the claimed subject matter and are reproduced below. 22. A method for teaching linguistics with an electronic learning system, the method comprising the steps of: allowing a selection of letters in succession; determining after a next letter has been selected whether the selected letters spell a reserved word; and producing, in response to a selection of the next letter and before selection of another letter, an audible signal representing a word starting with the next letter if the reserved word has been formed, otherwise producing a name of the next letter or a phoneme representing the next letter. 25. A teaching device, comprising: an arrangement of language symbols; and a processor configured to produce a signal representing a word starting with a last language symbol when a predetermined sequence of language symbols ending with the last language symbol has been selected from the arrangement of language symbols in response to the selection of the last language symbol and before selection of another language symbol. App. Br. 16 (Claims App’x, Claims 22, 25). Claim 28 is similar to claim 22 in that it is directed to a method for teaching linguistics comprising the step Appeal 2011-008381 Application 10/448,581 3 of “producing with processor a signal representing a word starting with a last language symbol.” Id. at 16-17 (Claims App’x, Claim 28). References The Examiner relies upon the following prior art references: Wood US 5,997,304 Dec. 7, 1999 Bray US 2002/0007371 Jan. 17, 2002 Rejections The Examiner makes the following rejections: I. Claims 25-27 are rejected under 35 U.S.C. § 102(b) as anticipated by Wood; and II. Claims 22 and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wood and Bray. SUMMARY OF DECISION We AFFIRM. We designate our affirmance as NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). OPINION Rejection I – Anticipation by Wood The Examiner found that Wood discloses each and every element of claims 25-27, except the claim element calling for a “signal produced representing a word starting with a last language symbol.” Ans. 3-4. The Examiner concluded, however, that “since the content of the audio data has no functional relationship with the invention, it fails to further limit the scope, and as such is interpreted to be non-functional descriptive material.” Id. at 4. The Examiner further explained that “[s]ince the signal produced is merely representative of the data that has been entered, the content of that Appeal 2011-008381 Application 10/448,581 4 signal is not functionally distinct from a signal representing any other series of inputs, and is therefore interpreted to be non-functional descriptive material.” Id. at 6. Appellants raise two arguments in response to Rejection I. First, Appellants assert that the Examiner erred by ignoring the “supposed non- functional language in determining the patenting of [the] claim[s].”1 App. Br. 6. Appellants contend that “[n]othing empowers the Examiner to simply ignore claim language which he considers ‘non-functional’ in order to reject claims in view of prior art.” Id. We agree with Appellants that the Examiner cannot simply ignore claim language, and must instead read the claim as a whole. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. We understand the rejection as reflecting the finding that although Wood does not disclose the specific signal configured by the processor of claim 25, the signal is not functionally distinct from a signal representing other series of inputs. See Ans. 6. Thus, rather than ignoring the signal, because the Examiner essentially found the signal not functionally distinct, the Examiner determined that it would not distinguish the invention from Wood in terms of patentability. See Ans. 3-4, 6. 1 Appellants do not separately argue the patentability of claims 25-27. App. Br. 6-8; Reply Br. 1-2. We select claim 25 as representative. Accordingly, dependent claims 26 and 27 stand or fall with claim 25. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011). Appeal 2011-008381 Application 10/448,581 5 Second, Appellants contend that the Examiner erred by determining that the “signal representing a word starting with a last language signal” clause of claim 25 is non-functional. App. Br. 7. Appellants point to MPEP § 2106.01, asserting that [s]imilar to the interrelationship in the MPEP example above, the processor in claim 25 requires a functional interrelationship between the predetermined sequence of language symbols ending with the last language symbol, the processor itself, and the signal produced by the processor representing a word starting with the last entered language symbol of a sequence [of] such symbols. Id. In particular, Appellants assert that the recited interrelationship “sets definite boundaries on the patent protection being sought.” Id. Claim 25 is directed to a teaching device comprising two elements: (1) an arrangement of language symbols, and (2) a processor configured to produce a signal when a predetermined sequence of language symbols has been selected from the arrangement of language symbols. The Specification explains that “[a] typical electronic reading system comprises one or more books each of which has one or more pages with at least one area of selectable content, non-volatile permanent or removable memory having stored therein data associated with the selectable content.” Id. at para. [0004] (emphasis added); see also id. at para. [0009] (“The memory has stored therein material associated with the selectable content.”); fig. 5 (elements 32 and 46). The Specification describes and illustrates, via Figure 1, a preferred method of practicing the invention. Id. at Figure 1; para. [0014]. With respect to the second element of claim 25, the Specification explains the following: Appeal 2011-008381 Application 10/448,581 6 Embedded in one or more of the above modes may be a bad (or reserved) words mode with the following functionality. If the allowing a selection of the selectable content step 130 allows the selection of individual letters in succession, the producing an output step 135 comprises the additional steps of determining after a next letter has been selected whether the selected letters spell a reserved word, and producing in response to a selection of the next letter an audible signal representing a word starting with the next letter if the reserved word has been formed, otherwise producing the name or phoneme of the next letter or realizing that the word is vulgar and not allowing the spelling or sounding of the last letter and replacing the last letter or sound with a prescribed phrase. Spec., para. [0059]. As the description of the invention above reflects, the signal produced by the processor in claim 25 is based on the selectable content data stored in memory 32 or removable memory 46. See, e.g., id. at para. [0043] (“retrieving from memory”); para. [0044] (“stored in memory 32 or the removable memory 46”); see also fig. 5 (elements 32 and 46). Thus, in light of the Specification, “a processor configured to produce a signal” includes a processor that is so configured by virtue of its attachment to a memory containing data, such as audio data, associated with that signal. Wood describes an “interactive phonic teaching device.” Wood, col. 1, l. 6. The device contains processing circuitry 28, which includes “a processor 26, random access memory (RAM), read-only memory, a random number generator, and a voice synthesizer for driving the speaker 31.” Id. at col. 3, ll. 56-59. The voice synthesizer “includes a memory for storing data representing pronunciations of language symbols and combinations of language symbols.” Id. at col. 3, ll. 64-67. The processors of claim 25 and Wood are each configured to produce a signal in response to the selection of a predetermined sequence of language Appeal 2011-008381 Application 10/448,581 7 symbols from the arrangement of language symbols. See Ans. 3 (citing Wood, col. 6, ll. 25-31, 38-42). The difference between claim 25 and Wood resides in the difference between the data content stored in each device’s memory. In claim 25, the data stored in memory includes a word starting with a last language symbol, whereas in Wood the data stored in memory includes a phoneme representing the last letter entered. When the predetermined sequence of language symbols is selected, the processors of claim 25 and Wood produce a signal representing a certain piece of data stored in memory—a word starting with a last language symbol (claim 25), and a phoneme representing the last letter entered (Wood). In Ex parte Curry, the Board set forth “[c]ommon situations involving nonfunctional descriptive material,” including data in a database. 84 USPQ2d 1272 (BPAI 2005) (informative). In particular, these common situations include: (1) “a computer-readable storage medium that differs from the prior art solely with respect to nonfunctional descriptive material, such as music or a literary work, encoded on the medium,” (2) “a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer),” and (3) “a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention.” Appeal 2011-008381 Application 10/448,581 8 Id.; see also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative) (finding that a broadcasted television program image was nonfunctional descriptive material), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Fed. Cir. R. 36). The facts presented here are analogous to the second common situation noted above in Curry because the teaching device of claim 25 (similar to a computer) differs from the teaching device of Wood solely with respect to the data represented by the signal produced by the processor, which signal/data does not alter how the machine functions (i.e., both devices retrieve the data from the memory in response to the selection of a predetermined sequence of language symbols). Further, the facts presented here are unlike the facts of In re Lowry, where Lowry’s data structures performed a function and provided increased efficiency in computer operations. In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994). Accordingly, because the data represented by the signal is nonfunctional descriptive material it does not distinguish claim 25 from Wood in terms of patentability.2 See In re Gulack, 703 F.2d at 1385. We thus sustain Rejection I. 2 We also note that the example referred to by Appellants in MPEP § 2106.01 is described as a situation in which “[t]he presence of the claimed nonfunctional descriptive material is not necessarily determinative of nonstatutory subject matter” and concludes that based on the example, “a claim to that computer is statutory subject matter because it implements a statutory process.” MPEP § 2106.01 (II). The issue before us, however, is not whether the claims are directed to statutory subject matter under 35 U.S.C. § 101, but rather whether nonfunctional descriptive material included within the claims is sufficient to distinguish the claimed invention over the prior art. Appeal 2011-008381 Application 10/448,581 9 We designate our affirmance of the rejection, however, as a NEW GROUND OF REJECTION so as to provide Appellants with a full and fair opportunity to respond to the thrust of the rejection because the reasoning upon which we rely to sustain the rejection of claims 25-27 under 35 U.S.C. § 102(b) differs somewhat from the reasoning articulated by the Examiner. Rejection II – Obviousness over Wood and Bray The Examiner concluded that the combination of Wood and Bray would have rendered the subject matter of claims 22 and 28 obvious to one of ordinary skill in the art at the time of invention. Ans. 4-6. The Examiner found that Wood discloses the elements of the claims except “[t]he audible signal representing a word starting with the next letter.” Id. at 5. The Examiner found that Bray discloses a language filter that checks for undesirable words and substitutes the undesirable word for sanitized audio content. Id. The Examiner concluded that it would have been obvious to one of ordinary skill in the art at the time of invention to add “the language filtering system of Bray to the invention of Wood” because the Examiner found that the combination would “avoid offensive language being vocalized since the invention is intended for use by children learners.” Id. (citing Wood, col. 1, ll. 34-40). The Examiner, however, recognized that Bray “does not expressly teach that the word replacing the undesirable word start[s] with the last character entered,” but determined that it would have been an obvious matter of design choice to a person of ordinary skill in the art to replace the reserved word with a word starting with the last letter entered because Applicant has not disclosed that replacing the reserved word with a word starting with the last letter entered provides an advantage, is used for a particular purpose, or solves a stated Appeal 2011-008381 Application 10/448,581 10 problem other than that solved by Bray, i.e. preventing the reserved word from being vocalized. Id. at 5-6. The Examiner further determined that one of ordinary skill in the art “would have expected Bray’s invention,[3] and applicant’s invention, to perform equally well with either the substitution taught by Bray or the claimed substitution because both substitutions would perform the same function of preventing a user from being exposed to objectionable material equally well.” Id. at 6. The Examiner thus concluded that “it would have been prima facie obvious to modify Bray to obtain the invention as specified in claims 22 and 28 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Bray.” Id. Appellants raise several arguments in response to this rejection, including that the Examiner erred by concluding that the claim element “producing . . . an audible signal representing a word starting with the next letter if the reserved word has been formed” would have been obvious as a matter of design choice. App. Br. 12; Reply Br. 4-5. We agree with the Examiner that producing an audible signal representing a word starting with the next letter if a reserved word has been formed (as called for by claim 22) or a signal representing a word starting with a last language symbol (as called for by claim 28), would have been obvious to one of ordinary skill in the art as a matter of design choice in light of Bray’s disclosure of substituting content in such circumstance. See Ans. 5. The facts presented with respect to method claims 22 and 28 are 3 The Examiner acknowledges that the rejection includes a typographical error and should refer to “Wood’s invention” rather than “Bray’s invention” in this instance. Ans. 7. Appeal 2011-008381 Application 10/448,581 11 analogous to the third common situation noted in Ex parte Curry, 84 USPQ2d 1276. In other words, the processes of claims 22 and 28 differ from the prior art teachings of the combination of Wood and Bray only with respect to nonfunctional descriptive material (a signal representing data stored in memory) that does not alter how the process steps are to be performed to achieve the utility of the invention. While Appellants contend that their invention “provides an instructional advantage not provided or intended to be provided to the audience in Bray” (App. Br. 13), Appellants do not explain what that supposed advantage is or how it is achieved by substituting a word starting with the last language symbol entered for a reserved word. See Reply Br. 5. We have considered Appellants’ other arguments (see App. Br. 9-15; Reply Br. 2-5), but do not find them persuasive for the reasons explained in the Examiner’s Response to Argument. See Ans. 7-8. We designate our affirmance of the rejection, however, as a NEW GROUND OF REJECTION so as to provide Appellants with a full and fair opportunity to respond to the thrust of the rejection because the reasoning upon which we rely to sustain the rejection of claims 22 and 28 under 35 U.S.C. § 103(a) differs somewhat from the reasoning articulated by the Examiner. DECISION We AFFIRM the Examiner’s decision rejecting claims 22 and 25-28 and designate our affirmance as NEW GROUNDS OF REJECTION. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2011-008381 Application 10/448,581 12 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation