Ex Parte Kelley et al

Patent Trials and Appeals Board

Sep 13, 2013

10448581 - (D) (P.T.A.B. Sep. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIRIAM KELLEY, SCOTT H. MCILVAIN, and
MATTHEW K. BROWN
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Appeal 2011-008381
Application 10/448,581
Technology Center 3700
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Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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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
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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
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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).
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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:
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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
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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.”
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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.
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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
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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.
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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.”
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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)

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