Ex Parte Koormamtharayil

Patent Trial and Appeal Board

Dec 12, 2016

12142543 (P.T.A.B. Dec. 12, 2016)

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.
12/142,543 06/19/2008 Arun Koormamtharayil 58083/356020 (B748) 7570
72058 7590 12/14/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
HASTY, NICHOLAS
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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):
ipefiling @ kilpatrickstockton .com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARUN KOORMAMTHARAYIL
Appeal 2015-007594
Application 12/142,543
Technology Center 2100
Before JASON V. MORGAN, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 4—13, 16—19, and 22—28, which are all of the pending
claims. See App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
The Application is directed to “systems and methods for attribute
indication and accessibility in electronic documents. Embodiments
disclosed allow a user to identify characteristics present in a document and
Appeal 2015-007594
Application 12/142,543
to use those indicators associated with those identified characteristics to
quickly access parts of the document that are associated with the
characteristic.” Spec. 114. Claims 1, 11, and 17 are independent. Claim 1
is reproduced below for reference (with emphases added):
1. A computer-implemented method, comprising:
identifying a plurality of characteristics associated with a
work, the work comprising a plurality of scenes;
responsive to identifying the plurality of characteristics,
for each of the plurality of characteristics, associating a different
indicator with the respective characteristic and with scenes
within the work having the respective characteristic;
inserting into the work one or more metadata tags for the
different indicators, the metadata tags identifying locations of the
characteristics within the work;
receiving a selection of a first indicator from the different
indicators', and
responsive to receiving the selection of the first indicator,
outputting scenes associated with the first indicator based on the
one or more metadata tags.
References and Rejections
Claims 1, 4—13, 16—19, and 22—27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over “Movie Outline 3.0 - Key Feature,”
archived at archive.org, Oct. 17, 2007, retrieved at http://web.archive.org/
web/2007101705011 l/http://www.movieoutline.com/features.html (“Movie
Outline”) and “Mindola Supemotecard,” archived at archive.org, Dec. 13,
2007, retrieved at https://web.archive.org/web/20071213155435/
http://www.mindola.com/snc/index.html (“Mindola”). Final Act. 3.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Movie Outline, Mindola Software, and Ma (US 2006/
0064734 Al; Mar. 23, 2006). Final Act. 8.
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Application 12/142,543
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). We adopt the Examiner’s
findings and conclusions (see Final Act. 3—9; Ans. 8—9) as our own, and we
add the following primarily for emphasis.
A. Independent Claim 1
Appellant argues the Examiner erred in rejecting independent claim 1,
because the cited references fail to teach or suggest multiple recited
limitations: “First. . . neither Movie Outline nor Mindola discusses
‘inserting into the work one or more metadata tags for the indicators, the
metadata tags identifying locations of the characteristics within the work’”
(App. Br. 6); “Secondly, Movie Outline in view of Mindola does not
disclose or make obvious ‘receiving a selection of a first indicator from the
different indicators’” {id. at 7); and “Finally, Movie Outline in view of
Mindola does not disclose or make obvious ‘responsive to receiving the
selection of the first indicator, outputting scenes associated with the first
indicator based on the one or more metadata tags’” {id.).
We are not persuaded the Examiner erred. During examination,
claims are given “the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
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Application 12/142,543
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
First, Appellant’s Specification describes a “characteristic” as
“correspond[ing] to a property within a scene or script” for a theatrical or
dramatic work, and describes an “indicator” as “data that can be used to
identify the presence of a characteristic . . . [such as] data that is inserted into
an electronic document.” Spec. 23—24; see also id. 122. Appellant’s
Specification further discloses different examples of indicators, including an
embodiment in which “the electronic document editor 231 generates
metadata that is inserted into an electronic document”1 to identify the
presence of a characteristic, id. 124.
Similar to the Specification, Mindola teaches that a writer can
“efficiently define and track characters, plots, and references [of a script]”
(Mindola page 1) by assigning script cards to a category, or “us[ing] the flag
feature to mark cards that need adjustments and add notes” (Mindola page
2).2 As Mindola teaches linking and organizing various aspects of the
writer’s work, we are not persuaded by Appellant’s assertion that Mindola
teaches only graphical objects rather than the recited metadata. See App. Br.
6; Reply Br. Section I; see also Mindola Screen_deck, page 3 (showing
keywords identifying various characters within the work, including first,
second, and third little pigs, wolf, and mother). Thus, Appellant has not
persuaded us the claimed limitation (“inserting into the work one or more
metadata tags for the indicators, the metadata tags identifying locations of
1 We note this is the sole mention of the term “metadata” in the
Specification.
2 See, e.g., Mindola Figs. 1—3 (depicting a work—“The Three Little Pigs”—
using notecards, categories, flags, outline views, etc.).
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Application 12/142,543
the characteristics within the work”) is not suggested by the script flagging
and categorizing method of Mindola. See Ans. 2.
Secondly, we agree with the Examiner that the combination of Movie
Outline and Mindola teaches or suggests “receiving a selection of a first
indicator from the different indicators” as claimed, because Movie Outline
teaches using a dialogue spotlight tool to “[i]solate a specific character’s
dialogue throughout [the] screenplay” (Movie Outline section 9) and
Mindola teaches using “a few clicks [to] review or print all cards that
reference a particular source” (Mindola page 1). Movie Outline further
teaches receiving a selection, as claimed, because Movie Outline discloses
entering a character name or word to be tracked and highlighted within the
script. See Movie Outline section 11; cf. Spec. 125 (“In still a further
embodiment, a user may select a desired indicator from a drop-down menu
or the user may type in a description of the indicator, such as a character’s
name”). Thus, we are not persuaded the Examiner erred in finding the
combined teachings of Mindola and Movie Outline teach or suggest the
disputed limitations. See Ans. 3; see also App. Br. 16; Reply Br. Section II.
Finally, we agree with the Examiner that the cited references teach or
suggest the claim limitation “responsive to receiving the selection of the first
indicator, outputting scenes associated with the first indicator based on the
one or more metadata tags.” See Final Act. 3^4. Appellant’s disclosure
provides that “the system 200 may output scenes associated with the selected
indicator as shown in Figure 8, . . . [in which] application 100 has generated
a report view 810 based at least in part on a selection of an indicator.” Spec.
139. To output the report view, the “user may then save the report, print the
report, email the report, or take other actions with the report.” Id. Similarly,
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Application 12/142,543
Movie Outline creates a report of a “specific character’s dialog” (Movie
Outline, section 9) and Mindola teaches an “assortment of export and print
options” to output selected cards (e.g., a report). See Movie Outline, section
9; Mindola page 1; see also Final Act. 9. Based on the record before us, we
are not persuaded the claimed limitation “represented an unobvious step
over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
We do not find the Examiner erred in finding the disputed limitations
of claim 1 to be obvious in view of the combination of Movie Outline and
Mindola. Accordingly, we sustain the rejection of independent claim 1, and
claims 4—13, 16—19, and 22—27, which are not separately argued. See App.
Br. 8.
B. Dependent Claim 28
Claim 28 depends from claim 1, and further recites “wherein the
metadata tags comprise XML tags.”3 Appellant argues the Examiner erred
in rejecting dependent claim 28 because “Ma is not directed to the same field
as the present application nor to Movie Outline or Mindola” (App. Br. 9),
and “even if Ma were properly relied upon, it does not cure the. . .
deficiencies of Movie Outline in view of Mindola” (App. Br. 10).
Particularly, Appellant contends that although “Ma generally discloses XML
tags, no part of Ma suggests” the specific limitations of claim 1 wherein the
recited tags comprise XML tags. Id.
3 We note the Specification describes using XML tags as a separate
embodiment from the embodiment disclosing the insertion of metadata. See
Spec. 124.
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Application 12/142,543
We are not persuaded the Examiner erred in relying upon Ma in the
rejection of dependent claim 28. First, we find Ma to be analogous prior art,
at least because Ma is reasonably pertinent to the problem of organizing and
correlating data using metadata. See Spec. Tflf 1—2; Ma 19, 22; see also In
re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).
Second, Appellant’s contention that Ma does not teach or suggest the
limitations of claim 1, as modified by claim 28, also does not persuade us
the rejection was in error. See App. Br. 10. The Examiner relies on Movie
Outline and Mindola for the limitations of claim 1, and further finds a person
of ordinary skill in the art would modify this combination with the teachings
of Ma to perform the method of claim 28 and obtain the benefits of using
XMF code. See Ans. 3; see also Final Act. 8 (citing Ma Tflf 19—20).
Appellant argues each reference separately, but does not persuade us the
Examiner erred in relying on the combination of cited references. “The test
for obviousness is not. . . that the claimed invention must be expressly
suggested in any one or all of the references. 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); see
also KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Movie Outline, Mindola, and Ma teaches or suggests the
limitations of dependent claim 28.
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Application 12/142,543
DECISION
The Examiner’s rejection of claims 1, 4—13, 16—19, and 22—28 is
affirmed.
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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