Ex Parte Liao et al

Patent Trial and Appeal Board

Jan 19, 2017

13088464 (P.T.A.B. Jan. 19, 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.
13/088,464 04/18/2011 Ting-Yee Liao 098888-9187 8505
23524 7590 01/23/2017
FOT FY Rr T ARDNFR T T P
EXAMINER
3000 K STREET N.W. BYCER, ERIC J
SUITE 600
WASHINGTON, DC 20007-5109 ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
01/23/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TING-YEE LIAO, TIMOTHY L. NICHOLS, and
KENNETH ALAN PARULSKI
Appeal 2015-0050331
Application 13/088,464
Technology Center 2100
Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—14 and 16—22.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellants identify Intellectual Ventures Fund 83 LLC as the real party in
interest. (App. Br. 2.)
2 Claim 15 has been canceled. (App. Br. 22 (Claims App’x).)
Appeal 2015-005033
Application 13/088,464
Introduction
According to Appellants, the claimed invention “pertains to the field
of digital media frames, and more particularly to a method for providing user
feedback for shared digital images provided over a network.” (Spec. 1:12—
14.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A device comprising:
a processing system comprising:
memory configured to store processor-executable
instructions; and
a processor coupled to the memory, wherein the
processor is configured to execute the processor-executable
instructions to:
receive a digital media asset and associated
metadata, wherein the digital media asset is provided by a
particular individual, and wherein the metadata includes an
association of the received digital media asset with the particular
individual;
cause storage of the received digital media
asset and associated metadata;
determine the particular individual who
provided the digital media asset;
determine an individualized set of feedback
message choices responsive to the determined particular
individual who provided the digital media asset, wherein the
feedback message choices indicate a plurality of reactions to the
digital media asset, and wherein the determining the
individualized set of feedback message choices comprises
determining a group of individuals that includes the individual
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who provided the digital media asset and selecting a set of
feedback message choices that corresponds to the group of
individuals',
cause display of the individualized set of
feedback message choices;
receive an input via an input interface to
select one of the individualized set of feedback message choices;
and
provide an indication of the selected
feedback message choice to the determined particular individual
who provided the digital media asset, or to an account associated
with the determined particular individual who provided the
digital media asset.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Walker et al.
Marlow et al.
Pascal et al.
Bennett et al.
US 2006/0170669 Al
US 2009/0177744 Al
US 2010/0159883 Al
US 2011/0295878 Al
Aug. 3, 2006
July 9, 2009
June 24, 2010
Dec. 1,2011
REJECTIONS
Claims 1—14, 16—18, and 20-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Walker, Pascal, and Bennett. (Final
Act. 4—17.)
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker, Pascal, Bennett, and Marlow. (Final Act. 17—18.)
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Application 13/088,464
ISSUE
Whether the Examiner erred in finding the combination of Walker,
Pascal, and Bennett teaches or suggests “wherein the determining the
individualized set of feedback message choices comprises determining a
group of individuals that includes the individual who provided the digital
media asset and selecting a set of feedback message choices that corresponds
to the group of individuals,” as recited in independent claim 1 and
commensurately recited in independent claims 21 and 22.
ANALYSIS
Appellants argue the Examiner’s findings are in error, asserting first
that the Examiner relies on paragraphs 91 and 92 of Walker as teaching the
disputed limitation. (App. Br. 12—13.) We disagree with Appellants’
characterization of the Examiner’s findings. The portion of the Final Action
cited by Appellants pertains to dependent claim 6, and prefaces the rejection
of claim 6 by noting that “Walker, as modified by Pascal and Bennett,
teaches the device of claim 1 . . . .” (Final Act. 11 (emphasis added).) The
Examiner, therefore, does not rely on Walker, alone, as teaching the disputed
limitation of claim 1; rather, the Examiner combines Walker with Pascal and
Bennett. (Final Act. 6—9; Ans. 19—23.) It is well established that one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Appellants argue a finding the Examiner never made. This form of
argument is unavailing to show Examiner error.
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Appellants then argue Pascal and Bennett “fail to cure the deficiencies
of Walker.” (App. Br. 14.) In particular, Appellants argue “Pascal fails to
provide any indication that ‘the determining the individualized set of
feedback message choices comprises determining a group of individuals that
includes the individual who provided the digital media asset and selecting a
set of feedback message choices that corresponds to the group of
individuals,’ as claimed.” (App. Br. 14.) Rather, according to Appellants,
Pascal is directed only to “automatically completing or filling a text message
(or other similar message).” (App. Br. 14—15 (emphasis omitted).) We
disagree. As the Examiner finds, and we agree:
As indicated, Walker fails to expressly disclose determining an
individualized set of feedback message choices responsive to the
sender, but Pascal provides the necessary teachings (see Final
Rejection, pages 6-7). Specifically, Pascal teaches a messaging
management system that analyzes the content of received
messages in a conversation history between two users, and based
on that analysis, provides the user with suggested content (see
Final Rejection, pages 6-7). Appellants focus on the
autocompletion teachings of Pascal, but fail to acknowledge the
teachings of Pascal which discuss how Pascal forecasts text input
to be entered, as taught in paragraph 0050-0051. In other words,
Pascal teaches providing message prompts or suggestions to a
user when composing a message based on current context and
analysis of historical content, which the user can choose or
ignore. This teaches the element of providing a set of feedback
message choices to the user responsive to the determined
particular individual who provided the digital media asset.
(Ans. 20.)
As the Examiner also finds, and we agree, Pascal teaches considering
“various factors” in choosing content to suggest, which include grouping
individuals into categories: “In addition to the content of the received
message, other factors that can be considered by the analysis component 502
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include, but are not limited to, sender’s identity, relationship to a user, age,
occupation, race, religion, gender or the like.” (Pascal 1 55; see also Final
Act. 6.) As the Examiner finds, and we agree, the “group of individuals” can
include the sender and the recipient of the message (Ans. 22), as well as
other groups based on “age, occupation, race, religion, gender or the like” as
taught by Pascal. In addition, as the Examiner also finds, Walker teaches
categorizing users into groups, such as “Adults, Children, Family.” (Ans. 21
(citing Walker H 91, 92).) Thus, we are not persuaded of error in the
Examiner’s finding the combination of Walker and Pascal teaches suggesting
“feedback choices” that “corresponds to the group of individuals” that
includes “the individual who provided the digital media asset.”
Appellants also argue the Examiner erred in relying “on Bennett for
its alleged disclosure of ‘feedback choices [that] indicate a plurality of
reactions to the digital media asset.’” (App. Br. 15.) In particular,
Appellants agree Bennett discloses “inferring] what a user would want to
say if he or she were able to type a message, and may make use of context
information to do so,” but argue “the Examiner has not indicated that
Bennett discloses” the disputed limitation addressed above. (Id.) As we
noted above in addressing this limitation, however, the Examiner relies on
the combination of Walker and Pascal as teaching this limitation. The
Examiner adds Bennett to this combination to teach a “plurality of reactions
to the received digital media asset.” As the Examiner summarizes in the
Answer:
Therefore, as indicated in the Advisory Action, because
Walker teaches storing information related to determining the
individual user (see Walker, paragraphs 0047, 0055-0058, 0060-
0061, and 0072; see also Walker, Fig. 4A), Pascal teaches
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determining feedback message choices responsive to the
determined individual user (see Pascal, paragraphs 0024, 0032-
0033, 0044, 0051-0051, 0055-0057, and 0061-0062), and
Bennett teaches that the feedback message choices represent a
plurality of reactions to the received digital media asset (see
Bennett, paragraphs 0016, 0017, 0019, 0027, and 0038-0041),
the combination teaches the claimed invention.
(Ans. 21 (emphasis added).)
Because the Examiner’s rejection is premised on a combination of
references, as noted, Appellants’ piecemeal challenges to individual
references are not persuasive of Examiner error.
Appellants also argue error in the Examiner’s combination of Walker,
Pascal, and Bennett. (App. Br. 16—17.) Appellants first argue “nowhere do
any of the references provide any indication that feedback message choices
may be selected based on a group (particularly a group associated with the
individual who provided a digital media asset).” (App. Br. 16.) As noted
above, we find this argument unpersuasive as premised on an incomplete
reading of the references, which disregards portions of at least the Pascal
reference as relied on by the Examiner.
Appellants next argue the Examiner erred in finding the ordinarily
skilled artisan would be motivated to combine Walker with Pascal and/or
Bennett because, according to Appellants, “Walker simply displays pictures”
and “does not utilize such text messages or other similar messages,” and thus
“the alleged combination of Walker and Pascal would not even lead to a
sensical or workable system.” (App. Br. 16.) We are not persuaded of error
by this argument, which relies at least in part on the premise that the Walker
and Pascal references cannot be physically combined. “[I]t is not necessary
that the inventions of the references be physically combinable to render
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obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (citing Orthopedic Equip. Co. Inc. v. United States, 702
F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA
1968)); see also In reNievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”). “The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference .... 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 at 425 (citations omitted).
We also disagree with Appellants’ premise that combining the
relevant teachings of the references would not lead to “a sensical or
workable system.” (App. Br. 16.) In that regard, we note the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Rather, as the
Supreme Court has explained, the skilled artisan would “be able to fit the
teachings of multiple patents together like pieces of a puzzle” because the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420—21 (2007). Here, Appellants
have not demonstrated that the Examiner’s proffered combination would
have been “uniquely challenging or difficult for one of ordinary skill in the
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
We further note Appellants’ argument characterizing Walker as
teaching merely a digital picture frame that cannot send and receive
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messages ignores the basis of the Examiner’s reliance on Walker. The
Examiner relies on Walker primarily as teaching receiving a digital media
asset with associated metadata (such as a photograph), storing that asset, and
determining who provided the asset. (Final Act. 4—6.) It is no stretch of the
references, however, to combine these teachings of Walker with Pascal, as
the Examiner has done, given that Pascal contains overlapping teachings of
these same features. In particular, Pascal teaches sending and receiving
photographs electronically (such as via Multimedia Messaging Service
(MMS)), with the ability to respond with feedback (e.g., text message)
wherein the content of the feedback is suggested by the system based on
factors such as the “messages received,” “target recipient identity,” and
“context of the parties,” as well as based on “sender’s identity, relationship
to a user, age, occupation, race, religion, gender or the like.” (Pascal H 3, 8,
55.)
Thus, we are not persuaded by Appellants’ arguments the Examiner
has failed to establish the requisite motivation to combine the cited
references. (App. Br. 15—17; Reply Br. 10—12.) We recognize the Examiner
must articulate “reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). However, the Examiner’s reasoning need not appear in, or be
suggested by, one or more of the references on which the Examiner relies.
Instead, a reason to combine teachings from the prior art “may be found in
explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved.” IVMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed.
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Cir. 1998)). “Under the correct [obviousness] analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
In the instant appeal, the Examiner has provided a rationale
supporting motivation by a person of ordinary skill in the art to achieve the
claimed subject matter. (Final Act. 2—3; Ans. 14—15.) Specifically, the
Examiner finds:
Walker is directly related to transmitting and receiving content
via the digital picture frame, and both Pascal and Bennett relate
directly to the aspects of responding to a received
communication or content. Therefore, the teachings of this
combination would have suggested to one of ordinary skill, at the
time of invention, to modify Walker with the teachings of Pascal
and Bennett to allow a person using an internet-connected digital
picture frame, connected to the internet for the express purpose
of allowing bidirectional communication between users, to
compose feedback messages using contextually related message
choices to express a reaction to the received image.
(Ans. 24.)
Appellants have not provided persuasive evidence or line of reasoning
explaining why such rationale is erroneous or why a person of ordinary skill
in the art would not have reached the conclusions reached by the Examiner.
See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“[T]he proper question is
whether the ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.”). At most, Appellants have
presented arguments that, as discussed above, are premised on an overly
narrow and factually incorrect reading of the cited references.
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Consequently, we are not persuaded that the Examiner failed to articulate a
sufficient rationale for combining the teachings of the cited references.
For the foregoing reasons, we are not persuaded of error in the
Examiner 35 U.S.C. § 103(a) rejection of independent claim over the
combination of Walker, Pascal, and Bennett, or of independent claims 21 and
22, which are not argued separately. We are further not persuaded of error in
the Examiner’s rejection of dependent claims 2—14, 16—18, and 20, which
are also not argued separately.
With regard to claim 19, which depends (indirectly) from claim 1 and
which stands rejected over the combination of Walker, Pascal, Bennet and an
additional reference (Marlow), Appellants present only a cursory challenge.
(App. Br. 17—18.) Aside from reiterating the grounds argued with regard to
claim 1, Appellants state “Marlow fails to cure the deficiencies of Walker,
Pascal, and Bennett.” (App. Br. 17.) As noted above, however, we do not
find the combination of Walker, Pascal, and Bennett to be deficient in
supporting the Examiner’s rejection of claim 1. Without independent
argument, Appellants’ contentions regarding claim 19 fail to constitute a
separate issue of patentability. We, therefore, are not persuaded the
Examiner erred in rejecting this claim. See 37 C.F.R. § 41.37(c)(l)(iv); In re
Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“We conclude that the Board
has reasonably interpreted Rule 41.37 to require applicants to articulate more
substantive arguments if they wish for individual claims to be treated
separately.”). We, therefore, also sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of dependent claim 19.
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DECISION
For the above reasons, the Examiner’s decision to reject claims 1—14
and 16—22 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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