Ex Parte McCurdy et al

Patent Trial and Appeal Board

May 6, 2016

12237257 (P.T.A.B. May. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/237,257 09/24/2008
26379 7590 05/10/2016
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
Kevin McCurdy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
363864-991111 9458
EXAMINER
ABDUL-ALI, OMAR R
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
05/10/2016 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):
PatentDocketing US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN McCURDY, GREG TATEM, and HOWARD FIELD
Appeal2014-006212
Application 12/237,257
Technology Center 2100
Before JOHNNY A. KUMAR, CATHERINE SHIANG,
and MATTHEW J. McNEILL, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-14, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to a system and method for organizing
pieces of content into a story so as to generate a bound storybook. The
layout of images is presented to the user via a story flow interface (see
1 According to Appellants, the real party in interest is Picaboo Inc. (App. Br.
3).
Appeal2014-006212
Application 12/237,257
Spec. 1). Claim 1 is illustrative of the invention and reads as follows (the
contested limitations are italicized):
1. A content system, comprising:
a computer based content system;
a story flow unit that is part of the computer based
content system;
the story flow unit that allows a user to organize a set of
content into an album having one or more pages with each page
having one or more media wells for one or more pieces of
content; and
the story flow unit further comprises a content unit that
allows the user to place a piece of content into a media well on
a page and a page unit that allows the user to place and
manipulate a position of a page in the album.
The Examiner's Rejections
The Examiner rejected claims 1, 3-5, 7, 8, 10, and 12-14 under
35 U.S.C. § 103(a) over Kings (US 2007/0019932 Al; Jan. 25, 2007), Tsue
(US 7,675,635 B2; Mar. 9, 2010), and Knowlton (US 5,283,864; Feb. 1,
1994).
The Examiner further added Moore (US 2007/0124325 Al; May 31,
2007) to reject claims 2 and 9; and Szuszczewicz (US 7 ,689 ,909 B 1; Mar.
30, 2010) to reject claims 6 and 11.
ISSUES & ANALYSIS
In rejecting representative claim 1, the Examiner relied on King as
disclosing the computer-based content system and story flow unit (Final Act.
2), and organizing a set of content into an album (Final Act. 3). The
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Application 12/237,257
Examiner further relied on Tsue to teach insertion of content into media
wells (Final Act. 3), and Knowlton to teach placing and manipulating a
position of a page in the album (Final Act. 3).
Appellants dispute whether the cited art teaches the following
limitations: (1) "a page unit that allows the user to place and manipulate a
position of a page in the album," as recited in claim 1 (Reply Br. 4--5, 8;
App. Br. 9--10); and (2) "an album renderer unit that generates a bound book
album assembled using the story flow unit," as recited in claim 3 (Reply Br.
9; App. Br. 10).
Issue 1 - Did the Examiner err in finding King, Tsue and
Knowlton teach "a page unit that allows the user to place and
manipulate a position of a page in the album, " as recited in
independent claim 1, or "manually manipulating the order of
the pages spreads in the album to product a photo album" as
recited in independent claim 8? (hereinafter "first disputed
limitations'')
We select claims 1 and 8 as representative of the group of claims
comprising claims 1, 2, 4--9, and 11-14 as Appellants have not argued any
of the other claims in this group with particularity (see App. Br. 8-9, 11). 37
C.F.R. § 41.37(c )(1 )(iv).
The Examiner relies on Knowlton to teach the first disputed
limitations (Final Act. 3) and finds that Knowlton teaches reordering pages
in a graphical book (id. (citing Knowlton col. 12, 11. 47---64)). The Examiner
further finds Knowlton teaches leaves of a book representation may be
arranged page by page by the user's direct manipulation (Ans. 11 (citing
Knowlton col. 12, 11.21-26)). Finally, the Examiner finds the combination
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Application 12/237,257
of King with Tsue and Knowlton would have been obvious to one of
ordinary skill in the art because it would enable organizing content within a
user-generated bound book, and because all of the references are from the
same field of endeavor involving the generation and editing of photo albums
(Ans. 11-12).
Appellants admit that Knowlton discloses that the pages can be
ordered by the user, but state that this is done automatically by a program,
and the ordering only occurs before content has been inserted into the pages
(App. Br. 7; Reply Br. 8; Knowlton col. 12, 11. 21-50). Appellants contend
that the claim requires manual manipulation of the page spreads that already
have pieces of content placed within, and that Knowlton does not disclose or
suggest this type of ordering (Reply Br. 8).
We agree with the Examiner that Knowlton teaches manual
manipulation of page spreads, because Knowlton explicitly states, "the
ieaves of the book representation may be arranged page by page by the
user's direct manipulation," "the user orders and arranges the data units in a
pile or stack as desired," and "addition to (or deletion from) the book
representation 35 involves ... selection of destination position in the book
representation 35" (col. 12, 11. 24--39). In addition, Knowlton teaches a
user-specified ordering such as numerical, alphabetical, by date, or by
author, which would also meet the claim limitations of manually
manipulating the order of the page spreads in the album through the
manually-directed manipulation of groups of pages (col. 12, 11. 55-59).
Regarding Appellants' contention that the claim requires manual
manipulation of the page spreads that already have pieces of content placed
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Application 12/237,257
within, such arguments are not commensurate with the scope of the claims,
because the order of steps in a claim is not presumed to matter:
Also, although a method claim necessarily recites the steps of
the method in a particular order, as a general rule the claim is
not limited to performance of the steps in the order recited,
unless the claim explicitly or implicitly requires a specific
order. See Interactive Gift Express, Inc. v. Compuserve Inc.,
256 F.3d 1323, 1342--43 (Fed. Cir. 2001). The specification or
prosecution history may also require a narrower, order-specific
construction of a method claim in some cases. Id.
Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345
(Fed. Cir. 2008).
We find that neither claim 1 nor claim 8 explicitly or implicitly
specifies an order for carrying out the claim limitations. Nor does
Specification explicitly state that the page spreads already have pieces of
content when this action is performed. Page 4 lines 3-5 of Appellants'
specification describes a story flow system that allows a user to rearrange
page spreads (two facing pages in the bound book) or the pages within a
page spread to a different location or to a different page spread.. Elsewhere,
page 8 lines 5-7 of the specification states that selected content may be
displayed as thumbnails on a graphical representation of a page spread in a
photo album. However, these passages do not specify that the page spreads
already have the thumbnails inserted as content, nor do they state that
content must be inserted before the order is changed.
For these reasons, we agree with the Examiner that Knowlton teaches
the first disputed limitations.
We also find the Examiner has not erred by combining the cited
references under § 103. The Examiner has provided a reason showing
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Application 12/237,257
motivation by a person of ordinary skill in the art to achieve the claimed
subject matter, i.e., to organize media content within a user-generated bound
book (Ans. 14). Appellants have not demonstrated why that reason is
erroneous or why a person of ordinary skill in the art would not have been
capable of combining the references in the manner proposed by the
Examiner. See DyStar Textilfarben GmbH & Co. Deutschland KG v. CH
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that in certain
situations "the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the prior art
references").
Issue 2 - Did the Examiner err in finding King, Tsue and
Knowlton teach "an album renderer unit that generates a
bound book album assembled using the story flow unit, " as
recited in dependent claim 3? (hereinafter "second disputed
l . . . ") _ zmztatzons /
We select claim 3 as representative of the group of claims comprising
claims 3 and 10 as Appellants have not argued any of the other claims in this
group with particularity (see App. Br. 10-11 ).
The Examiner finds Knowlton teaches an album renderer unit that
generates the album assembled using the story flow unit (Final Act. 6 (citing
Knowlton Fig. 2C) ), and further finds that Knowlton teaches a generated
representation of a bound book with three bindings (Ans. 14 (citing
Knowlton Figures 2A-2I) ).
Appellants argue that the word "generate" appears in only one place
in Knowlton that has nothing to do with generating a bound book and the
word "bound" does not appear at all in Knowlton, therefore, Knowlton does
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Application 12/237,257
not disclose or suggest generating a bound book (App. Br. 11 ). Appellants
also argue that Knowlton only discloses a book representation (Reply Br. 9;
Knowlton col. 7 line 68 - col. 8 line 9).
Firstly, we note that a reference does not have to satisfy an ipsissimis
verbis test to disclose a claimed element. See In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). Pages bound together into a digital representation of
a book are sufficient to show that a meaning of bound is intended and that
the claim limitations of a "bound book album" are met. Secondly, we find
that Appellants' arguments are not commensurate with the scope of the
claims. Claim 3 does not explicitly state require the bound book album
generated using the story flow unit is printed out.
Hence, we agree with the Examiner in finding that Knowlton's figures
2B-2I show representations of multiple book bindings in the form of
binding rings that figuratively hold the electronic pages together, and find
that Knowiton expiicitiy states in column 1 iines 55-57 that a book is
mimicked in screen views. We further find that Tsue 's column 2 lines 3-6
teaches the generation of a photo album, and King's paragraph 3 teaches a
digital photo album producing apparatus. Hence, we find any one of King,
Tsue, or Knowlton teaches the second disputed limitations.
CONCLUSION
As discussed herein, Appellants' arguments have not persuaded us
that the Examiner erred in finding the combination of King, Tsue, and
Knowlton teaches or suggests the disputed limitations of claims 1, 3, and 8
as well as the remaining claims, which are not argued separately. Therefore,
we sustain the 35 U.S.C. § 103(a) rejections of claims 1-14.
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DECISION
The decision of the Examiner to reject claims 1-14 is affirmed2.
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
2 In the event of further prosecution, we direct the Examiner's attention to
the question of \x1hether the claims are patent-eligible under 35 U.S.C. § 101
in light of the preliminary examination guidance on patent eligible subject
matter. See 2014 Interim Guidance on Patent Subject Matter Eligibility,
US PTO (Dec. 16, 2014 ),
http://www.uspto.gov/patents/law/exam/jan2 lforum_uspto.pdf. A question
arises as to whether a person would also be capable of performing the acts of
the claimed method or functions as mental steps, or with the aid of pen and
paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalkv. Benson [409 U.S. 63 (1972)]."). Our
reviewing court further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
We leave further consideration of these § 101 issues to the Examiner.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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