Ex Parte Shin et al

Patent Trial and Appeal Board

Jan 29, 2019

13551404 (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/551,404 07/17/2012 Young J ea Shin
156204 7590 01/31/2019
Duane Morris-CHICAGO IP
190 S. LaSalle Street
Ste. 3700
Chicago, IL 60603
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.
G7516-00006 8105
EXAMINER
SENSENIG, SHAUN D
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
IP.Inbox.Chicago@DuaneMorris.com
nlvilliard@duanemorris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG JEA SHIN and ROGER JOHN STANTON
Appeal2017-010994
Application 13/551,404 1
Technology Center 3600
Before JAMES R. HUGHES, JUSTIN BUSCH, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 10-13, 16-20, and 22. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to an automated process for recruiting
qualified candidates for open job positions. Spec. ,r 2. Claim 1 is illustrative
of the invention and is reproduced below:
1. A recruitment system for generating a Job Report in
a network environment, the recruitment system comprising: a
server coupled to a plurality of job seeker devices and at least an
1 According to Appellants, Job Search Television Network is the real party
in interest. App. Br. 1.
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employer device via a communication network, wherein an
employer uploads using the employer device a text-based job
description relating to a job opening to the server via the
communication network link between the employer device and
the server, wherein the server includes a multimedia requirement
system for the production of a Job Report produced by
transforming the text-based job description using a platform into
a script and a graphic form, by inputting the script into a
teleprompter to be read by an on air talent and recorded using a
camera as a first video, and by inputting the graphic form into a
character generator for producing a second video, by storing the
first and second videos in a storage area network, and editing the
first and second videos to produce with both the first and second
videos the Job Report, and wherein the Job Report is viewed by
at least a job seeker using one of the plurality of job seeker
devices over the communication network from the server,
wherein the character generator creates a graphic overlay that
comprises an employer name, an employer logo, and at least one
graphic area.
REJECTIONS AT ISSUE
Claims 1, 10-13, and 16-202 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Ans. 2.
Claims 1, 10, 12, 13, 16, 20, and 22 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Ebrahimian (US
2009/0228323 Al; published Sept. 10, 2009), Howard (US 2007/0260968
Al; published Nov. 8, 2007), and Kikinis (US 8,522,266 Bl; filed Sept. 13,
2000). Ans. 4.
2 We note that the Examiner does not reject claim 22 under 35 U.S.C. § 101.
Ans. 2; Final Act. 2--4.
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Claims 11 and 17 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Ebrahimian, Howard, Kikinis, and
admitted prior art. Ans. 11.
Claims 18 and 19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Ebrahimian, Howard, Kikinis, and
Wehrle (US 8,600,931 Bl; filed Apr. 2, 2007). Ans. 13.
ANALYSIS
1. Rejection Under 35 USC§ 101
A. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes the present claims are directed to
disseminating job descriptions through creation of a video for advertising the
job description, which the Examiner analogizes to "concepts relating to
interpersonal and intrapersonal activities, such as managing relationships or
transactions between people, social activities, and human behavior ...
advertising, marketing, and sales activities or behaviors." Final Act. 2; Ans.
16-17. The Examiner determines the present claims are not significantly
more than any abstract idea because the Examiner finds they implement
instructions recited in the present claims using generic computer components
that are well-understood, routine, and conventional. Final Act. 3--4.
Appellants argue the Examiner overgeneralizes the present claims at a
high level of abstraction because the Examiner ignores specific limitations.
App. Br. 27-28. We agree with Appellants.
B. Legal Principles
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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C. Discussion
i. Alice Step 1, prongs 1 and 2
Claim 1 (with emphases) is reproduced below.
1. A recruitment system for generating a Job Report in
a network environment, the recruitment system comprising: a
server coupled to a plurality of job seeker devices and at least an
employer device via a communication network, wherein an
employer uploads using the employer device a text-based job
description relating to a job opening to the server via the
communication network link between the employer device and
the server, wherein the server includes a multimedia requirement
system for the production of a Job Report produced by
transforming the text-based job description using a platform into
a script and a graphic form, by inputting the script into a
teleprompter to be read by an on air talent and recorded using a
camera as a first video, and by inputting the graphic form into a
character generator for producing a second video, by storing the
first and second videos in a storage area network, and editing the
first and second videos to produce with both the first and second
videos the Job Report, and wherein the Job Report is viewed by
at least a job seeker using one of the plurality of job seeker
devices over the communication network from the server,
wherein the character generator creates a graphic overlay that
comprises an employer name, an employer logo, and at least one
graphic area.
We conclude the emphasized portions of claim 1 are not directed to
the abstract idea of: (1) mathematical concepts; (2) mental processes; and
(3) certain methods of organizing human activity. Therefore, the present
claims are patent eligible.
To the extent that one concludes the present claim are directed to
certain methods of organizing human activity (i.e., (1) commercial
interactions including agreements in the form of contracts, advertising, or
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business relations; or (2) managing personal behavior or relationships or
interactions between people), we conclude the present claims integrate such
an abstract idea into a practical application. In particular, we conclude that
independent claims 1 and 13 invoke the machine-or-transformation test by
reciting "transforming the text-based job description using a platform into a
script and a graphic form" for the production of a first video and a second
video. See In re Abele, 684 F.2d 902, 909 (CCPA 1982).
Because the present claims are not directed to an abstract idea or
integrate an abstract idea into a practical application, we need not proceed to
discussing Alice step 2. Accordingly, we do not sustain the Examiner's
rejection of: (1) independent claims 1 and 13; and (2) dependent claims
10-12 and 16-20 under 35 U.S.C. § 101.
2. Rejection Under 35 USC§ 103
A. Claims 1 and 13
The Examiner finds Howard teaches material fed into a teleprompter
and closed captioning, which the Examiner maps to the limitation "script
and a graphic form" recited in claims 1 and 13. Ans. 6; Final Act. 6 ( citing
Howard ,r 32). The Examiner finds Kikinis teaches combining inserting a
stored video into a broadcast. Ans. 8-9; Final Act. 7 ( citing Kikinis,
4:21-34). The Examiner also finds a person having ordinary skill in the art
at the time of the invention would have inserted an employer name, an
employer logo, and a graphic area into the graphic information since it is
data related to the job for which the Job Report was created. Final Act. 8.
Appellants first argue Howard fails to teach "script and a graphic
form" ( emphasis added) recited in claims 1 and 13 because Howard teaches
a single text rather than two different elements. App. Br. 16-18; Reply Br.
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5-8. Second, Appellants argue Kikinis fails to teach merger of two recorded
videos to create a third video because Kikinis teaches concurrently
broadcasting two videos. App. Br. 18-19. Third, Appellants argue the
Examiner improperly dismisses the informational content of the graphic
overlay, that is the employer's name, an employer's logo, and a graphic area
related to the job for which the Job Report was created. Id. at 20. We
disagree with Appellants.
As to Appellants' first argument, Appellants' Specification states
"[t]he graphic forms 450 are text to be displayed on the screen of the Job
Report" ( emphasis added). Spec. ,r 40. Consequently, the cited portions of
Howard teach material fed into a teleprompter (i.e., the words displayed on
the teleprompter teach or suggest the recited script) and closed captioning
(i.e., a graphic form), which teaches the limitation "script and a graphic
form" recited in claims 1 and 13. Ans. 6; Final Act. 6 (citing Howard ,r 32).
Regarding Appellants' second argument (App. Br. 18-19), the claim
does not recite "merger" of two videos or that the Job Report is a video.
Nonetheless, the cited portions of Kikinis teach inserting a stored video into
a broadcast (i.e., a broadcast is at least temporarily stored before it is aired);
the resulting video is a broadcast with an insertion of a stored video, which
teaches combining two videos to create a third video. Ans. 8-9; Final Act. 7
(citing Kikinis, 4:21-34).
As for Appellants' third argument, as pointed out by the Examiner
(see Ans. 10), Appellants misconstrue the rejection. Contrary to Appellants'
argument (see Appeal Br, 20), the Examiner did not state the information
came from or was located in the Job Report. Further, the informational
content of the graphic overlay does not distinguish Appellants' claim 1 from
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the prior art. We construe "wherein the character generator creates a graphic
overlay that comprises an employer name, an employer logo, and at least
one graphic area" recited in claim 1 ( and similarly recited in claim 13) as
"wherein the character generator creates a graphic overlay" because the
phrase "comprises an employer name, an employer logo, and at least one
graphic area" is non-functional descriptive material. That is, the
informational content of non-functional descriptive material is not entitled to
weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883,
1887-90 (BP AI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272
(BPAI 2005) (informative), aff'd, No. 2006-1003 (Fed. Cir. June 12, 2006)
(Rule 36); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff'd, 191 F. App'x 959 (Fed. Cir. 2006).
We, therefore, disagree with Appellants' argument that the
Examiner's improperly dismisses the informational content of the graphic
overlay (App. Br. 20) because Appellants misinterpret the Examiner's
rejection. In particular, the Examiner finds "[ o ]ne of ordinary skill in the art
would have understood that the above listed data would be inserted into
the graphic information, since it is data related to the job for which the Job
Report was created." Final Act. 8 ( emphasis added). Stated differently, the
Examiner finds an employer name, an employer logo, and at least one
graphic area is inserted into the graphic information (i.e., inserted a graphic
overlay) and this information is related to the job from which the Job Report
was created-i.e., the job description.
Appellants do not argue separately dependent claims 11, 16, and
18-20 with particularity. App. Br. 8-25. Accordingly, we sustain the
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Examiner's rejection of: (1) independent claims 1 and 13; and (2) dependent
claims 11, 16, and 18-20 under 35 U.S.C. § 103.
B. Claim 10
Dependent claim 10 recites "wherein the at least one graphic area
includes information selected from a group consisting of: a job name, a
location of the job, a type of job, a level of experience needed for the job,
and a description of responsibilities and duties."
The Examiner finds it would have been obvious to a person having
ordinary skill in the art at the time of the invention to have included an
employer name, an employer logo, a job name, a location of the job, a type
of job, a level of experience needed for the job, and/or a description of
responsibilities and duties in the information depicted by the graphic areas in
the video inserted into the graphic information because the above listed data
is related to the job for which the Job Report was created. Final Act. 9-10.
Appellants argue that selection of these elements for display in the
graphic form and in the one graphic area to generate the Job Report is
unknown; that is, sorting or selecting is known, but the specific way of
sorting is unknown. We disagree with Appellants.
As an initial matter, we construe "wherein the at least one graphic
area includes information selected from a group consisting of: a job name, a
location of the job, a type of job, a level of experience needed for the job,
and a description of responsibilities and duties" recited in claim 10 as not
having patentable weight because it recites non-functional descriptive
material. See Ex parte Nehls, 88 USPQ2d at 1887-90. In particular, "the at
least one graphic area" has antecedence to claim 1; and as stated supra in the
discussion of claim 1, this phrase is not entitled to patentable weight.
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Likewise, the phrase "wherein the at least one graphic area includes
information selected from a group consisting of: a job name, a location of
the job, a type of job, a level of experience needed for the job, and a
description of responsibilities and duties" recited in claim 10 does not add
any functionality to "the at least one graphic area." We, therefore, sustain
the Examiner's rejection of claim 10 under 35 U.S.C. § 103.
Additionally, in order to rebut a prima facie case of unpatentability,
Appellant must distinctly and specifically point out the supposed Examiner
errors, and the specific distinctions believed to render the claims patentable
over the applied references. See 3 7 C.F .R. § 41.3 7 ( c )( vii) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art."); cf In re
Baxter Travenol Labs., 952 F.2d 388,391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art."). Here,
Appellants do not argue specifically why the Examiner's finding is
insufficient to render claim 10 unpatentable; instead, Appellants provide a
general statement that this specific way of sorting is unknown.
Accordingly, we sustain the Examiner's rejection of claim 10 under
35 U.S.C. § 103 for this additional reason.
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C. Claim 12
Dependent claim 12 recites "wherein the Job Report includes a
contact information segment at the end of the Job Report."
The Examiner finds a person having ordinary skill in the art would
have modified the base combination of Ebrahimian, Howard, and Kikinis to
have contact information at the end of the video because it is a combination
of known elements that would have yielded predictable results. Final Act.
10-11.
Appellants argue no art exists that shows Job Reports are produced in
any way that suggests displaying contact information at the end of a video.
App. Br. 21. We disagree with Appellants.
We construe "wherein the Job Report includes a contact information
segment at the end of the Job Report" as not having patentable weight
because it recites non-functional descriptive material. See Ex parte Nehls,
88 USPQ2d at 1887-90. In particular, the phrase "wherein the Job Report
includes a contact information segment at the end of the Job Report" recited
in claim 12 does not add any functionality to "the Job Report."
Accordingly, we sustain the Examiner's rejection of claim 12 under
35 U.S.C. § 103.
D. Claim 17
On page 13 of the Non-Final Rejection mailed on September 11,
2015, the Examiner takes Official Notice that the features recited in claim 17
are notoriously well known in the art at the time of the invention and, in the
Final Rejection, the Examiner finds that this is now Appellants' admitted
prior art. Compare Non-Final Act. 13 mailed on Sept. 11, 2015, with Final
Act. 11-12.
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Appellants argue sending a customer a script as an intermediary step
of the process of producing the finished product, which is akin to "review"
recited in claim 17 is not known or common. App. Br. 21-22. We disagree
with Appellants.
states:
At the outset, MPEP § 2144.03(C) pertains to Official Notice and
To adequately traverse such a finding, an applicant must
specifically point out the supposed errors in the examiner's
action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art.
Moreover, MPEP § 2144.03(C) states:
If applicant does not traverse the examiner's assertion of official
notice or applicant's traverse is not adequate, the examiner
should clearly indicate in the next Office action that the
common knowledge or well-known in the art statement is
taken to be admitted prior art because applicant either failed
to traverse the examiner's assertion of official notice or that the
traverse was inadequate. If the traverse was inadequate, the
examiner should include an explanation as to why it was
inadequate.
(Emphasis added.)
The Examiner clearly fulfilled the bolded text above. Compare Non-
Final Act. 13 mailed on Sept. 11, 2015, with Final Act. 11-12. Although the
Examiner does not explicitly state "applicant either failed to traverse the
examiner's assertion of official notice or that the traverse was inadequate" or
provide "an explanation as to why it was inadequate," we note this language
is not a requirement for the Examiner due to the word "should." Put another
way, MPEP § 2144.03(C) states "should," which is a suggestion, rather than
"must," which is a requirement.
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We, therefore, determine that Appellants improperly traverse this
Official Notice. In particular, on page 13 of the Non-Final Rejection mailed
on September 11, 2015, the Examiner takes Official Notice that the features
recited in claim 17 are notoriously well known in the art at the time of the
invention. Non-Final Act. 13 mailed on Sept. 11, 2015. In the response
filed on March 11, 2016, Appellants do not proffer any arguments pertaining
to claim 1 7. See generally Response filed Mar. 11, 2016 (lacking any
arguments pertaining to claim 17). Subsequently, in the Final Rejection, the
Examiner finds that this is now Appellants' admitted prior art. Compare
Non-Final Act. 13 mailed on Sept. 11, 2015, with Final Act. 11-12.
Accordingly, we sustain the Examiner's rejection of claim 17 under
35 U.S.C. § 103.
E. Claim 22
The Examiner finds Ebrahimian teaches employers posting job
openings and candidates viewing and responding to job descriptions and
Howard teaches a newscaster reading material from a teleprompter. Final
Act. 4---6 ( citing Ebrahimian, Abstract, Figs. 2--4; Howard ,r 32). The
Examiner finds it would have been obvious to a person having ordinary skill
in the art at the time of the invention to combine Ebrahimian and Howard to
make use of Howard's teaching of a newscaster reading from a teleprompter,
which does not require undue experimentation nor risk unexpected results.
Final Act. 6-8.
Appellants argue including information from the news industry in a
job postings video is not obvious or known. App. Br. 22. We disagree with
Appellants.
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The cited portions of Ebrahimian teach employers posting job
openings and candidates viewing and responding to job descriptions and the
cited portions of Howard teach a newscaster reading material from a
teleprompter. Final Act. 4---6 ( citing Ebrahimian, Abstract, Figs. 2--4;
Howard ,r 32). We agree with the Examiner's finding that it would have
been obvious to a person having ordinary skill in the art at the time of the
invention to combine Ebrahimian and Howard to make use of Howard's
teaching of a newscaster reading from a teleprompter, which does not
require undue experimentation nor risk unexpected results. Final Act. 6-8.
Accordingly, we sustain the Examiner's rejection of claim 22 under
35 U.S.C. § 103.
F. Analogous Art Discussion
The Examiner finds it would have been obvious to a person having
ordinary skill in the art to combine Ebrahimian, Howard, and Kikinis as a
combination of known elements yielding predictable results. Final Act. 7-8.
Appellants first argue Howard and Kikinis are not analogous with
each other because they are classified in different classification areas. App.
Br. 23. Second, Appellants also argue Howard and Kikinis are not
analogous because the claim pertains to creating a Job Report, whereas
Kikinis allows for emergency broadcasts to reach viewers by highjacking
normal airwaves and Howard teaches a more complex movie editing system
designed to enhance the speed at which live television shows are produced.
Id. at 23-24. We disagree with Appellants.
At the outset, we note Appellants' argument that Howard and Kikinis
are not analogous with each other because they are classified in different
classification areas (id. at 23) is an incorrect test for analogous art. The
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correct statement is that a reference "qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to the claimed
invention." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis
added). We, therefore, disagree with Appellants' first argument that Howard
and Kikinis are not analogous with each other because they are classified in
different classification areas (App. Br. 23).
Regarding Appellants' second argument, the test for determining
whether a prior art reference constitutes analogous art to the claimed
invention is: (1) whether the prior art is from the same field of endeavor,
regardless of the problem addressed, or (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. See
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
In determining the field of endeavor, we look to the Appellants'
written description and claims, including the structure and function of the
invention. Bigio, 381 F.3d at 1326. And we determine that in defining the
field of invention, and in determining the relevance of Howard and Kikinis
to the obviousness inquiry, here a broad approach should be taken. Indeed,
the Supreme Court provided guidance in determining the applicability of a
reference's teachings in an obviousness inquiry. In KSR Int 'l Co. v. Teleflex
Inc., the Court explained that if a feature has been used to improve one
device, and a person of ordinary skill in the art would have recognized that it
would improve a similar device in that field or another, implementing that
feature on the similar device is likely obvious. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007).
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Here, the appropriate scope of the field of endeavor is creating a job
posting using videos displaying human and written highlights. Spec. ,r 2;
claims 1, 13. We determine Howard is within the field of endeavor because
it teaches creating a video with a human newscaster reading a story from a
teleprompter. Howard, Abstract, ,r,r 32-35. In addition, we determine that
Kikinis is within the field of endeavor because it teaches multiple videos
with an overlay of written highlights. Kikinis, 5:36-53.
Because we determine that Howard and Kikinis are within the same
field of endeavor as the claimed invention, we need not consider whether
Howard and Kikinis are reasonably pertinent to the particular problem with
which Appellants are involved.
Accordingly, we sustain the Examiner's determination that Howard
and Kikinis are analogous to the claimed invention.
DECISION
We reverse the Examiner's decision rejecting claims 1, 10-13, and
16-20 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 10-13, 16-20,
and 22 under 35 U.S.C. § 103.
Because we affirm on at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject claims 1,
10-13, 16-20, and 22. See 37 C.F.R. § 4I.50(a)(l).
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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