Ex Parte Supakkul et al

Patent Trial and Appeal Board

Dec 27, 2016

12763752 (P.T.A.B. Dec. 27, 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.
12/763,752 04/20/2010 TASSANEE K. SUPAKKUL CHA920100006US1_8134-0124 6011
73109 7590 12/29/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TASSANEE K. SUPAKKUL and JANKI Y. VORA
Appeal 2016-000066
Application 12/763,752
Technology Center 2100
Before CARLA M. KRIVAK, NABEEL U. KHAN, and
SHARON FENICK, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-000066
Application 12/763,752
STATEMENT OF THE CASE
Appellants’ invention is directed to “to a Web content annotation
management Web browser plug-in” (Spec. 11).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A method for sharing annotations for Web content
comprising:
at least one processor capturing annotation data for at
least one user-created content annotation regarding Web
content presented within a Web browser by a content
annotation plugin, wherein the content annotation plug-in is
an auxiliary software component of said Web browser,
wherein the content annotation plug-in enables the user to
create and overlay content annotation regarding Web content
upon the Web content in the Web content display area in the
Web browser;
at least one processor storing the annotation data for
the at least one user-created content annotation in a data
store, wherein said data store is a component of one of a
computing device currently running the Web browser and a
content annotation server remotely located to the computing
device;
at least one processor providing a viewable aggregate
of the Web content and the annotation data visually overlaid
as a separate layer upon the Web content in the Web content
display area;
at least one processor embedding the generated
viewable aggregate within an electronic message; and
at least one processor conveying the electronic
message containing the embedded viewable aggregate to at
least one email recipient.
REFERENCES and REJECTIONS
The Examiner rejected claims 1—5, 11, 13, 14, 16—18, and 21—23
under 35 U.S.C. § 103(a) based upon the teachings of Lemer (US 6,859,909
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Application 12/763,752
Bl, issued Feb. 22, 2005) and Kulas (US 2009/0210778 Al, published Aug.
20, 2009).
The Examiner rejected claims 6, 7, 19, and 20 under 35 U.S.C.
§ 103(a) based upon the teachings of Lemer, Kulas, and Sandquist (US
2009/0187825 Al, published July 23, 2009).
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) based upon
the teachings of Lemer, Kulas, and Albomoz (US 7,254,593 B2, issued Aug.
7, 2007).
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) based upon
the teachings of Lemer, Kulas, Albomoz, and Ortega (US 2010/0156913
Al, published June 24, 2010).
The Examiner rejected claims 10 and 15 under 35 U.S.C. § 103(a)
based upon the teachings of Lemer, Kulas, and Cragun (US 2005/0160355
Al, July 21, 2005).
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) based upon
the teachings of Lemer, Kulas, and Hon (US 2007/0198534 Al, Aug. 23,
2007).
ANALYSIS
Appellants contend the Examiner erred in finding the combination of
Lemer and Kulas teaches or suggests Appellants’ claimed invention.
Specifically, Appellants assert Kulas is improperly relied on to overcome the
deficiency of Lemer (Br. 12), Kulas is silent as to Web annotation and thus
cannot be used to modify Lemer to send electronic messages (Br. 14), and
the motivation to combine is improper as such a combination “crosses a
significant chasm of technology to perform a modification only
contemplated in Applicant’s own disclosure” (Br. 15—16). We do not agree.
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Application 12/763,752
We agree with and adopt the Examiner’s findings as our own (Ans. 3—
23). We provide the following for emphasis. As the Examiner finds, Kulas
was used only for disclosing embedding web content and annotation into an
electronic email/message (Ans. 6). Kulas concerns video content (Kulas
124) and video tags (“vubble”s), which are content used to augment or
overlay video data {id. 125). Kulas discloses including a vubble in a body
of a message, therefore the content of the vubble is viewable directly within
the message without being directed outside the email (Ans. 6; Kulas H 61,
85). We agree it would have been obvious to a person having ordinary skill
in the art to modify Lemer’s teaching of annotating web-based documents
and sending them via email as taught by Kulas. As to motivation to
combine, Appellants merely state Lemer and Kulas cannot be combined
without providing persuasive argument or evidence. The Examiner correctly
finds Lemer and Kulas are both in the same art and disclose the ability to
annotate content and share the annotations with others through electronic
mail (Ans. 7). The Examiner has provided a reasoned explanation, which
Appellants do not address in a Reply Brief (Ans. 7—9).
Appellants separately argue claims 6, 7, 19, and 20, stating the
Examiner erred in combining Sandquist with Lemer and Kulas (Br. 17—18).1
Appellants provide attorney argument without persuasive evidence that the
Examiner has not provided a motivation for combining. We disagree. The
Examiner provides reasonable findings supported by evidence regarding the
1 With respect to claim 6, as the Examiner noted in the Final Action (Final
Act. 2), the limitations recited in claim 6 are repetitious of those found in
claim 1, thus, claim 6 should be cancelled.
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Application 12/763,752
combination of Lemer, Kulas, and Sandquist, which Appellants do not rebut
in a Reply Brief (Ans. 9—12).
Appellants separately argue claim 8 stating Albomoz cannot be
combined with Lemer and Kulas as it would change the principle of
operation of Lemer and Kulas (Br. 19-20). We do not agree. Appellants do
not explain how the principle of operation of Lemer and Kulas would be
changed. Further, the Examiner provides reasonable findings supported by
evidence regarding the combination of Lemer, Kulas, and Albomoz, which
Appellants do not rebut in a Reply Brief (Ans. 12—14).
Appellants separately argue claim 10 stating because Cragun
introduces a problem into the combination of Lemer and Kulas, the
motivation to combine is in error (Br. 20—21). The Examiner, however,
provides reasonable findings supported by evidence regarding the
combination of Lemer, Kulas, and Cragun, which Appellants do not rebut in
a Reply Brief (Ans. 14—16).
Appellants separately argue claim 12 stating the Examiner’s
motivation to combine Lemer, Kulas, and Hon, is improper because there is
no need for the modification (Br. 21—22). The Examiner provides
reasonable findings supported by evidence regarding the combination of
Lemer, Kulas, and Hon, which Appellants do not rebut in a Reply Brief
(Ans. 16-17).
The Examiner provides reasoned explanations for combining the
references, which Appellants do not address in a Reply Brief. Accordingly,
we sustain the Examiner’s rejection of independent claims 1,11, and 16 as
obvious over the combination of Lemer and Kulas and dependent claims 2—
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10, 12—15, and 17—23 as obvious over Lemer, Kulas, and various
combinations of the remaining cited art.
DECISION
The Examiner’s decision rejecting claims 1—23 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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