Ex Parte Walsh et al

Board of Patent Appeals and Interferences

Sep 30, 2008

10220943 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANCIS E. WALSH and DAVID M. READ
____________

Appeal 2008-3198
Application 10/220,943
Technology Center 2600
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Decided: September 30, 2008
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-5, 7-9, 11, 12, 14, 20, 22, 23, and 30-40. Claims 2, 6, 10, 13, 15-
19, 21, and 24-29 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2008-3198
Application 10/220,943

STATEMENT OF THE CASE
Invention
Appellants’ invention relates to Internet distribution to customers of
news articles or advertising tear sheets that have been electronically clipped
from a database of publications (Spec. 1). Clipped articles or images are
placed on a customer’s Internet web box and can be downloaded from the
web box and printed subsequently (Spec. 3).
Claim 1, which is representative of the claims on appeal, reads as
follows:
1. An information clipping method comprising the steps of:
scanning a printed version of a publication to create a digital
file;
receiving the digital file of the publication;
searching the digital file using a search query;
displaying a page of the publication as a result of the searching
step, wherein the page contains a word found by the search query;
performing a software clipping of a selected portion of the page
of the publication containing the word; and
inserting the selected portion clipped from the page of the
publication into a webbox.

References
The prior art applied in rejecting the claims on appeal is:
Bagley US 5,548,700 Aug. 20, 1996
Kirsch US 5,920,854 Jul. 6, 1999
Srinivasan US 2001/0023436 A1 Sep. 20, 2001
Bobrow US 2002/0029232 A1 Mar. 7, 2002
Segal US 6,799,199 B1 Sep. 28, 2004
(filed Sep. 5, 2000)

IBM, Abstracted-PUB-NO: RD-429147 A, Jan. 10, 2000.

Applicants’ Admitted Prior Art (AAPA), pages 1-2 of the Specification.
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Rejections
Claims 1, 3-5, 7, 8, 20, 22, and 23 stand rejection under 35 U.S.C.
§ 103(a) based upon the teachings of Segal in view of Kirsch and Bobrow.
Claims 30-33 and 37-39 stand rejected under 35 U.S.C. § 103(a)
based upon the teachings of Segal, Kirsch, and Bobrow in view of Bagley.1
Claims 9, 11, 12, and 14 stand rejected under 35 U.S.C. § 103(a)
based upon the teachings of Segal, Kirsch, and Bobrow, and further in view
of the IBM publication.
Claims 34-36 stand rejected under 35 U.S.C. § 103(a) based upon the
teachings of Segal, Kirsch, Bobrow, and Bagley, and further in view of the
IBM publication.
Claim 40 stands rejected under 35 U.S.C. § 103(a) based upon the
teachings of Segal, Kirsch, Bobrow, and Bagley, in view of Srinivasan.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA. 2
We make reference to the Appeal Brief (filed Nov. 1, 2006), the
Reply Brief (filed Oct. 17, 2006) and the Answer (mailed Dec. 26, 2006) for
the positions of Appellants and the Examiner. Only those arguments
actually made by Appellants have been considered in this decision.
Arguments which Appellants did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

1 The 35 U.S.C. § 112, first paragraph, rejection of claims 37-40 for failing
to comply with the written description requirement is withdrawn in the
Answer (id.).
2 The rejection of claims 5, 9, 12, 20, 28, 34, and 37 under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA is withdrawn in the Answer
(Ans. 3).

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ISSUES
1. Have Appellants shown that the Examiner erred in rejecting
claims 1, 3-5, 7, 8, 20, 22, and 23 under 35 U.S.C. § 103(a)? The issue
specifically turns on whether the combination of Segal, Kirsch, and Bobrow
teaches or suggests the claimed subject matter related to “software clipping.”
2. Have Appellants shown that the Examiner erred in rejecting the
remaining claims under 35 U.S.C. § 103(a) over the various combinations of
Segal, Kirsch, and Bobrow with Bagley, Srinivasan, or IBM?
3. Have Appellants shown that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) over AAPA?

PRINCIPLES OF LAW
1. Scope of Claims
The scope of the claims in patent applications is determined not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re American Academy of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). The “broadest
reasonable interpretation” rule recognizes that “before a patent is granted the
claims are readily amended as part of the examination process.” Burlington
Indus. v. Quigg, 822 F.2d 1581, 1583 (Fed. Cir. 1987). Thus, a patent
applicant has the opportunity and responsibility to remove any ambiguity in
claim term meaning by amending the application. In re Prater, 415 F.2d
1393, 1404-05 (CCPA 1969).
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
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Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996)). Furthermore, the specification is the single
best guide to the meaning of a claim term. Phillips v. AWH Corp., 415 F.3d
at 1315 (Fed. Cir. 2005).
2. Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739-40). “One of the ways in which a
patent’s subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.” KSR, 127 S. Ct. at 1742.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 127 S. Ct. at 1740.

ANALYSIS
Rejection over Segal, Kirsch, and Bobrow
Appellants argue that the Examiner’s characterization of the claim
term “software clipping” as displaying the relevant sentence containing the
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word or displaying the relevant portion of a multi-media presentation is
inconsistent with the ordinary meaning of the term, as disclosed in the
Specification (App. Br. 8). Appellants point to lines 8-10 on page 12 of the
Specification for the description of “software clipping” and assert that one
skilled in the art would not equate software clipping of a displayed page
image to displaying a relevant sentence or a portion of a presentation (id.).
Appellants, later in the Reply Brief, concede that the phrase “clipping
images” is not recited in claim 1 and Appellants’ arguments are not
concerned with “clipping images” (Reply Br. 3). Appellants further argue
that the Examiner has not shown that the combination of the references
teaches or suggests “performing a software clipping of a selected portion of
the page of the publication containing the word” since determining the
meaning of “software clipping” does not need an interpretation of the
“digital record/file,” as done by the Examiner (Reply Br. 4).
The Examiner acknowledges Appellants’ distinction of “software
clipping” over “clipping of images” and argues that to the extent a digital
file could comprise text, the system disclosed in Segal does send relevant
portion to a user which represents “software clipping” since it involves an
electronic copy of a relevant portion of a file (Ans. 30). The Examiner
further points to pages 11-12 of the Specification, which Appellants relied
on for the description of “software clipping,” and asserts that the only
clipping understood by one of ordinary skill in the art would be created via
electronic copying (Ans. 33). The Examiner concludes that, absent a clear
definition, “software clipping” merely requires electronic copying of some
data, but not necessarily copying of particular forms of data such as image
data (Ans. 34).
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Giving the broadest reasonable interpretation in light of the
Specification to the claim term without importing limitations, we find the
Examiner’s interpretation of the claim term “software clipping” to be
reasonable. In fact, Appellants have not clearly set forth what “software
clipping” means and have merely pointed to page 12 of the Specification for
such description. The portion of the Specification relied on by Appellants
states:
… [t]hen in step 306, the operator examines the image file of
the publication page in which the clip appears and edits (cuts)
the clip from the page using photo editing software.
(Spec. 12:8-10.)
As asserted by the Examiner, since the term “software clipping” is not
mentioned in the disclosure, we follow the principles set forth by the Phillips
decision to give the term its ordinary and customary meaning as would have
been understood by one of ordinary skill in the art. In that regard, “software
clipping” must involve editing or cutting the clip from the publication page
in which the clip appears, as performed in step 306 in Figure 3. We note
that while “photo editing software” is disclosed as a tool for performing the
editing or cutting, the claims are not limited to any specific tool and may
include any other software tools. We therefore, find that the interpretation
purported by the Examiner for the claim term “software clipping” is
reasonable and consistent with the meaning suggested in the Specification as
understood by one of ordinary skill in the art.
With respect to the claimed step of inserting the selected clip into a
webbox, Appellants contend the Examiner’s characterization of the claimed
step as displaying an image of the selected portion to a user accessing web-
based e-mails (App. Br. 10). The Examiner points to Appellants’ own
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description of webbox on page 3 of the Specification as an e-mail and asserts
that the claimed term reads on web-based e-mails such as Segal’s media
alerts (Ans. 35).
Upon review of page 3 of the Specification and the disclosure of
Segal, we find the Examiner’s characterization of webbox as web-based e-
mail, and specifically as the media alerts of Segal, to be reasonable. We also
remain unconvinced by Appellants’ assertion (Reply Br. 5) that the
Examiner must provide extrinsic evidence to show that opening up an e-mail
is the same as displaying an image of the selected portion to a user accessing
the e-mail. Such characterization is based on Appellants’ description of how
clips are forwarded to user locations using e-mail (Spec. 3). We also agree
with the Examiner’s findings with respect to Segal, which discloses that the
media alerts include portions of text with search words that are edited and
copied to the media monitor page similar to the claimed “software clipping.”
Segal also discloses sending the results of the queries based on user defined
query terms in the form of a monitor media page to the client’s system such
as a personal computer, cellular phone, PDA, or topbox (Col. 11, 10-20).
Furthermore, as shown in Figure 12 of Segal, media alerts based on the
query terms may be displayed in a media monitor page (col. 31, ll. 54-67).
Giving the broadest reasonable interpretation to the claims and
considering our analysis above, we simply find the Examiner’s position that
combining the document search of Kirsch and Bobrow’s digital files
obtained from scanning document would be recognized by the skilled artisan
as obvious enhancements to the media monitor system of Segal. According
to Leapfrog, when a combination of familiar elements according to methods
known to the skilled artisan (such as using scanned document files for
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copying the queried portions) achieves a predictable result, it is likely to be
obvious. Accordingly, the rejection of independent claims 1, 5, and 20, as
well as claims 3, 4, 7, 8, 22, and 23, argued together as one group (App. Br.
11), under 35 U.S.C. § 103(a) based upon the teachings of Segal in view of
Kirsch and Bobrow is sustained.
Rejection over Segal, Kirsch, Bobrow, and Bagley
Regarding claim 30, Appellants provide the same arguments
discussed above with respect to claim 1, which were found to be
unpersuasive. Additionally, Appellants assert that Bagley merely edits the
image of a text and cannot cure the deficiencies of Segal, Kirsch, and
Bobrow with respect to the claimed software clipping (App. Br. 12).
Regarding claim 37, Appellants argue that there is no disclosure in any of
the references to teach performing an OCR scan of the paper printed version
of the publication that has been previously scanned to create a text file (App.
Br. 13). The Examiner points to paragraph [0059] of Bobrow for teaching
an OCRed text which means that a document image file has been OCRed
(Ans. 38).
A review of the disclosure of the applied references and Bobrow
clearly shows that the Examiner has correctly assessed each reference and
their collective teachings with regard to an OCR scan of the document.
Contrary to Appellants’ assertion that no language in Bobrow discusses
OCR (Reply Br. 8), the reference describes different aspects of document
input interface (¶ [0058]), document collection including OCRed texts (¶
[0059]), and document storage (¶ [0061]). The document collection of
Bobrow includes an array of pages, each associated with a page data
structure including pointers to a page image and other pointers such as one
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to OCRed text 236 (Bobrow, ¶ [0059]). Bobrow further define a page image
226 as one page of a scanned hardcopy or electronically generated document
(id.).
Regarding claim 38, Appellants merely repeat the claimed features
and make general allegations of impropriety against the Examiner’s prima
facie case of obviousness. We find the Examiner’s position to be reasonable
and, for the same reasons stated above with respect to claims 1, 5, and 20,
sustain the 35 U.S.C. § 103(a) rejection of claims 30 and 37, as well as
claims 32, 33, 38, and 39 which are not argued separately (App. Br. 11-14),
based upon the teachings of Segal, Kirsch, Bobrow, and Bagley.
Rejection over Segal, Kirsch, Bobrow, and IBM
With respect to the rejection of claims 9, 11, 12, and 14 over Segal,
Kirsch, and Bobrow, and further in view of the IBM publication, Appellants
provide the same arguments discussed above regarding claim 1, which were
found to be unpersuasive. Additionally, Appellants assert that the Examiner
has not shown how the combination of the applied prior art teaches the
claimed publication page containing an advertisement (App. Br. 14).
Appellants further contend that the Examiner has not shown how using
search words to select key advertisements in the IBM reference would be
combined with the other cited references (App. Br. 15). The Examiner
responds by stating that the claimed page containing an advertisement only
concerns the type of image or content whereas advertisements would be
identified by key words similar to any other type of search queries (Ans. 39).
Contrary to Appellants’ arguments (Reply Br. 8) that the absence of
an advertisement page in the publication of Bobrow shows the Examiner’s
failure in presenting a prima facie case of obviousness, we agree with the
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Examiner’s line of reasoning and note that the rejection is based on the
combination of the references. We also agree with the Examiner that while
including advertisement in the page concerns the type of the image or text
that would have been identified with the same type of key words query
terms, the IBM publication discloses the page content as advertisement.
Therefore, consistent with the KSR holding, one of ordinary skill in the art
would have found it obvious to apply the search query to an advertisement
as one type of information to be presented to the user. Accordingly, we
sustain the 35 U.S.C. § 103(a) rejection of claims 9, 11, 12, and 14 over
Segal, Kirsch, Bobrow, and the IBM publication.
Rejection over Segal, Kirsch, Bobrow, Bagley, and IBM
Appellants rely on the same arguments raised for claim 30 in order to
support patentability of claims 34-36 over Segal, Kirsch, Bobrow, Bagley,
and the IBM publication (App. Br. 15). For the same reasons stated above
with respect to claims 1 and 30, we sustain the 35 U.S.C. § 103(a) rejection
of these claims over Segal, Kirsch, Bobrow, and Bagley, and further in view
of the IBM publication.
Rejection over Segal, Kirsch, Bobrow, Srinivasan, and IBM
With respect to claim 40, Appellants argue that the cut and paste
operation of Srinivasan relates only to video streams and has nothing to do
with a cut and paste operation of a displayed page of a printed publication
(App. Br. 15-16). Appellants further argue that the teachings in Srinivasan
refer to multiplexing media streams and contain no suggestion for the
combination with Segal (App. Br. 16). The Examiner responds by stating
that the cut and paste operation of Srinivasan applies to the media clips
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included as attachments to the e-mails, whereas it is well known that cut and
paste is equally used for text and images (Ans. 40).
We agree with the Examiner that one of ordinary skill in the art
would have applied the cut and paste operation for attaching various types of
data, such as text and image in addition to video streams, to a web-based e-
mail. As such, no matter what type of data are to be displayed in Segal,
using the standard expressed in KSR, applying the teachings of Srinivasan is
based on common features of such systems and is within the knowledge of
skilled artisan that would have improved the way the clips are compiled
using a cut and paste operation and would have produced only predictable
results. Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claim 40.
Rejection over AAPA
Appellants contend that no admission to the existence of the
conventional manual processes to perform the same steps as the claimed
invention was made in the Specification (App. Br. 16). Appellants argue
that a human cannot manually perform the claimed steps without required
computer software and hardware (id.). In response, the Examiner asserts
that all the steps discussed in AAPA were already performed electronically
wherein the only required modification is automation of selecting the
advertisement (Ans. 40).
Based on our review of Appellants’ Specification, we agree with the
Examiner and find that the “News-Clipping” and “Tear-Sheets” processes
disclosed in the “BACKGROUND INFORMATION” section of the
Specification do clearly include the process steps recited in claim 1, as
outlined by the Examiner in the statement of the rejection (Ans. 27-29).
Additionally, we find Appellants’ argument that the claimed steps cannot be
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performed by a human since computer software and hardware are required,
to be unpersuasive. First, the “Tear-Sheets” process describes the
computerized process steps and even suggests providing access to the
selected portions on a Web site (Spec. 2). Second, while we agree with
Appellants regarding the need for computer software and hardware, we note
that Appellants have only recited such features in their nominal form and
described the required systems in their disclosure only in general functional
terms (Spec. 17:22-19:5 and Figure 6). To the extent the computer usage
and system details are disclosed, one of ordinary skill in the art would have
been able to select available and known software and hardware components
for further automating the prior art process to arrive at the claimed subject
matter of claim 1. Accordingly, the 35 U.S.C. § 103(a) rejection of claim 1
over AAPA is sustained.

CONCLUSION OF LAW
Because Appellants have failed to point to any error in the Examiner’s
position, we sustain the 35 U.S.C. § 103 rejection of claims 1, 3-5, 7-9, 11,
12, 14, 20, 22, 23, and 30-40.

ORDER
The decision of the Examiner rejecting the claims 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)(1)(iv).

AFFIRMED

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gvw

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P. O. BOX 50784
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