Facebook, Inc.

Patent Trials and Appeals Board

Apr 24, 2020

14308188 - (D) (P.T.A.B. Apr. 24, 2020)

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.
14/308,188 06/18/2014 Benjamin S. Langholz 19487.515 9265
107193 7590 04/24/2020
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte BENJAMIN S. LANGHOLZ
________________

Appeal 2019-001351
Application 14/308,188
Technology Center 2100
________________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Exemplary Claim
The invention relates to an electronic communication system and
method for talk-to-text transcriptions. Spec. ¶¶ 3, 11–13. In one
embodiment, a co-user may read the transcription of the message, as well as
listen to a recording of the message. Id. at 25. The system may further
determine a level of confidence regarding whether a transcription based on a
recording is accurate. Id. at 27.
Exemplary claim 1 reads as follows:
1. A method comprising:

providing a messaging graphical user interface comprising a
communication thread comprising a plurality of electronic messages
exchanged between a user and one or more co-users; and
detecting a selection of a sound recording control from the
messaging graphical user interface;
in response to the detected selection of the sound recording
control, recording a message from the user;
transcribing, by at least one processor, the recorded message
into a textual message;
sending, to one or more co-users, the recorded message together
with the transcribed textual message; and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Facebook, Inc. is the real party in
interest. Appeal Br. 2.
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adding, to the communication thread for presentation within the
messaging graphical user interface, a single electornic [sic] message
comprising:
the transcribed textual message within a first
portion of the single electronic message; and
a playback control associated with the recorded
message within a second portion of the single electronic message.

Appeal Br. 22 (emphases added to indicate disputed limitations).

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 3.
Claims 1–20 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to point out and distinctly claim the subject matter
which the inventor regards as the invention. Final Act. 3.
Claims 1–7 and 16–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Doulton (US 2007/0054678 A1; March 8, 2007) and
Shaw (US 2013/0101097 A1; April 25, 2013). Final Act. 4.
Claims 8–10, 19, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Doulton, Shaw, and Goguen et al. (US
2012/0269334 A1; October 25, 2012) (“Goguen”). Final Act. 10.
Claims 11–15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Doulton, Shaw, Goguen, and Milstein (US 2012/0022865
A1; January 26, 2012). Final Act. 12.

ANALYSIS
We have considered all of Appellant’s arguments and any evidence
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presented. We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s obviousness rejections, and the Examiner’s responses to
Appellant’s arguments. Appellant proffers sufficient argument and evidence
to persuade us of error regarding the Examiner’s underlying factual findings
and ultimate legal conclusion of obviousness. In our analysis below, we
highlight and address specific findings and arguments for emphasis.

A. 35 U.S.C. § 112(a) – Written Description
Claim 1 recites, in pertinent part, “the transcribed textual message
within a first portion of the single electronic message; and a playback
control associated with the recorded message within a second portion of the
single electronic message” (emphases added). Appeal Br. 22.
The Examiner finds that “a first portion” and “a second portion” of a
single electronic message is not described in the Specification of the current
application. Final Act. 3; Ans. 3. The Examiner further finds that electronic
communication “308a [sic] of Figure 3G [of Appellant’s Specification]
represents two separate electronic communications (i.e., two text
messages),” rather than a single message that has a first portion and a second
portion. Ans. 13.
We disagree. “[T]he description requirement does not demand any
particular form of disclosure, or that the specification recite the claimed
invention in haec verba.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en banc) (citation omitted). Rather, “the test
for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
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possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351.
Appellant contends:
[f]or example, as shown in FIG. 3G. . . “the electronic communication
308a’ includes a recorded message and a transcription of the recorded
message.” More specifically, “the electronic communication 308a’
may include a playback control 334” associated with “the recorded
message associated with the electronic communication 308a’” as well
as “the transcribed textual message 332” also associated with the
recorded message. Furthermore, as shown in at least FIG. 3G, the
“playback control 334” and the “transcribed textual message 332” are
included within “the electronic communication 308a’,” but are
distinctly separated into a first portion of “the electronic
communication 308a’” and a second portion of “the electronic
communication 308a’.”

Appeal Br. 20 (citing to Spec. ¶ 85).
Appellant’s annotated Figure 3G is reproduced below, to show the
first portion and second portion of a single electronic message:
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Figure 3G, above, illustrates a user interface for creating and sending
a sound recording. Spec. ¶ 18.
We agree with the Appellant that Figure 3G shows the claimed first
portion and second portion of a single electronic message. The Specification
discloses that “the electronic communication 308a’ includes a recorded
message and a transcription of the recorded message.” Spec. ¶ 86. The
recorded message is a first portion and the transcription of the recording is a
second portion. See id. Both portions are part of electronic communication
Playback control
– “first portion”
Transcribed
textual message –
“second portion”
Single
electronic
message
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308a’. See id. Therefore, because we find at least Figure 3G and its
corresponding description in the Specification provides sufficient written
description support to show possession of the claimed subject matter, we
determine the Examiner’s analysis fails to demonstrate that claims 1–20 lack
written description support. Thus, we do not sustain the Examiner’s
rejection of claims 1–20 under 35 U.S.C. § 112 (a).
B. 35 U.S.C. 112(b) – Indefiniteness
The Examiner finds that the limitations “a first portion” and “a second
portion” of a single electronic message of claim 1 are indefinite (Final Act.
3–4; Ans. 3–4), because “[i]t is difficult to interpret the newly amended
feature, such as how to divide a message into two portions and how to
determine the percentage of each portion.” Ans. 3–4.
As to “a first portion” and “a second portion,” Appellant contends that
“anyone skilled in the art would understand what a ‘first portion’ and a
‘second portion’ of a ‘single electronic message’ are in light of the
specification.” Appeal Br. 20.We agree with the Appellant that a skilled
artisan would understand the metes and bounds of those claim terms. At
least in figure 3G, supra, and paragraphs 85–86 and 114, Appellant’s
Specification describes with specificity the claimed transcribed textual
message 332 within a first portion of the single electronic message, and the
playback control 334 within a second portion of the single electronic
message, such that a skilled artisan at the time of Appellant’s invention
would understand the claim language. Furthermore, the Examiner’s rationale
as to how to divide the message into two portions and how to determine a
percentage for each portion, are not relevant to an indefiniteness inquiry
under 35 U.S.C. § 112(b). As long as those of ordinary skill in the art would
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understand that the single electronic message contains a first portion and a
second portion, 35 U.S.C. § 112 (b), requires nothing more. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986).
As such, we conclude that the skilled artisan, upon reading the claims
in light of the Specification, would be able to ascertain the scope of the
claimed invention, specifically the terms “first portion” and “second
portion” recited in claim 1. Thus, we do not sustain the Examiner’s rejection
of claims 1–20 under 35 U.S.C. § 112 (b).
C. 35 U.S.C. § 103 – Obviousness
Claim 1 recites, inter alia: “a playback control associated with the
recorded message within a second portion of the single electronic message.”
The Examiner finds that Doulton teaches activating a normal audio-
based voicemail playback function. Final Act. 5; Ans. 5 (quoting Doulton
¶ 111). The Examiner additionally finds that because “the ‘second portion’
of the playback control in the message is unclear,” (Ans. 16) the cited
portion of Doulton teaches the above claim limitation. Id.
Appellant contends that the rejection is in error because Doulton
describes “a feature where, after highlighting a transcribed voicemail, ‘it is
possible, just by pressing and holding a given key (in this illustration, key
‘1’) to activate the normal audio-based voicemail playback function.’”
Appeal Br. 16 (quoting Doulton ¶ 111). In particular, Appellant argues:
[p]ressing and holding a key to activate a playback function, as taught
by Daulton [sic], is not the same as a playback control within a
second portion of a single electronic message added to a
communication thread, as presently claimed. Rather, accessing
voicemail by pressing the “1” key is a generic method of accessing all
voicemails. Furthermore, “pressing the ‘1’ key” is completely
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unassociated with any portion of any electronic message.
Appeal Br. 16 (citation omitted; emphasis added).
As discussed in § B, supra, we disagree with the Examiner that
“second portion” of the single electronic message is unclear.
Figure 7 of Doulton, which is described in Doulton ¶ 111, is
reproduced below, with annotations and dashed boxing to indicate features
that the Examiner has mapped to the claimed playback control and electronic
message:

Figure 7 of Doulton, above, illustrates a mobile telephone displaying a
list of text messages in a messages in-box. Doulton ¶ 43.
We agree with Appellant that Doulton teaches that the playback
control is a button (shown in annotated dashed box in Fig. 7 of Doulton
above) that is not “within a second portion of the single electronic message”
Playback control
Electronic
message
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the electronic message, as required by claim 1. Appeal Br. 16; Doulton Fig.
7.
For the foregoing reasons, we agree with Appellant that Doulton does
not teach “a playback control… within a second portion of the single
electronic message,” as required by claim 1.
Claim 1 additionally recites: “a single electronic message comprising:
the transcribed textual message within a first portion of the single electronic
message; and a playback control associated with the recorded message
within a second portion of the single electronic message.”
The Examiner finds that Shaw teaches a single electronic message in
the form of a text file and an audio file that are sent together. Final Act. 5;
Ans. 15–16.
Appellant disagrees, arguing that the teaching in Shaw of “[p]roviding
two separate files is not the same as providing a single electronic message.”
Reply Br. 5.
In response, the Examiner explains:
the argued “first portion of transcribed text” and the “second portion
of a playback control” features are unclear. These feature [sic] are
also rejected under 35 USC §112. For example, it is unclear if a
message with an attachment is considered having a first portion, i.e.,
message, and a second portion, i.e., an attachment. Because the
Specification of the present invention does not provide a description
of these elements, i.e., a first portion and a second portion of a
message, it is difficult to construe the feature as recited and therefore
“the subscriber should receive both an audio file and a text file, then
both the audio and text are delivered” of Shaw is cited until further
clarification [is] provided.

Ans. 15–16 (emphases added).
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Appellant further contends that the Examiner’s reliance on the
indefiniteness rejection of claim 1 does not allow the Examiner to “ignore
elements of a claim,” specifically, a single electronic message as claimed.
Id.
Appellant does not dispute that Shaw teaches sending two separate
files. See Final Act. 5 (quoting Shaw ¶ 37: “receive the text transcription
together with the audio file,” “both an audio file and a text file, then both
audio and text are delivered”); Ans. 15–16 (discussing a message and
attachment as a permissible interpretation of single electronic message);
Reply Br. 5–6. However, we are persuaded by Appellant’s argument
challenging the Examiner’s finding that Shaw’s teaching of sending an audio
file and a text file together, constitutes a single electronic message.
In particular, we determine that the Examiner’s claim construction—
that a single electronic message encompasses two files sent together—is not
supported by a broad but reasonable interpretation of the claim language in
view of Appellant’s Specification. Appellant’s Figure 3G, annotated and
discussed in § A, supra, shows the claimed single electronic message.
Specifically, Appellant’s electronic message #308’ is one unitary message.
See Fig. 3G. Appellant’s Specification further describes, at least in pertinent
part: “[i]n one or more embodiments, adding the transcribed textual message
332 and a playback control 334 to the communication thread 306 can
include adding an electronic communication 308a’ to the communication
thread 306 that includes both the transcribed textual message 332 and the
playback control 334.” Spec. ¶ 114 (emphases added).
The Examiner does not provide support for the proffered claim
construction other than a misplaced reliance on the indefiniteness rejection
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for the claimed first portion and second portion. See Ans. 15–16. Therefore,
based on the evidence before us, we determine that the broadest reasonable
interpretation of the claim language does not permit the Examiner’s
interpretation that the audio file and the text file of Shaw constitute a “single
electronic message,” as required by claim 1.
For the foregoing reasons, we agree with Appellant that the
Examiner’s proposed combination does not teach or suggest the disputed
limitations of claim 1, or independent claims 5 and 17 which recite similar
features. Thus, we do not sustain the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 103 (a). Because these determinations resolve the appeal
with respect to claims 1, 5, and 17, and their respective dependent claims,
we need not address Appellant’s other arguments.

CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 112(a) Written Description 1–20
1–20 112(b) Indefiniteness 1–20
1–7, 16–18 103 Doulton, Shaw 1–7,16–18
8–10, 19,
20
103 Doulton, Shaw,
Goguen
8–10, 19,
20
11–15 103 Doulton, Shaw,
Gouguen, Milstein
11–15
Overall
Outcome
1–20
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REVERSED