Facebook, Inc.Download PDFPatent Trials and Appeals BoardApr 24, 202014308188 - (D) (P.T.A.B. Apr. 24, 2020) Copy Citation 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 Appeal 2019-001351 Application 14/308,188 2 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. Appeal 2019-001351 Application 14/308,188 3 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 Appeal 2019-001351 Application 14/308,188 4 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 Appeal 2019-001351 Application 14/308,188 5 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: Appeal 2019-001351 Application 14/308,188 6 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 Appeal 2019-001351 Application 14/308,188 7 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 Appeal 2019-001351 Application 14/308,188 8 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 Appeal 2019-001351 Application 14/308,188 9 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 Appeal 2019-001351 Application 14/308,188 10 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). Appeal 2019-001351 Application 14/308,188 11 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 Appeal 2019-001351 Application 14/308,188 12 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 Appeal 2019-001351 Application 14/308,188 13 REVERSED Copy with citationCopy as parenthetical citation