2020002954 (P.T.A.B. Oct. 27, 2021)

International Business Machines Corporation

Patent Trials and Appeals BoardOct 27, 2021

2020002954 (P.T.A.B. Oct. 27, 2021)

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. 15/234,020 08/11/2016 Yuka Nomura JP920160006US1 7571 103751 7590 10/27/2021 IBM Corporation - Patent Center 1701 North Street B/256-3 Endicott, NY 13760 EXAMINER CHOI, YUK TING ART UNIT PAPER NUMBER 2153 NOTIFICATION DATE DELIVERY MODE 10/27/2021 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): rocdrctr@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YUKA NOMURA, DAISUKE TOMODA, and HIROKI YOSHINAGA ____________________ Appeal 2020-002954 Application 15/234,020 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOYCE CRAIG, Administrative Patent Judges. Opinion for the Board filed by FRAHM, Administrative Patent Judge. Opinion Dissenting-in-part filed by NAPPI Administrative Patent Judge DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 5–9, 11, 12, 14–16, 19, and 21–27, which constitute all the claims pending in this application. Claims 3, 4, 10, 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as International Business Machines Corporation (Appeal Br. 2). Appeal 2020-002954 Application 15/234,020 2 13, 17, 18, and 20 have been canceled (see Appeal Br. 13, 15, 17). We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. STATEMENT OF THE CASE Disclosed Invention and Exemplary Claim Appellant’s disclosed invention, entitled “Displaying Content Based on a User’s Status” (see Title), “relates generally to the field of data processing” (see Spec. ¶ 1). More particularly, Appellant’s disclosed and claimed invention concerns the storage and display of parsed content of a webpage accessed using a web browser (see Spec. ¶ 3; Figs. 1, 2, 5; claims 1, 8, 15). In one exemplary embodiment, Appellant recognizes that when a user receives a webpage while on a train, certain information (e.g., audio or video) that may be loud and/or offensive to others can be stored for later viewing (e.g., while at home) (see Spec. ¶ 43). Exemplary independent claim 1 under appeal, with emphases and bracketed lettering added to key portions of the claim at issue, reads as follows: 1. A processor-implemented method for dynamically storing and displaying portions of parsed content of a webpage, the processor implemented method comprising: receiving the webpage from a network server; parsing content of the received webpage; collecting a first set of contextual data from one or more sources; identifying whether a first relationship exists between the collected first set of contextual data and the parsed content by satisfying a first threshold; responsive to the identifying being true: determining the first portion of the parsed content as a portion of the parsed content for which the first Appeal 2020-002954 Application 15/234,020 3 relationship exists, and a second portion of the parsed content that does not include the first portion; [A] at a current time of the identifying: [A1] storing, and not displaying, only the first portion, in a database; and [A2] displaying, and not storing in the database, only the second portion; and at a future time after the identifying: displaying the web page with the first portion of the parsed content and not the second portion; responsive to the identifying being false: displaying, at the current time, the webpage with the parsed content. Appeal Br. 12, Claims App. (emphases and bracketed lettering added). Independent claims 8 (computer system) and 15 (computer program product with program instructions) recite limitations commensurate in scope with claim 1 The Examiner’s Rejections (1) Claims 1, 2, 6, 8, 9, 15, 16, 21, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Kennedy et al. (US 2010/0169340 A1; published July 1, 2010) (hereinafter, “Kennedy”) and Wang et al. (US 9,298,786 B1; issued March 29, 2016) (hereinafter, “Wang”).2 Final Act. 4–10. (2) Claims 5, 12, 19, 24, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Kennedy and 2 The Examiner mistakenly lists claim 13 as being included in this rejection (see Final Act. 4, heading of the statement of the rejection; see also Final Act. 9, discussing claim 13 on the merits). As claim 13 has been canceled (see Appeal Br. 15), we consider this harmless error, as claim 13 is no longer pending on appeal. Thus, we only consider claims 1, 2, 6, 8, 9, 15, 16, 21, and 25 to be rejected over Kennedy and Wang and before us on appeal. Appeal 2020-002954 Application 15/234,020 4 Wang, further in view of Bellotti (US 2010/0138416 A1; published June 3, 2010). Final Act. 10–11. (3) Claims 7, 11, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Kennedy and Wang, further in view of Shishido et al. (US 2015/0170041 A1; published June 18, 2015) (hereinafter, “Shishido”).3 Final Act. 11–12. (4) Claim 22 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Kennedy and Wang, further in view of Csomai et al. (US 2010/0145678 A1; published June 10, 2010) (hereinafter, “Csomai”). Final Act. 13–14. (5) Claims 23 and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Kennedy and Wang, further in view of Fateh (US 2014/0062865 A1; published March 6, 2014). Final Act. 10–11. Appellant’s Dispositive Contentions Appellant contends (see Appeal Br. 7–9; Reply Br. 3–7) the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) based on the failure of Wang, and thus the base combination of Kennedy and Wang, to teach or suggest storing and displaying portions of parsed content as set forth in limitations A1 and A2 of claim 1. Appellant relies on the arguments presented as to claim 1 for the patentability of remaining independent claims 3 We note the Examiner incorrectly lists Shishido as US 2005/0170041 (which is a reference to Abraham et al. dealing with chewing gum compositions) in the Final Rejection (see Final Act. 11). We consider this harmless error, as Shishido is correctly listed on the form PTO-892, Notice of References Cited (see item D on the list of U.S. Patent Documents), mailed out with the Non-Final Rejection on June 6, 2018. Appeal 2020-002954 Application 15/234,020 5 8 and 15, as well as dependent claims 2, 6, 9, 13, 16, 21, and 25, which are also rejected over Kennedy and Wang. Appellant also contends (see Appeal Br. 9–10; Reply 7–8) the Examiner erred in rejecting claim 23 under 35 U.S.C. § 103(a) based on the failure of Fateh, and thus the combination of Kennedy, Wang, and Fateh to teach or suggest contextual information being a facial expression, as recited in claim 23. Under the heading for arguments presented as to Kennedy, Wang, and Fateh, Appellant addresses only the facial expression limitation of claim 23, and not the user sleep time limitation of claim 27 (see Appeal Br. 9–10; Reply Br. 7–8). Because Appellant does not present any separate arguments as to the obviousness rejections of (i) claims 5, 12, 19, 24, and 26 (see supra Rejection 2); (ii) claims 7, 11, and 14 (see supra Rejection 3); (iii) claim 22 (see supra Rejection 4); and/or (iv) claim 23 (see supra Rejection 5). Appellant has not shown that the Examiner erred in rejecting claims 5, 7, 11, 12, 14, 19, 22, 24, 26, and 27. Therefore, we sustain the obviousness rejections of claims 5, 7, 11, 12, 14, 19, 22, 24, 26, and 27, pro forma. Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010) (“Precedential”) (“[T]he Board will generally not reach the merits of any issues not contested by an appellant.”); 37 C.F.R. § 41.37 (c)(1)(iv) (Each ground of rejection must be treated under a separate heading.). Other than including the prior art rejections of claims 5, 7, 11, 12, 14, 19, 22, 24, 26, and 27 (see supra Rejections 2–5) in our conclusion, we will not discuss these rejections further. Appeal 2020-002954 Application 15/234,020 6 Principal Issues on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 7– 11) and the Reply Brief (Reply Br. 3–9), the following two principal issues are presented on appeal: (1) Did the Examiner err in rejecting claims 1, 2, 6, 8, 9, 15, 16, 21, and 25 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kennedy and Wang, because Wang, and thus the combination of Kennedy and Wang, fails to teach or suggest limitations A1 and A2, as recited in claim 1, and commensurately recited in remaining independent claims 8 and 15? (2) Has Appellant shown the Examiner erred in rejecting claim 23 under 35 U.S.C. § 103(a) as being unpatentable over the base combination of Kennedy and Wang, further in view of Fateh, because Fateh, and thus the combination of Kennedy, Wang, and Fateh, fails to teach or suggest contextual information being “based on an item selected from the group consisting of heartrate, and facial expression,” as recited in claim 23? ANALYSIS We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 7– 10; Reply Br. 3–8), the Examiner’s rejection as to claims 1, 8, 15, and 23 (Final Act. 4–8), and the Examiner’s response (Ans. 4–10) to Appellant’s arguments in the Appeal Brief. We are persuaded by Appellant’s contentions that the Examiner has not sufficiently shown that Wang teaches or suggests the subject matter recited in limitations A1 and A2 of claim 1, and the commensurate limitations found in independent claims 8 and 15 (see Appeal Br. 7–9; Reply Br. 3–7). However, Appellant’s contentions that Appeal 2020-002954 Application 15/234,020 7 Fateh fails to teach or suggest the subject matter recited in claim 23 (see Appeal Br. 9–10; Reply Br. 7–8), are not persuasive. Our reasoning follows. The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n o f U. S . Inc . v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal quotation marks and citation omitted); see Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Issue 1: Claims 1, 8, and 15 In this light, and in view of the Examiner’s explanations as to the basis for the rejection of claims 1, 8, and 15 (see Final Act. 4–8; Ans. 4–10), it is clear the Examiner relies on Wang as teaching limitations A1 and A2 of claim 1, and the commensurate limitations of claims 8 and 15 (see Final Act. 6–7). However, Wang clearly discloses re-presentation of content, after an initial presentation. Therefore, Wang cannot disclose, teach, or suggest what is claimed, namely “storing, and not displaying, only the first portion, in a database” (claim 1, limitation A1) “at a current time of the identifying” (limitation A), while also “displaying, and not storing in the database, only the second portion” (claim 1, limitation A2) at the same current time. Because Wang discloses the opposite of limitation A1, i.e., re- presenting content that has already been displayed, Appellant’s arguments Appeal 2020-002954 Application 15/234,020 8 that Wang fails to teach or suggest limitation A1 are persuasive. At best, the Examiner leaves us to speculate as to how or why one of ordinary skill in the art would modify Wang to meet limitations A, A1, and A2 recited in claim 1, and the commensurate limitations recited in claims 8 and 15. See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). In view of the foregoing, Appellant has shown the Examiner erred in rejecting claims 1, 8, and 15 under 35 U.S.C. § 103(a) over the combination of Kennedy and Wang, because Wang fails to teach or suggest limitations A1 and A2 as recited in claim 1, and as commensurately recited in independent claims 8 and 15. Issue 2: Claim 23 In rejecting claim 23, in addition to the arguments discusses above for claim 1, the Examiner relies upon Fateh’s paragraphs 152 and 155 (see Final Act. 15) as teaching or suggesting the limitation, “contextual data is based on an item selected from the group consisting of heartrate and facial expressions.” The Examiner finds (see Ans. 10), erroneously, that Fateh’s “facial recognition algorithm” (see Fateh ¶ 152) used for facial recognition teaches or suggests the recited contextual data based on facial expression. Recognizing a face as matching to a particular person is not the same as recognizing a facial expression (e.g., frowning, crying, smiling, etc.). Therefore, Appellant’s arguments that Fateh’s facial recognition does not teach or suggest the recited “facial expressions” of claim 23 (see Appeal Br. 10; Reply Br. 7–8) are persuasive Appeal 2020-002954 Application 15/234,020 9 However, as the Examiner finds (see Final Act. 15), Fateh’s paragraph 155 explicitly discloses, teaches, and suggests using heartrate as contextual data. Therefore, because claim 23 is claimed in the alternative, and only the presence of one of the two alternatives is required by the claim language, Fateh’s disclosure of contextual data being heartrate information (see Fateh ¶ 155) satisfies the claim. In view of the foregoing, Appellant’s contentions that Fateh fails to teach or suggest the limitation of claim 23 (see Appeal Br. 9–10; Reply Br. 7–8) are not persuasive, and Appellant has not shown the Examiner erred in rejecting claim 23 under 35 U.S.C. § 103(a) over the combination of Kennedy, Wang, and Fateh. Summary As a result, based on the record before us, Appellant has shown the Examiner erred in rejecting independent claims 1, 8, and 15, and thus claims 2, 6, 9, 16, 21, and 25 depending respectively therefrom, under 35 U.S.C. § 103(a). We cannot sustain the Examiner’s obviousness rejection of claims 1, 2, 6, 8, 9, 15, 16, 21, and 25 over the combination of Kennedy and Wang. Based on Appellant’s arguments as to claim 23, Appellant has not shown the Examiner erred in rejecting claim 23 under 35 U.S.C. § 103(a), and we sustain the Examiner’s obviousness rejection of claim 23 over the combination of Kennedy, Wang, and Fateh. In the Event of Further Prosecution We have decided the appeal before us. However, should there be further prosecution of claims 1, 8, and 15, which recite limitations A, A1, and A2 (see e.g., claim 1), the Examiner’s attention is directed to 35 U.S.C. § 112(a), for consideration of whether these limitations have written Appeal 2020-002954 Application 15/234,020 10 description support in Appellant’s Specification as originally filed (see, e.g., Spec. ¶¶ 30–35, 42, 43; Fig. 2, especially steps 210–214). In the Summary of the Claimed Subject Matter section of the Appeal Brief (see Corrected Appeal Br. 2), Appellant points to Figure 2 (step 214) and paragraph 34 of the Specification for support for limitations A, A1, and A2 (see e.g., claim 1). Notably, in the Appellant’s Amendment filed April 8, 2019, when this language was added to the claims, Appellant pointed generally to Figure 2 and paragraphs 30–35, 42, and 43 of the Specification for support for the amendments (see Appellant’s Amendment filed April 8, 2019, p. 11). In addition, any further amendment added during further prosecution (e.g., the “initially displayed at a time of the identifying” language added to the determining step in the July 2, 2019 amendment after final which was not entered) should also be checked for written description support in the Specification by the Examiner in the first instance. We also leave it the Examiner in the event of further prosecution, including any review prior to allowance, to consider a rejection under 35 U.S.C. § 101 under the Director’s 2019 Revised Guidance. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. DECISION SUMMARY Appeal 2020-002954 Application 15/234,020 11 For all of the reasons above, we hold as follows: In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6, 8, 9, 15, 16, 21, 25 103(a) Kennedy, Wang 1, 2, 6, 8, 9, 15, 16, 21, 25 5, 12, 19, 24, 26 103(a) Kennedy, Wang, Bellotti 5, 12, 19, 24, 26 7, 11, 14 103(a) Kennedy, Wang, Shishido 7, 11, 14 22 103(a) Kennedy, Wang, Csomai 22 23, 27 103(a) Kennedy, Wang, Fateh 23, 27 Overall Outcome 5, 7, 11, 12, 14, 19, 22– 24, 26, 27 1, 2, 6, 8, 9, 15, 16, 21, 25 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 IN PART Appeal 2020-002954 Application 15/234,020 12 Nappi, Administrative Patent Judge, dissenting in part. I agree with and join the Majority’s decision except with respect to the portion of the decision affirming the Examiner’s rejection of claims 5, 7, 11, 12, 14, 19, 22 through 24, 26, and 27 under 35 U.S.C. § 103. The Examiner’s rejections of these dependent claims similarly rely upon the combination of Kennedy and Wang to teach the limitations of independent claims 1, 8 and 15. The Examiner has not shown that the additional teachings of Bellotti, or Shishido, or Cosomal, or Fateh, remedy the deficiency in the rejection of independent claims 1, 8 and 15, identified in the majority opinion. Therefore, the rejections of 5, 7, 11, 12, 14, 19, 22 through 24, 26, and 27 suffer from the same deficiency and I would not sustain the Examiner’s rejections of claims 5, 7, 11, 12, 14, 19, 22 through 24, 26, and 27 under 35 U.S.C. § 103 for the same reasons as claims 1, 8 and 15.