Katrina Parrott et al.

Patent Trials and Appeals Board

Jan 1, 2021

2019006216 (P.T.A.B. Jan. 1, 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.
15/080,533 03/24/2016 Katrina Parrott IDIV/0004USC01 3012
26290 7590 01/01/2021
PATTERSON + SHERIDAN, L.L.P.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
KELLS, ASHER
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
01/01/2021 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):
PSDocketing@pattersonsheridan.com
pair_eofficeaction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATRINA PARROTT and KATY PARROTT
Appeal 2019-006216
Application 15/080,533
Technology Center 2100
Before LARRY J. HUME, IRVIN E. BRANCH, and NABEEL U. KHAN,
Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 8–14. See Final Act. 1. On October 8,
2020, an oral hearing was held in this appeal. A transcript of the hearing has
been added to the record. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We refer to the Specification, filed March 24, 2016 (“Spec.”); Final Office
Action, mailed June 14, 2018 (“Final Act.”); Appeal Brief, filed
February 22, 2019(“Appeal Br.”); Examiner’s Answer, mailed June 20, 2019
(“Ans.”); and Reply Brief, filed August 20, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as real parties in
interest for this appeal are inventors Katrina Parrott and Katy Parrott.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant states “the present invention provides a method of
embedding, transferring and communicating custom generated emojis/
emoticons having unique physical features.” Spec. Abstract. In particular,
the claims relate to diverse emoji having different skin tones.
Claim 8, reproduced below with disputed limitations emphasized in
italics, is illustrative of the claimed subject matter:
8. A method for providing diverse emoji, comprising:
presenting on a mobile device a plurality of diverse emoji
for selection, the plurality of diverse emoji having different skin
tones;
receiving a selection of at least two of the diverse emoji;
receiving a request to insert at least two images in a
message, wherein the images are the selected diverse emoji;
inserting references to the at least two selected diverse
emoji in the message; and
outputting the message for transmission to a recipient.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Moore
Brown
Smillie
Kennard
Edberg3
US 2010/0125811 A1
US 2012/0059787 A1
US 2014/0243670 A1
US 2014/0303964 A1
“Variation selectors
for Emoji skin tone”
May 20, 2010
Mar. 8, 2012
Aug. 28, 2014
Oct. 9, 2014
Aug. 3, 2014

3 Available at: https://www.unicode.org/L2/L2014/14173-emoji-skin-
tone.pdf
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REJECTIONS
Claims 8-14 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 4
Claims 8-14 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Final Act.
4–6.
Claims 8-14 are rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Moore and Edberg and also as unpatentable over the
combination of Moore, Kennard, Brown, and Smillie. Final Act. 6–9
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
To the extent consistent with our analysis herein, we adopt as our own
the findings and reasons set forth by the Examiner in (1) the action from
which this appeal is taken (Final Act. 4–9), and (2) the Examiner’s Answer
in response to Appellant’s Appeal Brief (Ans. 3–14), and we concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
35 U.S.C. § 112(a)
The Examiner finds “there does not appear to be adequate support for
the newly amended/added limitation ‘inserting references to the at least two
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selected diverse emoji in the message.’ Applicant has not provided support
for the amendment and it is not apparent that the originally filed
specification discloses such a limitation.” Final Act. 4 (referring to
US Provisional 62/048,691, filed Sept. 10, 2014). The Examiner rejects all
claims accordingly.
Appellant argues claims 8–14 collectively as follows:
Applicant has provided implicit and inherent disclosure,
and arguably express disclosure, supporting the claimed subject
matter, including “inserting references to the at least two selected
diverse emoji in the message.” The ‘691 Application and the
pending application describe methods and systems for
transmitting diverse emoji in messages. One of ordinary skill in
the art would inherently understand that transmitting emoji in a
message includes inserting references to the emoji in the
message.
The ‘691 Application states that “[w]ith just a push of the
button, you can easily text or email these emoticons all over the
world. iDiversicons are compatible with iPhone, iPad, and iPod
touch, requiring iOS 6.0 or later. The Android Native App was
released in the Google Play Store for the Android devices and
tablets.” ‘691 Application as filed, Page 4 of 10, lines 6–9.
Additionally, the Application describes an “emotion icon
directory” or “emoji directory” that includes more than 900
emoji to choose from. ‘691 Application as filed, Page 4 of 10,
lines 14–30, and Page 5 of 10, lines 23-24. Applicant also
described instructions for using the methods and systems for
transmitting diverse emoji. See ‘691 Application as filed, Page 6
of 10, line 19 - Page 7 of 10, line 22. Even further, Applicant
incorporated by reference YouTube informational videos. See
Application as filed, Page 7 of 10, line 25–26. Those of ordinary
skill in the art would understand that such a disclosure at least
implies (and arguably expressly describes) that the disclosed
methods and systems include inserting references to the at least
two selected diverse emoji in the message. The subject matter of
the pending claims was sufficiently described in the ‘691
Application in such a way to reasonably convey to one skilled in
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the relevant art that the inventor or a joint inventor, at the time
the application was filed, had possession of the claimed subject
matter. Claims 8–14 thus comply with the written description
requirement of section 112.
Appeal Br. 7–8.
The Examiner argues as follows:
Appellant alleges that the provisional application provides
“arguable express disclosure” for the claimed limitation of
inserting references to at least two selected diverse emoji in a
message. App. Br. at 7. Appellant points to various portions of
the provisional application in support of this allegation: page 4
lines 6–9; page 4 lines 14–30; page 5 lines 23–24; and page 6
line 19 – page 7 line 22. However, none of the cited portions of
the specification mention inserting references to an emoji in a
message. Accordingly, it is clear that there is no express
disclosure of the argued limitation in the provisional application.
Additionally, Appellant references two YouTube videos
as supporting a written description of the argued limitation.
However, a non-patent publication may only be incorporated by
reference if it serves as nonessential material. 37 C.F.R.
§ 1.57(d)–(e). Nonessential material cannot be relied upon to
provide a written description of the claimed invention. See MPEP
§ 608.0l(p)(l)(A). Therefore, the YouTube videos, since they are
incorporated as nonessential material, cannot be relied upon to
show written description of the argued limitation.
Ans. 3–4.
Appellant argues that inserting references to at least two
selected emoji in a message is inherently disclosed since
“transmitting emoji in a message includes inserting references to
the emoji in the message.” App. Br. at 7. lnherency requires
extrinsic evidence clarifying that missing descriptive matter is
necessarily present in the reference. In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). Appellant
has provided no extrinsic evidence whatsoever. Furthermore,
Appellant’s allegation that transmitting emoji in a message
necessarily requires inserting references to the emoji in the
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message is false. Indeed, the provisional application suggests
that the emoji images themselves (and therefore not references to
the emoji) are inserted in the message. Prov. App. at 6-7.
Ans. 4.
Even assuming arguendo there is express, implicit, or
inherent mention of “inserting references to the at least two
selected diverse emoji in the message” in the provisional
application, the provisional application fails to sufficiently
identify how this function is performed. Specifically, the
provisional application does not adequately describe an
algorithm that achieves the claimed functionality in sufficient
detail. See Examining Computer- Implemented Functional Claim
Limitations for Compliance With 35 U.S.C. 112, 84 Fed. Reg. 4,
61 (Jan. 7, 2019).
Ans. 4–5.
With respect to the last point, Appellant contends as follows:
Finally, the Office has asserted that the provisional application
does not disclose a sufficiently detailed algorithm. The Office’s
assertion, however, wholly ignores the fact that Appellant’s
originally-filed specification includes the necessary steps and
instructions for using the methods and systems for transmitting
diverse emoji. See ‘691 Application as filed, Page 6 of 10, line
19 – Page 7 of 10, line 22; see also MPEP 2161.
Reply Br. 3.
We are unpersuaded of error at least because Appellant does not
address the Examiner’s finding that “the provisional application fails to
sufficiently identify how [the function of inserting references to the at least
two selected diverse emoji in the message] is performed.” Ans. 4–5.
According to the MPEP, “[i]t is not enough that one skilled in the art could
write a program to achieve the claimed function because the specification
must explain how the inventor intends to achieve the claimed function to
satisfy the written description requirement.” MPEP 2161.01 (citing
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Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683
(reversing and remanding the district court’s grant of summary judgment of
invalidity for lack of adequate written description where there were genuine
issues of material fact regarding “whether the specification show[ed]
possession by the inventor of how accessing disparate databases is
achieved”)).
We have reviewed identified portions of the ’691 Provisional
Application (p. 6 of 10, l. 19–p. 7 of 10, l. 22). Similar to the situation in
Vasudevan, Appellant has not directed us to where in the ’691 Provisional
Application there exists an algorithm that sufficiently identifies how
“inserting references to the at least two selected diverse emoji in the
message” is performed. Rather, at the cited location, the ‘691 Provisional
Application describes the user functions, but it fails to disclose the function
of “inserting references.” See ’691 Provisional Application 6 of 10, l. 19–p.
7 of 10, l. 22.
Accordingly, because we are unpersuaded of error in the Examiner’s
finding “the provisional application does not adequately describe an
algorithm that achieves the claimed functionality in sufficient detail,” we
sustain the Examiner’s rejection of all pending claims as lacking written
description support under 35 U.S.C. § 112(a).
35 U.S.C. § 101
Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Prong One of Step 2A
Under prong one of step 2A, we first look to whether the claim recites
any judicial exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activities, or
mental processes). 2019 Revised Guidance, 84 Fed. Reg. at 52–54. Claim 8
recites “[a] method for providing diverse emoji,” which includes “presenting
. . . a plurality of diverse emoji for selection, the plurality of diverse emoji
having different skin tones,” “receiving a selection of at least two of the
diverse emoji,” “receiving a request to insert at least two images in a
message, wherein the images are the selected diverse emoji,” “inserting
references to the at least two selected diverse emoji in the message,” and
“outputting the message for transmission to a recipient.” The Examiner
finds, and we agree, “the claim is directed to a process that may be
performed ‘in the human mind’ or ‘by a human using a pen and paper.’”
Final Act. 5, (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011)). In particular, the Examiner finds presenting
emoji having different skin tones “[is] directed to the abstract idea of
graphical representation of humans with varying skin tones,” which “is
similar to concepts courts have previously . . . found to be abstract ideas.”)
Id. at 5 (citing, e.g., Intellectual Ventures I LLC v. Capital One Bank {USA},
792 F.3d 1363 (Fed. Cir. 2015) (wherein the Federal Circuit held that
customizing information and presenting it to a user based on user
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information and navigation data was an abstract idea) and Coffelt v. Nvidia
Corp., CAFC Appeal No. 2017-1119 (Fed. Cir. 2017) (wherein the Federal
Circuit held that a claimed process for selecting a color for a portion of a
digital image was an abstract idea)).
We agree with the Examiner that the process may be performed using
a pen and paper because a person can present a piece of paper have a
plurality of diverse emoji that have different skin tones, a person can then
receive a selection of at least two of the diverse emoji, and can receive a
request to insert the selected diverse emoji. The person can then insert
references to the at least two selected diverse emoji into a message by
writing the references on a piece of paper and then hand the paper off, which
amounts to “outputting the message for transmission to a recipient.”
Appellant argues the Office has not indicated which elements of the
claims are directed to an abstract idea. Appeal Br. 17. We agree with the
Examiner that “[t]his allegation is without merit” because “[t]he final Office
action dated 14 June 2018 clearly and specifically indicates that the claim
elements dealing with the presentation of emoji having different skin tones
are directed to an abstract idea.” Ans. 7; see Final Act. 4.
Prong Two of Step 2A
Under prong two of step 2A of the Guidance we determine whether
the claim as whole integrates the recited abstract idea into a practical
application of the abstract idea. A claim that integrates a judicial exception
into a practical application will apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception. To evaluate whether the claims integrate the abstract
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idea into a practical application, we identify whether there are any additional
elements recited beyond the abstract idea, and evaluate those additional
elements individually and in combination. Some exemplary considerations
laid out by the Supreme Court and the Federal Circuit indicative that an
additional element integrates an abstract idea into a practical application
include (i) an improvement in the functioning of a computer or to another
technological field, (ii) an application of the judicial exception with, or by
use of, a particular machine, (iii) a transformation or reduction of a
particular article to a different state or thing, or (iv) a use of the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment. See MPEP
§ 2106.05(a)–(c), (e)–(h).
Reviewing the claim limitations as a whole, we determine the claim
does not recite additional elements that integrate the abstract idea into a
practical application. In particular we find that the claim limitations do not
improve the functioning of a computer or other technological field. Instead
the technological elements of the claim simply link the mental processes to
the technological environment of “a mobile device.” We determine,
however, simply placing the abstract idea into the context of a mobile device
(and only the first limitation of “presenting” is recited as being on the mobile
device) fails to indicate any improvement to computer technology or other
technical field. Indeed, this element is discussed at only a high level of
generality in the Specification. For example, the Specification states that
“the software application is installed on a smart phone or other suitable
mobile device.” Spec. ¶ 27. This demonstrate that the recited “mobile
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device” is described at a high level of generality and serves only to link the
claimed abstract idea to the technological environment of mobile devices.
Appellant contends the claimed invention provides a technical
solution to the problem of “developing, transferring, and communicating
with emojis that are representative of people of color.” Appeal Br. at 9. We
find this arguments unpersuasive. Rather, we agree with the Examiner that
the problem of emojis not representing people of color is a social
problem, not a technical problem. There is no technical
challenge in including emojis in an electronic message. See Final
Act. at 5. An emoji is merely an image, and thus may be drawn
to depict any conceivable object, such as people of color. Thus,
the inclusion of emojis representing people of color in an
electronic message is not a technical solution to a technical
problem.
Ans. 5.
Appellant also argues the claimed invention provides several
improvements in computer technology, including that the claimed invention
is more user-friendly, fluid, and faster to use. Appeal Br. at 9, 14. Appellant
also argues the claimed invention includes the ability to import to social
media. Id. at 9–10. Appellant also argues the claimed invention uses
images that are “preferably smaller.” Id. at 10. We find these arguments
unpersuasive. Rather, we agree with the Examiner that “the claimed
invention does not recite a technological improvement” because “it is not
apparent how the claimed invention will actually effect these claimed
improvements. Displaying emoji with different skin tones has no apparent
relation to user-friendliness, fluidity, speed of use, ability of an application
to import into social media, or image size.” Ans. 5–6.
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Appellant also argues, like the claims in Visual Memory,6 “the current
claims also recite a technological improvement, namely enhanced methods
and systems for transmitting diverse emoji that allows for more user-
friendly, fluid and faster selection, delivery, and transmission of diverse
emoji having one of five skin tones.” Appeal Br. 14. Appellant also argues,
like the claims in SAP,7 “the pending claims are directed to a specific
manner by which diverse emoji are presented, selected and transmitted.” Id.
at 15.
We find these arguments unpersuasive because, as explained by the
Examiner, “Appellant’s claims are not directed to improving the
functionality of a computer. Instead, Appellant’s claims are directed to
using a generic [mobile device] to perform desired functionality.” Ans. 6.
We also agree with the Examiner that “the claims are actually directed to a
general result, not a specific manner of achieving a result. For instance, the
claims do not explain how the emoji are presented, how the user selects
emoji, and how a reference to an emoji is inserted into a message.” Id.
We also agree with the Examiner that “Appellant does not challenge
the Office's finding that the abstract idea of graphical representation of
humans with varying skins tones is analogous to the concepts found to be
abstract ideas by the Federal Circuit in Intellectual Ventures I and Coffelt.”
Ans. 7; see Final Act. 5.
Accordingly, we do not find that the claims integrate the abstract idea
into a practical application.

6 Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).
7 SAP America, Inc. v. lnvestpic, LLC, 2018 U.S. App. LEXIS 12590 (Fed.
Cir., May 15, 2018).
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Step 2B of the Guidance
Under step 2B of the Guidance we analyze the claims to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
Considerations that are evaluated with respect to step 2B include
determining whether the claims as a whole add a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.
Appellant argues the Office has not indicated why the remaining
features of the claim would not constitute significantly more than the
abstract idea. Appeal Br. 17. We agree with the Examiner that “[t]his
allegation is without merit” because “[t]he final Office action dated 14 June
2018 explains that the remaining claim elements of receiving a selection of
emoji, inserting references to the selected emoji in a message, and outputting
the message are all well-understood, routine, and conventional activity
previously known to the industry.” Ans. 7; see Final Act. 5. The Examiner
correctly points out that “[t]he final Office action cites eight prior art
published patent applications in support of this reasoning.” Final Act. 7.
Accordingly, we sustain the Examiner’s rejection of independent
claims 8 under 35 U.S.C. § 101.
Dependent claims
We also sustain the Examiner’s rejection of dependent claims 9–14.
The Examiner finds the dependent claims “merely limit the skin tone of the
displayed diverse emoji to one of five colors” and “are simply directed to the
abstract idea of graphically presenting representation of humans with
varying skin tones.” Ans. 8; see Final Act. 4-6. Appellant does not
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persuasively rebut the Examiner’s analysis. See generally Reply Br. 7 (“this
shortcut of the analysis of the dependent claims is contrary to Federal Circuit
law and the clear examination requirements articulated in the M.P.E.P. See,
e.g., M.P.E.P. § 2106.07”).
35 U.S.C. § 103
Regarding the obviousness rejection of the pending claims, we review
the Examiner’s alternative rejection of claim 8 over the combined teachings
of Moore, Kennard, Brown, and Smillie. Because we find that claim 8 is
obvious over this combination, we do not reach the merits of the Examiner’s
rejection of the combined teachings of Moore and Edberg, including the
issue raised by Appellant’s arguments whether Edberg is prior art. Appeal
Br. 20–21; Reply Br. 8–9.
The Examiner finds as follows:
In Moore, a variety of different emoji may be presented on a
mobile device. Moore figs. 6A. Moore does not explicitly
disclose that the emoji may have different skin tones. . . .
Kennard teaches the use of “ethnic and cultural emoticons” in
mobile devices. Kennard ¶ 9. Additionally, Brown teaches that
emoticons may be customized to their color. Brown ¶ 39.
Finally, Smillie teaches the presentation of multiple icons
representing people in a range of skin colors. Smillie figs. 3–4.
. . . In Moore, multiple emoji may be selected. Moore ¶ 37. . . .
In Moore, based on the user selection of the emoji, the selected
emoji may be inserted in a message. Moore ¶ 37, fig. 6E. . . .
Outputting the message for transmission to a recipient. Moore
¶ 197. . . . it would have been obvious to one with ordinary skill
in the art at the time of the invention to modify Moore’s process
of presenting multiple diverse emoji with Kennard’s process of
using ethnic and cultural emoticons, Brown’s use of emoticons
customized by color, and Smillie’s simultaneous presentation of
multiple humanoid icons in a range of skin colors. Such a
modification would facilitate the inclusion of users of diverse
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racial and ethnic backgrounds by allowing for the selection of
emoji that reflect this variation. See Kennard ¶¶ 4–6.
Final Act. 6–8.
Appellant does not dispute the Examiner’s findings regarding Moore.
See generally Appeal Br. 20–23. Rather, Appellant argues Kennard
wholly fails to teach any skin tones associated with the
crowdsourced emoticons. Therefore, Kennard et al. cannot
teach, show, suggest, or otherwise render obvious a method for
providing diverse emoji, comprising presenting on a mobile
device a plurality of diverse emoji for selection, the plurality of
diverse emoji having different skin tones, receiving a selection
of at least two of the diverse emoji, receiving a request to insert
at least two images in a message, wherein the images are the
selected diverse emoji, inserting references to the at least two
selected diverse emoji in the message, and outputting the
message for transmission to a recipient.
Appeal Br. 21–22.
This arguments is unpersuasive because the Examiner relied on
Kennard only for “the use of ‘ethnic and cultural emoticons’ in mobile
devices,” which Appellant does not persuasively rebut. See Final Act. 6.
Accordingly, Appellant’s arguments do not address the Examiner’s
rejection. Appellant makes similarly arguments against Brown and Smillie,
which are unpersuasive because they do not squarely rebut the factual basis
upon which the Examiner’s rejection rests. See Appeal Br. 22–23.
Accordingly, we agree with the Examiner:
Appellant argues the prior art references individually, without
addressing the combined teachings. App. Br. at 21–23. A
showing of nonobviousness cannot be made by attacking
references individually where a rejection is based on a
combination of references. MPEP § 2145(1V). Accordingly,
Appellant's arguments are not persuasive. Nevertheless, the
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19
following rebuttal of Appellant's allegations as to the individual
references may be beneficial.
Ans. 11.
Appellant does not persuasively rebut the statement from the
Examiner’s Answer, quoted above. See generally Reply Br. 9–10. In view
of the foregoing, we sustain the Examiner’s rejection of claim 8 as obvious
over the combination of Moore, Kennard, Brown, and Smillie. We also
sustain the rejection of claims 9–14, which Appellant does not argue
separately, with particularity.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8–14 112(a) Written Description 8–14
8–14 101 Eligibility 8–14
8–14 103 Moore, Kennard,
Brown, Smillie
8–14
Overall
Outcome:
8–14
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED