Madhavi Yemmela et al.

Patent Trials and Appeals Board

Oct 25, 2019

14885849 - (D) (P.T.A.B. Oct. 25, 2019)

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.
14/885,849 10/16/2015 Madhavi Yemmela 7841
135808 7590 10/25/2019
Artificial Perception Technologies, Inc.
10 Croton Dam Road
Croton On Hudson, NY 10520
EXAMINER
DESIR, PIERRE LOUIS
ART UNIT PAPER NUMBER
2659
MAIL DATE DELIVERY MODE
10/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MADHAVI YEMMELA and VALENTIN PETRAN
________________

Appeal 2018-005814
Application 14/885,849
Technology Center 2600
________________

Before JEAN R. HOMERE, JASON V. MORGAN, and
ADAM J. PYONIN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 2. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as one of the
co-inventors, Valentin Petran. Appeal Br. 1. Appellant further identifies
Valentin Petran as appealing the Examiner’s rejections pro se. Id. We
recognized that Appellant may be unfamiliar with patent prosecution
procedure. While Appellant may prosecute the application (unless the
Appeal 2018-005814
Application 14/885,849

2

Summary of the disclosure
Appellant’s claimed subject matter relates to software that “uses text
to speech technology to perform electronic screenplays, including plays
depicting debates, multi-lingual conversations, and scientific conference
presentations, using one or more distinctly identifiable voices.” Abstract.
Appellant’s claims2
1. A method for creating, storing, editing, and consuming, a
new kind of technical education media, ( that can be passively
enjoyed like an audio recording or movie, but that can be aimed
at a larger and more diverse audience than a book, audio
recording or movie, and that is less likely to bore, tire or
confuse that broader audience, and is less likely to be
misunderstood by the members of that broader audience, than a
book, audio recording or movie, and ) which is comprised of
performing the below described steps in any order, including in
parallel:
creating a media authoring environment, comprised of a
computer system and non-transitory computer readable media
onto which have been recorded machine readable instructions,
that provide that authoring environment with functionality that

application is assigned to a juristic entity; see 37 C.F.R. § 1.31), lack of skill
in the field of patent prosecution usually acts as a liability in affording
maximum protection for the invention disclosed. If Appellant chooses to
request continued prosecution of the application, Appellant is advised to
secure the services of a registered patent attorney or agent to prosecute the
application, since the value of a patent is largely dependent upon skilled
preparation and prosecution. More information is available in the Manual of
Patent Examination Procedure (MPEP) section 401, available at
https://www.uspto.gov/web/offices/pac/mpep/s401.html.
2 Appellant also proposes revised claims. See Reply Br. 5–6. The Board does
not, however, enter claim amendments in ex parte proceedings—this is a
function for Examiners. Nor does the Board consider hypothetical claims in
ex parte proceedings. Therefore, we will not consider the proposed
revisions.
Appeal 2018-005814
Application 14/885,849

3

makes it possible for that authoring environment to provide a
human subject matter expert with the means to create and
configure a media repository, comprised of a collection of
empty containers each of which is capable of housing a
monologue represented in electronic form (either as a block of
text, an audio clip or a video clip), and to document
relationships between those monologue containers by, (as many
times as is deemed necessary by that human subject matter
expert, in order to create a repository of conversations that has a
level of granularity that is deemed acceptable to that subject
matter expert, and contains as many different wordings, levels
of detail, and levels of terseness, that are deemed acceptable to
that subject matter expert,) (where the term monolog[ue]
container refers to any electronic repository for a fragment of
text that is intended to be spoken by only one person and
includes not only individual electronic files, but also any region
in such a file whose beginning and end has been documented in
electronic form, for example by specifying in machine readable
form where a block of text that is expected to be spoken by one
character begins and where it ends)[;]
designating a series of containers as intended to be used to
house monologues which if presented in order constitute a
grammatically correct and conceptually meaningful
conversation between real or fictitious characters, that explain a
technical concept that the afore mentioned human subject
matter expert wishes to teach, by presenting a conversation
about that concept;
designating two series of containers as intended to each house a
conversation that depict the same technical concepts using the
same level of technical detail, and level of terseness but to do so
using different wordings, including wordings in different
languages;
designating a series of containers as intended to house a less
terse version of a conversation that is to be housed in a different
series of containers, in the sense that the less terse version
includes more banter designed to entertain the intended
audience, and give that audience both more time to rest and
more opportunities to absorb the technical concepts and
Appeal 2018-005814
Application 14/885,849

4

terminology being presented before additional more complex
concepts which use them are presented;
designating two containers that each belong to different series
of the aforementioned variety, as equivalent locations in
different conversations, in the sense that they both are intended
to house the beginning of an explanation of the same technical
concept, and hence, are suitable entry points for jumping into
the middle of one conversation, from the middle of another
conversation;
populating the aforementioned repository with conversation
fragments that have been created by a human author
specifically to conform to the afore mentioned inter-container
relationships and,
creating a specialized media player, comprised of a computer
system equipped with specialized machine readable
instructions, recorded on non-transitory computer readable
media, that make it possible for that media player to understand
all of the afore described relationships between monologue
containers, and hence allow it to comply with requests on the
part of the audience to not only present media repositories, but
also to increase or decrease the level of detail that is being
presented, increase or decrease the extent to which the
information being presented is terse, repeat again using
different wordings an explanation that have already been
presented, or facilitate learning through repeated exposure
while avoiding audience boredom by always presenting those
renditions of an explanation, that are comprised of
conversations that a user has heard least often, which, for
repositories comprised of several hundred technically
equivalent conversations, all but guarantees that no specific
conversation ever needs to be listened to more than once, by
any given audience member.
2. A method for creating, editing, storing, and consuming, a
new kind of computer readable media, (which consumes less
space than an audio or video recording, which is less time
consuming to create or disseminate than an audio or video
recording, whose intellectual content is less likely to be
Appeal 2018-005814
Application 14/885,849

5

rendered unreadable by technological changes including media
file format changes that lead to media format obsolescence, and
that is as immersive as a movie) comprised of:
storing the intellectual content component of media, separately
from those of it’s [sic] aspects that merely create a pleasant
ambiance and help block out distractions, and that per unit of
play time require at least one hundred times more storage than
the intellectual content, and that are comprised of audio and
video recordings;
creating a specialized media player, comprised of a computer
system, and non-transitory computer readable media onto
which have been recorded machine readable instructions, that
allow the media player, to combine the afore cited media
components at the time the media is consumed, to create a user
experience that is not as rich as a traditional movie, but rather,
equivalent to sitting each night in the same scenic environment
(like for example a waterfront restaurant), and listening to
friends talk about different topics, while looking at the scenic
environment, rather than at the people who are talking, and
thereby making possible for the afore mentioned ambiance
focused audio or video recordings to be repeatedly used with
different pieces of intellectual content in order to save space;
representing the intellectual content using mere text files, called
electronic screenplays, that contain information which is both
human and machine readable, and can in the worst case, be
easily printed onto paper, to assure authors that it will not be
rendered unreadable in the event of corporate bankruptcy or
marketing strategy change induced media obsolescence, and
that is comprised of conversations between real or fictitious
characters, interspersed with commands that are understandable
to the aforementioned media player, ( which in turn has multi-
voice text to speech capabilities that it uses to read the
intellectual content out loud, using voices specified by the
media authors, using the afore mentioned commands,) and that
has been specifically designed to ignore requests to play still
images, audio recordings and video files it can not find, (in
order to facilitate dissemination of the more important and less
space consuming intellectual content component of the media
Appeal 2018-005814
Application 14/885,849

6

over the kinds of unreliable low bandwidth telecommunications
networks that currently exist in developing countries and rural
areas).
The Examiner’s rejections3 and cited references
The Examiner rejects claims 1 and 2 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4–6.
The Examiner rejects claims 1 and 2 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 6–7.
The Examiner rejects claims 1 and 2 under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 7–8.
The Examiner rejects claim 1 under 35 U.S.C. § 103 as being
unpatentable over Crystal (US 2009/0144642 A1; published June 4, 2009)
and Henning et al. (US 2016/0057181 A1; published Feb. 25, 2016)
(“Henning”). Final Act. 9–12.
The Examiner rejects claim 2 under 35 U.S.C. § 103 as being
unpatentable over Steele (US 2004/0110490 A1; published June 10, 2004).
Final Act. 12–14.
35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified

3 The Examiner also objects to claims 1 and 2. Appellant does not dispute
the Examiner’s objection (Appeal Br. 8) and the Examiner correctly notes
that the objections, which would have been petitionable, are not appealable
(Ans. 9).
Appeal 2018-005814
Application 14/885,849

7

in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014). The Supreme Court has set forth a framework for distinguishing
patents with claims directed to these implicit exceptions “from those that
claim patent-eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217–18.
“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016)).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Recent Guidance”); see also USPTO, October 2019
Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under
that guidance, we first look to whether the claim recites:
Appeal 2018-005814
Application 14/885,849

8

(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) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Recent 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 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) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Recent Guidance, 84 Fed. Reg. at 56.
Recent Guidance step 2A, prong one – claim 1
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines that the claim is “directed to a patent-
ineligible abstract concept that could be performed in the human mind, or by
a human using a pen and paper.” Final Act. 5. Specifically, the Examiner
determines that the recitations of creating a media authoring environment,
designating a series of containers, populating the aforementioned
Appeal 2018-005814
Application 14/885,849

9

repository, and creating a specialized media player “are operations by [a]
human, even though computer, memory and instructions are mentioned, . . .
they are just generic computer components.” Id.; see also Ans. 5–6. Thus,
the Examiner’s determinations are directed to showing claim 1 recites either
mental processes or certain methods of organizing human activity, both of
which represent unpatentable abstract ideas. See Recent Guidance, 84 Fed.
Reg. at 52.
The Examiner does not provide sufficient determinations to show that
claim 1 recites an abstract idea. See Final Act. 5; Ans. 5–6. In particular,
claim 1 recites both creating a media authoring environment and creating a
specialized media player, where both the media authoring environment and
specialized media player comprise a computer system and non-transitory
computer readable media with specialized machine readable instructions to
perform a number of claimed operations such as providing “provide a human
subject matter expert with the means to create and configure a media
repository, comprised of a collection of empty containers each of which is
capable of housing a monologue represented in electronic form.” Appellant
argues these recitations represent “a specific technique that computers can
use to solve [the disclosed] problem in a way that is different from the way
that [the] problem is solved by humans.” Reply Br. 2–3 (emphasis added);
see also Appeal Br. 9–10. The Examiner’s determinations, however, are
largely limited to the broad characterization of the recitations of claim 1
representing “operations [that] can be performed by a human with sufficient
. . . skill and knowledge in the associated field.” Ans. 6. Such a sweeping
determination, without analysis of whether the specific claim recitations are
part of the purported abstract idea or whether they represent additional
Appeal 2018-005814
Application 14/885,849

10

recitations to be analyzed separately, fails to show that the claim 1 recites an
abstract idea.
Therefore, based on the record before us, we do not sustain the
Examiner’s 35 U.S.C. § 101 rejection of claim 1.
Recent Guidance step 2A, prong one – claim 2
The Examiner’s determinations with respect to claim 2 are similarly
deficient. See Final Act. 5; Ans. 6. In particular, claim 2 recites “creating a
specialized media player, comprised of a computer system, and non-
transitory computer readable media onto which have been recorded machine
readable instructions” such that the media player can perform operations
such as “combin[ing] . . . media components at the time the media is
consumed.” The Examiner again broadly characterizes the recitations of
claim 2 as representing “functions that would be performed by a skilled
human in this field.” Ans. 6. This broad characterization, however, lacks
analysis regarding whether the specific claim recitations are part of the
purported abstract idea or whether they represent additional recitations to be
analyzed separately. Thus, the Examiner’s determinations fail to show that
claim 2 recites an abstract idea.
Therefore, based on the record before us, we do not sustain the
Examiner’s 35 U.S.C. § 101 rejection of claim 2.
35 U.S.C. § 112(A)—CLAIM 1
In rejecting claim 1 as failing to comply with the written description
requirement, the Examiner finds the limitations of (1) creating a media
authoring environment that makes it possible to create and configure a
media repository comprised of a collection of empty containers each of
which is capable of housing a monologue; (2) designating a series of
Appeal 2018-005814
Application 14/885,849

11

containers as intended to be used to house monologues constituting
conversation between real or fictitious characters; (3) designating two
containers that each belong to different series of the aforementioned variety,
as equivalent locations in different conversations, in the sense that they both
are intended to house the beginning of an explanation of the same technical
concept, and hence, are suitable entry points for jumping into the middle of
one conversation, from the middle of another conversation; and (4)
populating the aforementioned repository with conversation fragments that
have been created by a human author specifically to conform to the afore
mentioned inter-container relationships are not found in the Specification.
Final Act. 7.
Appellant contends the Examiner erred because the recitations of
claim 1 represent “an obvious way to attempt to describe in a way that is
concise yet not indefinite[] that which is already described in” the
Specification. Appeal Br. 19; see also Reply Br. 8. We are, however, unable
to ascertain how the disputed recitations are supported by the Specification,
even in light of Appellant’s citations to the Specification. Appeal Br. 2.
We acknowledge certain portions of the Specification seem to
superficially relate to some of the disputed recitations. For example, the
Specification discloses authors being able to insert commands into a
screenplay. Spec. 7, Fig. 4. The Specification discloses reading statements
using different voices to facilitate presentation of debates and dialogues. Id.
at 15. And the Specification discloses storing collections of text fragments in
a hierarchical file system. Id. at 10. But none of these disclosures provide
sufficient written descriptive support for all the limitations of the disputed
recitations.
Appeal 2018-005814
Application 14/885,849

12

It is not enough that the Appellant actually possessed or reduced to
practice the claimed invention outside the Specification, nor is it enough that
the Specification render the claimed invention obvious. Ariad Pharm., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). 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
possession of the claimed subject matter as of the filing date.” Id. at 1351
(citing, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991)). Specifically, “the test requires an objective inquiry into the four
corners of the [S]pecification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the [S]pecification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id. Further, “general statements of
the function to be performed . . . [are] not sufficient [to show written
description support] because a description that merely renders the invention
obvious does not satisfy the written description requirement.” Ex parte
Smith, Appeal 2012-007631, slip op. at 21 (PTAB Mar. 14, 2013), available
at https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/
ex_parte_smith_fd2012007631.pdf (informative) (citing Ariad, 598 F.3d at
1352).
Appellant’s comments regarding “the term skilled in the art of
software development” (Appeal Br. 19; see also Reply Br. 8) are unhelpful
because “a person of ordinary skill in the art” is a theoretical construct, not a
description of some particular individual (cf. Endress + Hauser, Inc. v.
Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997)).
Thus, for example, in viewing the Specification from the “the perspective of
Appeal 2018-005814
Application 14/885,849

13

one of skill, in some circumstances, [Appellant] may rely on information
that is ‘well-known in the art’ for purposes of meeting the written
description requirement.” Bos. Sci. Corp. v. Johnson & Johnson, 647 F.3d
1353, 1366 (Fed. Cir. 2011) (citing Falko-Gunter Falkner v. Inglis, 448 F.3d
1357, 1366–68 (Fed. Cir. 2006)). But here the particular features claimed—
but not supported by sufficient written description in the Specification—are
not well-known in the art. Instead, they reflect particular features and uses
specific to possible (but undisclosed) embodiments of Appellant’s claimed
invention. As such, even if an artisan of ordinary skill could, given a “high
level design document, . . . be counted on to learn all relevant applications
programming interfaces for any particular computing platform in order to
singlehandedly implement fully functional bug free software that is
described by that high level design document” (Appeal Br. 19), the
Specification must still reasonably convey that Appellant, at the time of
filing, had possession of the recited invention. The evidence here does not,
however, show the Specification provides the requisite support. Cf. In re
Wilder, 736 F.2d 1516, 1521 (Fed. Cir. 1984) (affirming a rejection for lack
of written description because the specification does “little more than
outlining goals appellants hope the claimed invention achieves and the
problems the invention will hopefully ameliorate”).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(a) rejection
of claim 1.
35 U.S.C. § 112(A)—CLAIM 2
In rejecting claim 2 as failing to comply with the written description
requirement, the Examiner finds the recitation of representing the
intellectual content using mere text files, called electronic screenplays, does
Appeal 2018-005814
Application 14/885,849

14

not have sufficient written description support in the Specification. Final
Act. 8. Original claim 1, however, recited using “speech synthesizers to
perform electronic screenplays . . . . stored by the software as collections of
text fragments.” Spec. 21. “[O]riginal claims are part of the original
[S]pecification,” and thus are relevant to the extent the “original claim
language necessarily discloses the subject matter that it claims.” Ariad, 598
F.3d at 1349 (citing In re Gardner, 480 F.2d 879, 879 (CCPA 1973)). Here,
the Specification, through original claim 1, discloses text files (i.e., text
fragments) called electronic screenplays. Moreover, the Specification
discloses storing “intellectual content . . . in the form of screenplays that
depict conversations.” Spec. 5. Together, these disclosures reasonably
convey to an artisan of ordinary skill that Appellant had possession of the
disputed recitation.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112(a)
rejection of claim 2.
35 U.S.C. § 112(B)
In rejecting claims 1 as indefinite, the Examiner finds the claim
includes indefinite features such as: (1) machine readable instructions that
provide that authoring environment with functionality that makes it possible
for that authoring environment to provide a human subject matter expert
with the means to create and configure a media repository; (2) machine
readable instructions that make it possible for that media player to
understand all of the afore described relationships between monologue
containers; and (3) designating a series of containers as intended to house a
less terse version of a conversation in the sense that the less terse version
includes more banter designed to entertain the intended audience and give
Appeal 2018-005814
Application 14/885,849

15

that audience both more time to rest and more opportunities to absorb the
technical concepts and terminology. Final Act. 8; Ans. 11.
In rejecting claim 2 as indefinite, the Examiner finds the claim
includes indefinite features such as: (1) creating a user experience that is
not as rich as a traditional movie, but rather, equivalent to sitting each
night in the same scenic environment, and listening to friends talk about
different topics; (2) storing the intellectual content component of media,
separately from those of its aspects that merely create a pleasant ambiance
and help block out distractions; (3) representing the intellectual content
using mere text files, interspersed with commands that are understandable
to the aforementioned media player (which has multi-voice text to speech
capabilities that it uses to read the intellectual content out loud, using voices
specified by the media authors, using the afore mentioned commands) and
that has been specifically designed to ignore requests to play still images it
can not find (in order to facilitate dissemination of the more important and
less space consuming intellectual content component of the media over the
kinds of unreliable low bandwidth telecommunications networks). Final
Act. 8; Ans. 11.
The Examiner does not, however, provide sufficient support to show
that either claim 1 or claim 2 is indefinite. The Examiner states that “[t]hese
description[s] of the feature limitations are indefinite” (Final Act. 8) without
explaining why the features are indefinite. With respect to claim 2, in
particular, the Examiner finds that the last element “of claim 2 is particularly
confusing,” without any explanation as to what is confusing (i.e.,
ambiguous). See MPEP § 2173.02.III.A (9th ed., rev. 08.2017 (Jan. 2018))
(“the examiner should clearly communicate in an Office action any findings
Appeal 2018-005814
Application 14/885,849

16

and reasons which support the rejection and avoid a mere conclusion that the
claim term or phrase is indefinite.”). The Examiner adds that “[t]t is not clear
what limitations these description[s in claim 2] will add to the claim.” Id.
But recitations that do not limit a claimed invention (e.g., an intended use)
do not necessarily render the claim indefinite.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112(b)
rejection of claims 14 and 2.
35 U.S.C. § 103—CLAIM 1
In rejecting claim 1 as obvious, the Examiner finds that Crystal’s
content zoom—which relates to organizing, accessing, and presenting
different levels of detail—teaches or suggests most of the claim recitations.
Final Act. 9–11 (citing Crystal ¶¶ 5, 29, and 52–57). The Examiner relies,
however, on Henning’s container objects—storing collaboration threads or
conversations—to teach or suggest recitations related to designating

4 Although we do not sustain the Examiner’s 35 U.S.C. § 112(b) rejection
based on the record before us, in the event of further prosecution, the
Examiner should also ascertain whether the term “container” is unclear.
Appellant acknowledges using “the word ‘container’ merely to refer
concisely to either a text file that contains an explanation fragment, or a
portion of a text file that contains an information fragment.” Appeal Br. 23.
But the Specification, which does not explicitly disclose the meaning of a
“container,” discloses a “hierarchical system [that] provides . . . means to
store many versions of vast collections of text fragments.” Spec. 10. This
may evince that the term “container,” given its broadest reasonable
interpretation in light of the Specification, alternatively encompasses folders
or directories that may contain text files. If container, as recited, “is
amenable to two or more plausible claim constructions,” then such
ambiguity may support an additional basis for rejecting claim 1 under 35
U.S.C. § 112(b). See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential).
Appeal 2018-005814
Application 14/885,849

17

containers as being intended to be used to house monologues that explain a
technical concept or as equivalent locations in different conversations. Final
Act. 11–12 (citing Henning ¶ 13).
Appellant contends the Examiner erred because, although Crystal
discusses “the concept of multiple levels of detail,” Crystal does not discuss
“providing authors of technical educational media with a way to provide
their audiences with a way to adjusting the information density of an
explanation in order to reduce the cognitive burden to which their audiences
are subjected.” Appeal Br. 22. That is, Appellant argues Crystal does not
“discuss the concept of providing authors of technical educational media,
with a way to provide their audiences with a way to request that information
which has already been presented, be presented again using different words
in order to reduce the probability that an explanation has been
misunderstood.” Id. Appellant also argues Crystal describes a solution to a
problem that is “extremely different . . . from the problem on which [the
claimed invention] is focused.” Id.
Appellant’s arguments are unpersuasive to the extent that they rely on
preamble recitations. See Ans. 13. Preamble recitations are only given
patentable weigh if they recite “essential structure or steps, or if [they are]
‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999)). No such showing has been made here.
Appellant’s arguments are also unpersuasive to the extent they rely on
unclaimed features. See Ans. 14. Appellant critiques the Examiner for
continuing “to focus on the language of [the] claims,” and argues the
Appeal 2018-005814
Application 14/885,849

18

Examiner is “misrepresent[ing] the purposes and functions of the
inventions.” Reply Br. 9. The United States, however, “is strictly an
examination country and the main purpose of the examination, to which
every application is subjected, is to try to make sure that what each claim
defines is patentable.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998) (quoting Giles Sutherland Rich, Extent of Protection and
Interpretation of Claims—American Perspectives, 21 Int’l Rev. Indus. Prop.
& Copyright L. 497, 499 (1990)). Therefore, the Examiner properly focused
on the claim recitations in ascertaining whether claim 1 is obvious.
Furthermore, “[i]n examining a patent claim, the PTO must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification.” In re Bass, 314 F.3d 575, 577
(Fed. Cir. 2002) (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
1984)). Limitations, however, “are not to be read into the claims from the
[S]pecification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Moreover, “a prior
art reference is relevant for all that it teaches to those of ordinary skill in the
art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (citing Beckman
Instruments Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir.
1989)).
Given Crystal’s broadly applicable disclosure that its content zoom
teachings “can be applied to substantially any content stored and/or
accessible by a computing device such as but not limited to video content,
photographic content, textual content, word processor content, image
content, products, and other such content” (Crystal ¶ 52), we are unable to
Appeal 2018-005814
Application 14/885,849

19

discern error in the Examiner’s reliance on Crystal (see, e.g., Final Act. 9–
11).
Appellant further argues that Henning does not teach conversations as
“discussions between people using words, but rather, histories of
collaborations between people in an electronic collaboration environment.”
Appeal Br. 22. Appellant acknowledges, however, that Henning teaches
conversations include “contributions, in the form of mail messages, text
messages, document attachments, presentations, and other similar work
products, that people have contributed to a project.” Id.; see also Henning
¶ 13. Appellant argues that these contributions “are not spoken words.”
Appeal Br. 22. Claim 1 does not, however, recite “spoken word”
conversations. Nor does Appellant otherwise persuasively distinguish the
disputed claim recitations from Henning’s storage of “the real-time
communication history, shared content, and collaborative events associated
with a given multi-modal conversation between a set of participants.”
Henning ¶ 13; see also, e.g., Henning Figs. 4A–6B (cited in Ans. 15).
Therefore, we do not find error in the Examiner’s reliance on Henning, in
combination with Crystal, to teach or suggest the disputed recitations of
claim 1. See, e.g., Final Act. 11–12.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 1.
35 U.S.C. § 103—CLAIM 2
In rejecting claim 2 as obvious, the Examiner finds that Steele’s
storage of text content as extensible markup language (XML) and graphics
as scalable vector graphics (SVG)—along with Steele’s use of audio clips—
teaches or suggests storing the intellectual content component of media
Appeal 2018-005814
Application 14/885,849

20

separately from those of its aspects that merely create a pleasant ambiance
and help block out distractions. Final Act. 12–13 (citing Steele ¶¶ 47, 50,
52); see also Ans. 16–17 (further citing Steele ¶ 116, Fig. 16).
Appellant contends the Examiner erred because: (1) “Steele does not
assert the benefit of creating rich media in which intellectual content
[represented using text] has been separated from graphical and auditory
content”; (2) “Steele is not at all focused on helping authors of technical
educational materials protect their intellectual content from being made
obsolete as file formats and media players become obsolete”; (3) “Steele is
not focused on creating and presenting a specialized type of educational
media”; (4) Steele does not “represent instructional materials in a
decomposed form”; and (5) “Steele does not decompose media into
intellectual content and ambiance focused content.” Appeal Br. 24–25; see
also Reply Br. 9. That is, Appellant argues the Steele’s content does not
represent “intellectual content,” “technical educational materials,”
“educational media,” “instructional materials,” or “ambiance focused
content.”
Appellant’s arguments are unpersuasive because claimed non-
functional descriptive material (e.g., content) is not entitled patentable
weight absent a new and unobvious functional relationship between the
descriptive material and the underlying device or substrate. See Ex parte
Nehls, 88 USPQ2d 1883, 1887–90 (BPAI 2008) (precedential); see also In
re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Furthermore, an “[]intended
use or purpose usually will not limit the scope of the claim because such
statements usually do no more than define a context in which the invention
Appeal 2018-005814
Application 14/885,849

21

operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp.,
320 F.3d 1339, 1345 (Fed. Cir. 2003).
We further note that, in accordance with the Examiner’s findings
(Ans. 16), Steele teaches the concurrent rendering of multiple media
components “image rendering, spring animation, rendering, filled and
unfilled rectangle rendering, polygon, point, and polyline rendering, text
rendering, and text font and style selection,” with “advanced operation
[such] as constant, linear and cubic animation paths, animation of sprites,
objection positions and color, and audio clip rendering” (Steele ¶ 50).
Moreover, as the Examiner’s findings show (Ans. 16), Steele teaches
separating, for example, textual XML content and graphic content such as
SVG images (see Steele ¶¶ 47, 52). Thus, the Examiner’s findings show that,
in light of Steele, it would have been obvious to an artisan of ordinary skill
to render multiple separately stored media sources, such as multiple audio
clips, concurrently. Moreover, contrary to Appellant’s arguments (Appeal
Br. 25), it would have been obvious to an artisan that media sources could be
reused or remixed with other media sources when stored separately (i.e.,
isolated).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 2.
Appeal 2018-005814
Application 14/885,849

22

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 101 Eligibility 1, 2
1, 2 112(a) Written Description 1 2
1, 2 112(b) Indefiniteness 1, 2
1 103 Crystal, Henning 1
2 103 Steele 2
Overall
Outcome
1, 2
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