Melvin Barnes

Patent Trials and Appeals Board

Mar 24, 2021

2020004414 (P.T.A.B. Mar. 24, 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.
13/331,049 12/20/2011 Melvin L. Barnes JR. 44081/0260 4557
105758 7590 03/24/2021
Laurence & Phillips IP Law
2200 Pennsylvania Ave. NW, 4th Floor East
Washington, DC 20037-1701
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/24/2021 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):
docket@lpiplaw.com
mphillips@lpiplaw.com
mphillips_patlaw@yahoo.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MELVIN L. BARNES JR.

Appeal 2020-004414
Application 13/331,049
Technology Center 3600
____________

Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 14–16, and 18–21. We have
jurisdiction under 35 U.S.C. § 6(b). A hearing was held on March 11, 2021.
We REVERSE.

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 Gula
Consulting Limited Liability Company, the assignee of record, which is
affiliated with Intellectual Ventures Management LLC.” Appeal Br. 1.
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BACKGROUND
The Specification discloses that “[t]he present disclosure relates,
generally, to the field of mobile communications and computer processing
and more particularly, to a system, method, apparatus, and computer
program product for providing location based services, mobile e-commerce,
and other functions.” Spec. ¶ 2. The claims at issue relate to methods and
systems for navigating an information hierarchy using voice commands.
CLAIMS
Claims 1, 18, and 20 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A method of navigating an information hierarchy using a
mobile communication device, the method comprising:
causing a plurality of selectable items to be presented on a
display associated with the mobile communication device,
wherein the plurality of selectable items are associated with a
first navigational level of the information hierarchy;
in response to receiving, via an audio input device
associated with the mobile communication device, a first voice
command indicating that one of the plurality of selectable items
is to be selected, causing one of the selectable items in the
plurality of selectable items to be displayed differently from the
other selectable items to thereby form an accentuated selectable
item;
in response to receiving, via the audio input device, a
second voice command indicating that the accentuated selectable
item is to be selected, causing information associated with the
accentuated selectable item to be presented on the display,
wherein the information associated with the accentuated
selectable item corresponds to a second navigational level of the
information hierarchy;
generating, by the mobile communication device,
identifying indicia associated with the plurality of selectable
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items based on the first navigational level of the information
hierarchy;
causing the identifying indicia to be presented on the
display in association with the plurality of selectable items,
wherein each identifying indicium corresponds to one of the
plurality of selectable items; and
in response to receiving, via the audio input device, a third
voice command specifying one of the identifying indicia, causing
information associated with the selectable item corresponding to
said specified one of the identifying indicia to be presented on
the display;
wherein the identifying indicia comprise text
corresponding to text included with an image tag in the
information hierarchy associated with a displayed image that is
one of the plurality of selectable items.
Appeal Br., Listing of Claims on Appeal.
REJECTION
The Examiner rejects claims 1–12, 14–16, and 18–21 under 35 U.S.C.
§ 103 as unpatentable over Dragon.2
DISCUSSION
We are persuaded of error in the rejection of each of the independent
claims by Appellant’s argument that the Examiner has not set forth an
adequate reason to support the conclusion of obviousness.
Claim 1, for example, requires generating identifying indicia
associated with selectable items and causing the indicia to be displayed in
association with the selectable items on a screen. Further, the identifying
indicia comprise text corresponding to text included with an image tag in the
information hierarchy associated with a displayed image, the displayed

2 Dragon Naturally Speaking 5, “User’s Guide,” Aug. 2000.
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image being one of the plurality of selectable items. In other words, the
claim requires generating and displaying text derived from an image tag
related to a selectable image. Each of the other independent claims recites
similar requirements. See Appeal Br. 5–7.
The Examiner acknowledges that Dragon does not teach generating
and displaying identifying indicia as required by the claim. Final Act. 3–4.
However, the Examiner finds that Dragon teaches displaying arrows or a
number next to selectable items. Id. at 3. The Examiner also finds that
Dragon separately teaches using “text corresponding to text with a button tag
in the information hierarchy associated with a displayed button that is one of
the selectable items” because Dragon teaches selecting a search button based
on the displayed word “search” on the button. Id. Further, the Examiner
finds “[i]mage tags used to include images in a web document have been old
and well known long before the filing of Applicant’s invention. Dragon
already teaches the functionality of using HTML tag information as
identifying indicia.” Id. at 4. The Examiner concludes that it would have
been obvious “to use any tag information as identifying indicia, including
image tags” because “this would provide another way of selecting images
that could more quickly activate the selection the user is seeking to select.”
Id.
A key to supporting a prima facie conclusion of obviousness under 35
U.S.C. § 103 is the clear articulation of the reason why the claimed
invention would have been obvious. The Court in KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) indicated that the analysis supporting
a rejection under 35 U.S.C. § 103 should be made explicit. The Federal
Circuit has stated that “rejections on obviousness grounds cannot be
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sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at 418. We agree with Appellant that
the Examiner has not set forth a sufficient articulated reason with rational
underpinning to support the conclusion of obviousness.
With respect to the selection of images on a web page, Dragon
discloses displaying numbers assigned to each image after a user says a
command such as “image,” after which the user may select an image based
on the numbers displayed. Dragon 128. The cited portion of Dragon does
not disclose any other way in which images are labeled or selected. Dragon
also discloses the selection of voice commands based on words that appear
on the images of buttons, e.g., the selection of a “search” function based on a
button labeled with the word “search.” Id. However, the cited portions of
Dragon do not disclose generating any indicia for display related to such
buttons.
In the Answer, the Examiner acknowledges that Dragon does not
disclose each of the claimed elements at issue, but the Examiner asserts that
“the available analogous teachings of Dragon along with the well-known
functionality of HTML would lead one of ordinary skill in the art to arrive at
the instant invention.” Ans. 5–6. However, we agree with Appellant that
the Examiner has, at best, shown “that it would have been possible for one
skilled in the art to have used a text-from-image-tag-based image-annotation
technique like” the claimed approach, and the Examiner fails to provide a
reason as to why a person of ordinary skill in the art would have actually
done so. Reply Br. 5–6 (emphasis omitted). As noted, an obviousness
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determination must be supported by articulated reasoning with some rational
underpinning. Here, the Examiner’s analysis in the Answer, which shows
only that the proposed modification could have been made falls short of
providing such reasoning with rational underpinning. In the Final Action,
the Examiner determines that the modification would have been obvious to
provide a method for more quickly activating a user’s selection. Yet, the
Examiner does not provide an adequate explanation or citation to evidence
showing how the proposed modification would do this. Thus, this reasoning
also lacks the rational underpinning necessary to support the Examiner’s
conclusion.
Based on the foregoing, we are persuaded of error in the rejection of
each of the independent claims 1, 18, and 20. Accordingly, we do not
sustain the rejection of claims 1, 18, and 20. We also do not sustain the
rejection of dependent claims 2–12, 14–16, 19, and 21 for the same reasons.
CONCLUSION
We REVERSE the rejection of claims 1–12, 14–16, and 18–21
In summary:
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–12, 14–16,
18–21
103 Dragon 1–12,
14–16,
18–21

REVERSED