Ex Parte CEDERVALL et al

Patent Trial and Appeal Board

Nov 21, 2018

14606072 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/606,072 01/27/2015 Mats CEDERV ALL
113648 7590 11/26/2018
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ol 10-428-CON/P28026US4 9174
EXAMINER
LUONG, ALAN H
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATS CEDERVALL and NILO MITRA1
Appeal 2018-002466
Application 14/606,072
Technology Center 2400
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is
TELEFONAKTIEBOLAGET L M ERICSSON (PUBL). See App. Br. 2.
Appeal 2018-002466
Application 14/606,072
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
16, 17, and 19--25. 2 Claims 1-15 and 18 are canceled. App. Br. 19--21
(Claims App.). We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse. 3
THE INVENTION
The claims are directed to upgrading internet protocol television
(IPTV) devices from a simple service profile to a more feature rich service
profile. App. Br. 3. Claims 16 and 20, reproduced below, are illustrative of
the claimed subject matter:
16. An upgradable television (TV) device, the TV device being
connectable to an internet protocol TV (IPTV) system including
an operator system and a TV manufacturer system, the TV device
compnsmg:
a memory for storing TV device specific information; and
a processor coupled to the memory, wherein the processor
generates a browser that obtains a token object, and receives and
transmits messages to and from the TV manufacturer system via
the operator system, such that an upgrade of the TV device can
be initiated and completed, wherein the processor, executing
local object code, interacts with the TV manufacturer system,
such that an upgrade of the TV device is executed in response to
2 The Examiner omits dependent claims 24 and 25 from the listing of claims
rejected under 35 U.S.C. § 112, second paragraph. Final Act. 6, Ans. 6.
However, because these claims depend from rejected independent claim 22
and thereby inherit any deficiency of that claim, for purposes of this appeal
we treat dependent claims 24 and 25 also as having been rejected under 35
U.S.C. § 112, second paragraph. We find the clerical error of omission to be
harmless in view of our decision.
3 We refer to the Specification, filed January 27, 2015 ("Spec."); the Final
Office Action, mailed March 31, 2017 ("Final Act."); the Appeal Brief, filed
August 14, 2017 ("App. Br."); the Examiner's Answer, mailed November
16, 2017 ("Ans."); and the Reply Brief, filed January 5, 2018 ("Reply Br.").
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Application 14/606,072
receiving the token object from the TV manufacturer system to
be used for verifying an upgrade of the TV device, the token
object being generated by the TV manufacturer system and
comprising a redirection address indicating an upgrade site of the
TV manufacturer, and the processor, executing the local object
code, returns the token object to the TV manufacturer system,
thereby enabling an upgrade of the TV device to be completed
from the upgrade site by the TV manufacturer system if the token
object is found to be valid.
20. An operator system for assisting in an upgrade of a
television (TV) device, the operator system being part of an
internet protocol TV (IPTV) system that also includes a TV
manufacturer system, the operator system comprising:
a processor, which generates an operator Portal that
receives and transmits messages to and from the TV device and
the TV manufacturer system and that processes such messages,
such that an upgrade of the TV device is assisted, wherein the
processor requests a token object to be used during the upgrade
from the TV manufacturer system upon request from the TV
device, forwards the token object to the TV device, receives the
token object back from the TV device, and forwards the token
object to the TV manufacturer system, the token object being
generated by the TV manufacturer system and comprising a
redirection address indicating an upgrade site of the TV
manufacturer, thereby enabling an upgrade of the TV device to
be completed from the upgrade site by the TV manufacturer
system if the token object is found to be valid; and
a business support system, which manages interaction
between the operator system and TV manufacturer system by
receiving and transmitting messages to and from the TV device
and processing such messages, thereby enabling service and
billing arrangements to be established between a user and an
operator of operator system.
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REJECTIONS
The Examiner made the following rejections:
Claims 16, 17, and 19-21 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. 4
Ans. 3--4.
Claims 20-25 5 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. Ans. 6-8.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred in rejecting independent claims 16,
20, and 22 under 35 U.S.C. § 112. We agree with Appellants' conclusions as
to these rejections of the claims.
The Examiner finds "[ n ]owhere in [the] specification [is there]
disclose[d] 'a processor coupled to the memory, wherein the processor
generates [a browser] that obtains a token object' as [required by claim 16]"
or "'a processor [that] generates an operator Portal' and performs [the
recited] multiple functions as [required by claim 20]." Ans. 3--4. In
connection with claim 16, the Examiner explains, rather than disclosing "the
processor generates a browser that contains[6J a token object," the
Specification discloses the browser requests and receives a token. Id. at 9
4 The rejection of claims 22-25 under 35 U.S.C. § 112, first paragraph, has
been withdrawn. Ans. 2.
5 See fn. 2.
6 The Examiner occasionally misstates the disputed limitation, mistakenly
substituting the word "contains" for the word "obtains" recited by claim 16.
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Application 14/606,072
( emphasis with italics added). The Examiner finds "nowhere in
specification [does it] disclose the TV device includes 'a processor coupled
to the memory, wherein the processor generates a browser that contains [sic.,
obtains] a token object" and that "[t]he processor cannot generate a
browser." Id.
Appellants contend "the 'processor' element added to the claims[7J is
inherently supported by the original disclosure because the claimed
structures require a processor to operate in the manner disclosed and
claimed." App. Br. 9. Appellants argue the "upgrade Function" is disclosed
as configured to execute a proprietary upgrade procedure implemented as a
local object code. Id. at 10. According to Appellants, "one skilled in the art
would have recognized a processor is required to generate the disclosed
browser 202 and execute local object code 201 to perform the disclosed
functions." Id. At 11. Appellants further note Examiner error in
characterizing claim 16 as requiring generation of a browser that contains a
token rather than a browser that obtains a token. Reply Br. 2-3.
We agree with Appellants the Examiner erred in finding a lack of
support for the processor of claim 16. It is not clear whether the Examiner
finds the limitation unsupported (i) because, based on a misreading of the
claim, the Specification discloses the token is generated by and obtained
from a TV manufacturer system and not by the TV device or (ii) because
there is no specific mention of a "processor" for executing the disclosed
JAVA script code and providing browser functionalities. However, either
7 According to Appellants, the disputed "processor coupled to the memory,
wherein the processor generates [ a browser]" language was added to avoid
means plus function interpretation under 35 U.S.C. § 112, sixth paragraph.
See Amendment under 37 C.F.R. § 1.111 filed January 3, 2017 at page 5.
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Application 14/606,072
rationale is unpersuasive. In the case of the former, we would agree with
Appellants that the Examiner's finding is based on a misreading of the claim
language which does not require generation of a browser that contains a
token, thereby also requiring generation of the token itself. Instead, the
disputed limitation only requires generation of a browser that obtains a token
as from the TV manufacturer system as disclosed by Appellants'
Specification. We also would not be persuaded one skilled in the art would
not have understood that the disclosed processing and functionalities would
be implemented and/or supported by hardware and that such hardware
would include a processor for generating and/or executing, for example, the
disclosed browser. Accordingly we do not sustain the rejection of claim 16
or the rejection of dependent claims 17 and 19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
In connection with claim 20, the Examiner finds "[n]owhere in [the]
specification [does it] disclose 'a processor generates an operator Portal' and
performs ... multiple functions as claimed." Ans. 4. Appellants contend
"[t]he specification clearly describes the operator portal as a website that
interacts with the TV device's browser" (App. Br. 12) and that, as such, the
portal provides functionalities that must be implemented using a processor
(id. at 12-14).
We agree with Appellants the Examiner erred in finding a lack of
written description for the processor of claim 20. Concerning the claimed
functionality, it had previously been claimed as performed by the operator
Portal. The disputed processor, which generates the operator Portal, was
added by the Amendment filed January 3, 2017 resulting in the instant
rejection for lack of a written description of the processor. The Examiner
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Application 14/606,072
does not direct attention to a particular function not supported by the
Specification and we are unable to ascertain any such unsupported function.
Therefore, the Examiner's rejection is based solely on whether the operator
Portal is generated by a processor.
We agree with the Examiner that the Specification does not use the
word "processor" in describing how the operator Portal is generated, i.e.,
provided. Ans. 4. However, the Specification discloses, "Operator system
203 of Figure 5 comprises an operator portal 204 that is configured to enable
communication with a browser (not shown) of a TV device 200 to be
upgraded, and a TV manufacturer system 206 to be executing the
upgrading." Spec. p. 15, 11. 4---6. One skilled in the art at the time of the
invention would have understood the required functionalities, including the
portal browser, communication, and upgrading task execution, would be
supported and/ or provided by hardware broadly functioning as and
commonly referred to as a processor. Accordingly, we do not sustain the
rejection of independent claim 20 or dependent claim 21 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement
The Examiner additionally rejects claims 20-258, concluding the
claimed operator Portal and business support system are to be interpreted
under 35 U.S.C. § 112, sixth paragraph, as means plus function limitations.
Ans. 4--5. According to the Examiner, both the operator Portal and business
8 The Examiner's analysis of the claim language concludes claims 24 and
25, in addition to claims 20, 22, and 23, are subject to means plus function
interpretation under 35 U.S.C. § 112, sixth paragraph. Ans. 6--8. We
consider the omission of claims 24 and 25 from the related rejection under
35 U.S.C. § 112, second paragraph, to be harmless clerical error. See fn. 2.
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support system are generic placeholders coupled with functional language
rather than structural elements. Id. As such, the Examiner finds insufficient
disclosure of structure for performing the recited functions and rejects the
claims as indefinite under 35 U.S.C. § 112, second paragraph. Id. at 6-8.
Appellants contend, "although the 'business support system' ... and
the 'operator Portal' ... use functional terms, these terms denote well-
known structures, and thus are not subject to means-plus-function
interpretation." Reply Br. 7. Appellants argue a business support system
would have been understood to have a definite meaning as a structure that
performs the recited function rather than a generic place holder, i.e., "[t]he
system used by network operators to manage business operations such as
billing, sales management, customer-service management and customer
databases." Id. at 7-8, citing Harry Newton, Newton's Telecom Dictionary
111 ( 14th ed. 1998). Regarding the disputed "operator Portal," Appellants
argue it would have been understood to be Appellants' disclosed website, the
website argued to be inherently disclosed as being generated by a processor
required to provide the disclosed website. App. Br. 11-12.
The Examiner responds by contending the proffered definition of a
business support system fails to provide the claimed functionality of
managing interactions between the operator system and TV manufacturer
system. Ans. 14--15. Addressing the operator Portal, the Examiner finds it
is disclosed as an HTTP protocol or software and, as such, "does not
describe a known structure or category of structures sufficient to perform the
above function, because specification has no algorithm to describe how to
perform the [recited] function." Id. at 16.
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Application 14/606,072
We agree with Appellants that the disputed business support system
and operator Portal are disclosed in sufficient detail such that one skilled in
the art would have appreciated the recited functions are performed by
specific structures. There is a rebuttable presumption that claim 20 is not
intended to invoke 35 U.S.C. § 112, sixth paragraph, and should not be
construed as having means-plus-function elements. See Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) ("[T]he failure to use the
word 'means' ... creates a rebuttable presumption ... that§ 112, para. 6,
does not apply."). To rebut this presumption, the Examiner must find that
the claim term fails to recite sufficiently definite structure or recites function
without reciting sufficient structure for performing that function. Id.
(citing Watts v. XI Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). The
Federal Circuit has further explained:
To determine whether the claim recites sufficient structure, "it is
sufficient if the claim term is used in common parlance or by
persons of skill in the pertinent art to designate structure, even if
the term covers a broad class of structures and even if the term
identifies the structures by their function."
Skky, Inc. v. MindGeek, s.a.r.l, 859 F.3d 1014, 1019 (Fed. Cir.
2017) (quoting TecSec, Inc. v. Int'! Bus. Machs. Corp., 731 F.3d 1336, 1347
(Fed. Cir. 2013) (internal quotation marks and citations omitted)). In this
case, the Examiner erred by finding the presumption had been overcome
with respect to the two claim terms identified. Our review of
the Specification and Figures and proffered technical dictionary definition
persuade us the terms designate sufficient structure to perform the functional
language.
In connection with business support system, we disagree the proffered
definition is inapplicable to the claimed functionality. Claim 20 requires the
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business support system manage interaction with the operator system and
TV manufacturer to establish service and billing arrangements between a
user and an operator of the operator system. These activities fall within the
scope of billing and customer-service relations provided by a business
support system included within the dictionary definition of a business
support system proffered in support of Appellants' argument. The additional
functionality of receiving and transmitting messages to enable service and
billing arrangements does not render the definition inapposite. To the
contrary, one skilled in the art would have understood messaging to be a
function supported by such a system. Therefore, the disputed business
support system is not a generic placeholder or a nonce term having no
specific structural meaning but, instead, requires a specific structure, i.e., a
system used by network operators to manage business operations.
Accordingly, the disputed business support system limitation is not
expressed as means plus function subject to interpretation under 35 U.S.C.
§ 112, sixth paragraph.
Concerning the disputed operator Portal, we agree with Appellants
that one skilled in the art would have recognized that a web page or website,
having been disclosed as corresponding to the claimed operator Portal,
discloses structure rather than constituting a generic place holder for the
recited functions. App. Br. 17-18; Reply Br. 9. Accordingly, the disputed
operator Portal limitation is not expressed as means plus function subject to
interpretation under 35 U.S.C. § 112, sixth paragraph.
Because the Examiner's rejection is premised on an erroneous claim
construction improperly invoking 35 U.S.C. § 112, sixth paragraph, we do
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not sustain the resultant rejection of claims 20 and 21 under 35 U.S.C. § 112,
second paragraph.
DECISION
We reverse the Examiner's decision to reject claims 16, 17, and 19--21
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We reverse the Examiner's decision to reject claims 20-25 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the applicant regards
as the invention.
REVERSED
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