Ex Parte Froidcoeur et al

Patent Trial and Appeal Board

May 13, 2014

10562872 (P.T.A.B. May. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TIM FROIDCOEUR,
MARC SIMON REMY MASSCHELEIN,
STEFAAN MOTTE,
and DANIEL MEIRSMAN
____________________

Appeal 2011-012074
Application 10/562,872
Technology Center 2400
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JILL D. HILL, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/562,872

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-18 and 20-27. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to methods, mediums, and devices for
enabling a UPnP-compliant MediaRenderer-Control Point combination to
receive a URI. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1 A method of enabling a UPnP-compliant MediaRenderer-
Control Point combination to use an organizational context of a
content item as represented in a UPnP Content Directory
Service, the method comprising enabling the combination to
receive a URI representative of a Content Directory Service
description.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Weast
Saulpaugh
US 7,454,511 B2
US 7,065,574 B1
Nov. 18, 2008
Jun. 20, 2006
Salmonsen US 2003/0220781 A1 Nov. 27, 2003

REJECTIONS
Claim 13-18, 20 and 21 are rejected under 35 U.S.C. § 101. Ans. 4.
Claims 1-3, 5-7, 9-11, and 13-18, and 20-27 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Weast and Salmonsen. Ans. 5.
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Claims 4, 8, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weast, Salmonsen, and Saulpaugh. Ans. 16.

OPINION
We reverse the rejection of claim 13-18, 20, and 21 under 35 U.S.C. §
101.
The Examiner concludes that the “media server” in claim 13 could be
interpreted as software because the Specification does not exclude software
as an embodiment of the media server. Ans. 4. The Examiner further
concludes that the “interface,” the “renderer,” and the “controller” could also
be interpreted as software because the Specification does not exclude
software as an embodiment. Ans. 19. The Examiner cites the Specification
as stating that the Controlled Device proxy is a software component running
on IP-compliant devices. Ans. 19.
Appellants argue software alone cannot receive information from an
external device, render received content, and control the reception of
content, and that physical elements must be involved. Reply Br. 2.
Appellants further argue that the portion of the Specification cited by the
Examiner states that the software is “running on IP-compliant devices.”
Reply Br. 3. Appellants also argue that claim 13 is directed to a “device”
that includes the interface, the renderer, and the controller. App. Br. 7.
Appellants argue that software per se cannot be a device, and that software
needs hardware to perform any function. Id. Appellants further argue that
the characteristics of the “media server” are irrelevant to the issue of
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whether the claimed “device” is a statutory subject matter because the device
receives content from the media server. Id.
We agree with the Appellants. The preamble of the claim recites “[a]
device comprising,” which limits the subject matter of the claim to a
machine, which is statutory subject matter. Even if the UPnP interface, the
renderer, and the controller can be reasonably interpreted as software, they
are all modules within the “device” according to the claim. Thus, the device
would ultimately be performing the functions of those modules. Because the
preamble has defined the structure of the subject matter and gives meaning
to the claim, it is a limitation that must be observed. See Kropa v.
Robie, 187 F.2d 150, 152 (CCPA 1951). Furthermore, the Examiner has not
adequately shown that an embodiment exists for reasonably interpreting the
“device” in claim 13 as software per se.
We reverse the rejection under 35 U.S.C. § 101.

We reverse the rejection of claims 1-3, 5-7, 9-11 and 13-18, and 20-
27 under 35 U.S.C. §103(a) as being unpatentable over Weast and
Salmonsen and the rejection of claims 4, 8, and 12 under 35 U.S.C. § 103(a)
as being unpatentable over Weast, Salmonsen, and Saulpaugh.
Regarding claim 1, the Examiner found Salmonsen discloses a media
directory storing URI that identifies content resources (Ans. 20 (citing
Salmonsen, para. [0123])), and concludes that the identification is a
description of the media directory. Ans. 20. The Examiner found that
Salmonsen’s media directory must receive URIs that identify content
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resources first before it can store the URIs. Id. The Examiner concludes
that the media content includes URIs that identify content resources in the
media directory. Ans. 20-21. The Examiner also notes that the Applicants
rely upon a feature (i.e., receiving a URI from an external UPnP Control
Point) that is not recited in the claim. Ans. 20.
Regarding claim 9, the Examiner concludes that a URI’s identification
of content resources is equivalent to a description of a media directory. Ans.
21. The Examiner also concludes that Salmonsen discloses a media
directory holding URIs of all files for rendering, and that rendering is
equivalent to “processing a URI representation of a Content Directory
Service Description.” Ans. 21.
Appellants concede that claim 1 does not state the URI representation
of a Content Directory Service description being received from a UPnP
Control Point. Reply Br. 3. However, Appellants argue that Salmonsen
discloses a media directory including URIs, but the URIs are not
representative of a description of the media directory. Reply Br. 4.
Appellants argue that the Examiner’s assertion that the identification of
content resources being a description of the media directory is not supported
anywhere in Salmonsen. Id. Appellants also argue that media directories do
not generally contain a description of themselves and that Salmonsen does
not disclose creating a description of the media directory, let alone a URI
representation of that description. Id. Appellants further argue that content
resources and directory resources are not synonymous. Id. A content URI
would identify the location of the content, whereas a directory URI would
identify the location of an index to a set of content URIs. Id. Thus,
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Appellants argue that Salmonsen disclosing URIs that identify content
resources is irrelevant. Id.
We agree with the Appellants. The Examiner’s conclusion that the
identification of content resources comprises or is equivalent to a description
of the media directory is not supported by a preponderance of the evidence.
The Examiner’s findings also lack a preponderance of evidence to conclude
that “content resources” comprise or is equivalent to a description of the
media directory. Thus, we reverse the rejections of claims 1 and 9.
In rejecting claim 13, the Examiner relies upon the same unsupported
findings and conclusions discussed above with reference to claims 1 and 9.
Therefore, we must also reverse the rejection of claim 13 under 35 U.S.C.
§ 103(a).
Regarding claim 22, the Examiner concludes that the references
disclose receiving an identification of a content item at a media server to be
rendered, receiving a URI corresponding to a context of the content item
within the media server, receiving the context of the content item based on
the URI, and rendering a subsequent content item from the media server
based on the content. Ans. 23. The Examiner finds that Weast renders
media content through a context menu provided in response to a right click
of a mouse. Ans. 24.
Appellants argue that the references do not teach receiving a URI
corresponding to a context of the content item or receiving the context of the
content item based on the URI. Reply Br. 6.
We agree with the Appellants. The Specification defines a “context”
of a content item as information regarding the content item’s organizational
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relationship with other content items or group of content items. Spec. 2. It is
“not unlike a directory structure.” Id. Weast’s “context menu” does not
give any information regarding the media content’s organization relationship
with other media content. It does not give light to how the media content is
organizationally structured. Instead, Weast’s context menu is merely a
technique for content rendering. Furthermore, Salmonsen’s URIs that
identify content resources may give information regarding where the
resources are located or resources’ names, but it does not give information as
to how the content resources are organizationally structured. Thus, the
Examiner has failed to establish that the references disclose receiving a URI
corresponding to the context of the content item or receiving the context of
the content item based on the URI.
Since the Examiner relies on the same findings and conclusions, and
Saulpaugh, as applied by the Examiner does not cure the aforementioned
deficiencies, we must reverse the rejections of the dependent claims as well.
We reverse the rejections under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections are REVERSED.

REVERSED

pgc