Ex Parte Newman et alDownload PDFPatent Trial and Appeal BoardJan 27, 201612603457 (P.T.A.B. Jan. 27, 2016) Copy Citation 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. 12/603,457 10/21/2009 Lucas Christopher Newman 04860.P7684 6558 45217 7590 01/27/2016 APPLE INC./BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 1279 OAKMEAD PARKWAY SUNNYVALE, CA 94085-4040 EXAMINER NGUYEN, LE V ART UNIT PAPER NUMBER 2174 MAIL DATE DELIVERY MODE 01/27/2016 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 LUCAS CHRISTOPHER NEWMAN and CHARLES JOHN PISULA ____________________ Appeal 2014-002259 Application 12/603,4571 Technology Center 2100 ____________________ Before LARRY J. HUME, NATHAN A. ENGELS, and JOHN D. HAMANN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Apple Inc. App. Br. 1. Appeal 2014-002259 Application 12/603,457 2 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention "relate to systems and methods for playing media content on a device." Spec. ¶ 2 ("FIELD OF THE INVENTION"). Exemplary Claims Claims 9 and 20, reproduced below, are representative of the subject matter on appeal (emphases and formatting added to contested limitations): 9. A non-transitory machine readable storage medium storing executable instructions which when executed by a processor cause the processor to perform operations comprising: playing content by a native media player in response to receiving a request from a third party application, the native media player and the third party application both executing on the processor, and the content being associated with the request and inaccessible by the third party application;[3] continuing playing the content by the native media player after the third party application terminates; 2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed June 10, 2013); Reply Brief ("Reply Br.," filed Nov. 12, 2013); Examiner's Answer ("Ans.," mailed Sept. 11, 2013); Final Office Action ("Final Act.," mailed Sept. 12, 2012); and the original Specification ("Spec.," filed Oct. 21, 2009). 3 In the event of further prosecution, we invite the Examiner's attention to the recitation in claim 9 of "and the content being associated with the request and inaccessible by the third party application" to ensure clarity and compliance with the definiteness requirements of 35 U.S.C. § 112, second paragraph. (Emphasis added). Appeal 2014-002259 Application 12/603,457 3 displaying a graphical user interface of the native media player in response to a request from a user, wherein the graphical user interface includes information corresponding to the content playing in response to the request from the third party application. 20. A system comprising: a processor coupled to a memory through a bus; a sensor coupled to the processor through the bus; executable instructions stored in the memory which when executed by the processor cause the processor to: receive a first third party media request from a third party application executing on the processor, send a first native media player request to a native media player in response to receiving the first third party media request, wherein the native media player is also executing on the processor and performs a content operation on content associated with the first third party media request that is inaccessible to the third party application in response to receiving the first native media player request, receive a second third party media request from the third party application, wherein the second third party media request is generated in response to an input from the sensor, send a second native media player request to the native media player in response to receiving the second third party media request, wherein the native media player performs a modified content operation in response to receiving the second native media player request. Appeal 2014-002259 Application 12/603,457 4 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Edery et al. ("Edery") US 2006/0026677 A1 Feb. 2, 2006 Malabuyo et al. ("Malabuyo") US 2006/0205517 Al Sept. 14, 2006 Turner US 2007/0079691 A1 Apr. 12, 2007 Patsiokas et al. ("Patsiokas") US 2008/0162358 A1 July 3, 2008 Rejections on Appeal4 R1. Claims 1–19 and 23–30 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Patsiokas, Malabuyo, and Edery. Ans. 2. R2. Claims 20–22 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Patsiokas, Turner, and Edery. Ans. 12. CLAIM GROUPING Based on Appellants' arguments (App. Br. 4–6), we decide the appeal of obviousness Rejection R1 of claims 1–19, and 23–30 on the basis of representative claim 9; and we decide the appeal of obviousness Rejection R2 of claims 20–22 on the basis of representative claim 20. 4 "Appellant[s] respectfully draw[] the Board's attention to the fact that claim numbers 7 and 8 were duplicated in the originally filed claims. The second instances of claims 7 and 8 were cancelled and re-entered as claims 29–30." App. Br. 2. Because Appellants do not separately argue these claims, we leave it to the Examiner to determine the correct status of the claims in light of our Decision herein and Appellants' admission quoted above. Appeal 2014-002259 Application 12/603,457 5 ISSUES AND ANALYSIS In reaching this Decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellants' arguments with respect to claims 1–30, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claims 9 and 20 for emphases as follows. 1. Rejection R1 of Claims 1–19 and 23–30 Issue 1 Appellants argue (App. Br. 4–6; Reply Br. 2–3) the Examiner's rejection of claim 9 under 35 U.S.C. § 103(a) as being obvious over the combination of Patsiokas, Malabuyo, and Edery is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests "[a] non-transitory machine readable storage medium storing executable instructions which when executed by a processor cause the processor to perform . . . playing content by a native media player in response to receiving a request from a third party application," wherein, inter alia, "the native media player and the third party application both Appeal 2014-002259 Application 12/603,457 6 execut[e] on the processor, and the content . . . associated with the request [is] inaccessible by the third party application," as recited in claim 9? Analysis Appellants contend the Examiner erred in finding Patsiokas' media player in device 22 is equivalent to the claimed native media player executed by the processor, and also erred in finding Patsiokas' client application 34 executing on computer 24 is equivalent to the claimed third party application, which Appellants allege is also executed by the processor. App. Br. 5. Appellants argue the Examiner purportedly erred because device 22 and computer 24 in Patsiokas are different devices and, therefore, have different processors. Id. In response to Appellants' arguments, the Examiner finds, and we agree: While claim 9 recites "a processor", it is well known in the art to use a single processor system instead of a multiple processors system to process computer data. Therefore, it would have been obvious to one of ordinary in the art to use single processor system instead a multiple processor system to execute both the native media player and third party application. Ans. 16. We agree with the Examiner because Appellants have not demonstrated the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Nor have Appellants provided objective evidence of secondary Appeal 2014-002259 Application 12/603,457 7 considerations which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Rather, we find that Appellants' invention is simply a combination of known teachings that realize a predictable result. The Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR, 550 U.S. at 418. The skilled artisan would "be able to fit the teachings of multiple patents together like pieces of a puzzle" since the skilled artisan is "a person of ordinary creativity, not an automaton." Id. at 420–21. Appellants further allege: Although Patsiokas discloses the client application 34 can request content download from a remote location, such as an online media store, for content, Appellant [sic] respectfully submits a request to download content from a remote location is not technically equivalent to a request to a media player to play inaccessible content as claimed by Appellant [sic]. Therefore, Patsiokas cannot be properly interpreted as teaching or suggesting Appellant[s’] claimed third party application. App. Br. 5–6. Appellants additionally contend, "Edery's potentially malicious application cannot be properly interpreted as teaching or suggesting Appellant[s'] claimed third party application that requests the native media player play content that is inaccessible to the third party application," because "Edery does not disclose any type of application that itself accesses a file in response to a file access request from a potentially malicious application." App. Br. 6. Appeal 2014-002259 Application 12/603,457 8 We note, "[i]n the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)(citation omitted); accord Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art . . . at the time of the inventionâ€). As pointed out by the Examiner, we find Appellants have not cited to a definition of "content . . . inaccessible by the third party application" (claim 9) in the Specification that would preclude the Examiner's broader reading. Ans. 16. We specifically note Appellants' challenge to the references individually with respect to claim 9 (Reply Br. 2) is not convincing of error Appeal 2014-002259 Application 12/603,457 9 in the Examiner's position because all of the features of the secondary reference need not be bodily incorporated into the primary reference, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425–26 (CCPA 1981)("[O]ne cannot show non- obviousness by attacking references individually where . . . the rejections are based on combinations of references."). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Further, with respect to claim 9 and the contested "inaccessible" limitation added during prosecution, Appellants point to paragraph 28 of their Specification as allegedly providing support for Appellants' interpretation.5 We disagree, however, that the portion of the Specification cited by Appellants rises to the level of a definition sufficiently explicit to preclude the Examiner's broad but reasonable interpretation, nor have Appellants presented any evidence on this record that demonstrates the Examiner's interpretation is inconsistent with Appellants' Specification. In addition, and for the first time in the Reply Brief, Appellants attempt to separately argue independent method claim 1, i.e., "the Examiner's interpretation of Patsiokas as disclosing Appellant[s’] data 5 "In some embodiments, third party application 102 is prohibited from directly accessing content 108 or metadata 110. In other embodiments, third party application 102 also does not receive any content data from content 108 and content playback occurs in native media player 106." Spec. ¶ 28 (emphasis added). Appeal 2014-002259 Application 12/603,457 10 processing system that executes both a third party application and a native media player as claimed in claim 1 is improper and Appellant[s] respectfully requests the Board to find accordingly." Reply Br. 2 (emphasis added).6 However, under our rules, we find Appellants' argument to be untimely. See 37 C.F.R. § 41.41(b)(2). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 9, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 9, and grouped claims 1–8, 10–19, and 23–30, which fall therewith. See Claim Grouping, supra. 2. Rejection R2 of Claims 20–22 Issue 2 Appellants argue (App. Br. 7–8; Reply Br. 3) the Examiner's rejection of claim 20 under 35 U.S.C. § 103(a) as being obvious over the combination of Patsiokas, Turner, and Edery is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a system that includes "a processor coupled to a memory through 6 Appellants erroneously appear to characterize method claim 1 as a system claim. "[T]he Examiner is interpreting Appellant[s’] data processing system as having two processors, one equivalent to the processor of device 22 in Patsiokas and one equivalent to the processor of computer 24 in Patsiokas, to find that Patsiokas reads on claim 1." Reply Br. 1. Appeal 2014-002259 Application 12/603,457 11 a bus" and "executable instructions stored in the memory," wherein, inter alia, "the native media player is also executing on the processor and performs a content operation on content associated with the first third party media request that is inaccessible to the third party application in response to receiving the first native media player request," as recited in claim 20? Analysis Appellants contend the Examiner erred in rejecting claim 20, essentially for the same reasons set forth with respect to Rejection R1 of claim 9.7 We disagree with Appellants' arguments, and incorporate the Examiner's findings and legal conclusions herein as our own. Ans. 12–16.8 Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 20, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 20, and grouped claims 21 and 22, which fall therewith. See Claim Grouping, supra. 7 "Neither Patsiokas nor Edery . . . [teach or suggest the contested limitation]. Therefore, the obviousness rejection of independent claim 20 is only proper if Turner discloses Appellant[s’] claimed native media player and third party application, both executing on the claimed processor, and Appellant[s’] claimed request." App. Br. 7. 8 Appellants unpersuasively argue "the Examiner has provided no response to Appellant[s’] arguments for independent claim 20, which was argued separately from claims 1 and 9." Reply Br. 3; cf. Ans. 12–16. Appeal 2014-002259 Application 12/603,457 12 REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1–3) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections R1 and R2 of claims 1–30 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1–30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rwk Copy with citationCopy as parenthetical citation