Ex Parte Patel

Patent Trial and Appeal Board

Oct 27, 2016

11967155 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111967, 155 12/29/2007
46322 7590 10/31/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33487
FIRST NAMED INVENTOR
Paritosh Patel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOC920070041US1 (076) 6300
EXAMINER
POLLACK, MEL VIN H
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ARITOSH PATEL
Appeal2015-006808
Application 11/967, 155 1
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, 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 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is IBM Corp. App. Br. 2.
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Application 11/967, 155
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed and claimed inventions relate to methods,
systems, and computer program products for simultaneous recording of a
live event and third party information. Abstract.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A live event recording method comprising:
[LI] wirelessly acquiring through a network interface of
a handheld video recorder recording a live performance, third
party information regarding the live performance from a third
party information source over a computer communications
network, the live performance including a live sporting event;
simultaneously recording both the live performance and
also the third party information onto a single recordable
medium in the handheld video recorder; and,
[L2] periodically polling the third party information
source and upon determining that there is updated third party
information, retrieving the updated third party information and
simultaneously recording both the live pe1jormance and also
the updated third party information.
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Jan. 19, 2015 ); Reply Brief ("Reply Br.," filed July 13, 2015 ); Examiner's
Answer ("Ans.," mailed May 20, 2015 ); Final Office Action ("Final Act.,"
mailed Aug. 28, 2014 ); and the original Specification ("Spec.," filed
Dec. 29, 2007 ).
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Application 11/967, 155
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Neale et al. ("Neale") US 2005/0187644 Al Aug. 25, 2005
Minnich US 2007/0081678 Al Apr. 12, 2007
Meek et al. ("Meek") US 2008/0209482 Al Aug. 28, 2008
Rejections on Appeal
RI. Claims 1, 2 and 4---6 stand rejected under 35 USC§ 103(a) as
being unpatentable over the combination of Minnich and Meek. Ans. 2;
Final Act. 4.
R2. Claims 3 and 7 stand rejected under 35 USC§ 103(a) as being
unpatentable over the combination of Minnich, Meek, and Neale. Ans. 2;
Final Act. 9.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 5-13), we decide the
appeal of Rejection RI of claims 1, 2, and 4---6 on the basis of representative
independent claim 1. We decide Rejection R2 of dependent claims 3 and 7,
not separately argued, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant 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)(l)(iv).
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Application 11/967, 155
We disagree with Appellant's arguments with respect to claim 1, 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 Appellant's arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 103 Rejection RI of Claims 1, 2, and 4---6
Issue 1
Appellant argues (App. Br. 5-13; Reply Br. 2-8) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Minnich and Meek 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 limitations L 1 of "wirelessly acquiring through a network
interface ... " and L2, "periodically polling the third party information
source ... , " as recited in claim 1?
Analysis
Limitation LI - "Network Interface"
Regarding limitation L 1, Appellant argues the Examiner's claim
mapping is incorrect because "a network interface is not equivalent to a
radio receiver." App. Br. 7-8.
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Application 11/967, 155
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).3
The Examiner finds, under a broad but reasonable interpretation,
Minnich's radio receiver interface teaches or at least suggests "a network
interface." Ans. 4; Final Act. 4, citing Minnich i-f 7. We agree with the
Examiner's finding because the terms of the disputed claim limitation
"wirelessly acquiring through a network interface" are not defined in
Appellant's Specification, nor has Appellant pointed to any evidence of
record that would support their desired narrower construction. Ans. 3. We
note the claim term "network interface" was not in the originally filed claims
but was added during prosecution. We further agree with the Examiner
because Appellant's Specification describes Bluetooth (using radio
transmitters and receivers); as a known protocol of wirelessly connecting to
a network interface. Ans. 3, citing Spec. 14. Furthermore, the Examiner
supports his findings with Meek's radio frequency signal acquisition
combined with its network interfaces teaching or at least suggesting the
limitation "wirelessly acquiring through a network interface." Ans. 4, citing
Meek i-fi-1 23-26. On this record, we conclude the plain language of the claim
3 See Spec i-f 7 ("It is to be understood that both the foregoing general
description and the following detailed description are exemplary and
explanatory only and are not restrictive of the invention, as claimed.")
(Emphasis added).
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does not preclude interpreting receiving a radio broadcast as a "wireless
connection. "4
Accordingly, we find the Examiner's broad but reasonable claim
interpretation of a "network interface" is not inconsistent with Appellant's
Specification. 5
Appellant also argues Minnich fails to teach the disputed limitation
"wirelessly acquiring ... third party information." App. Br. 9. The
Examiner broadly but reasonably interprets "third party information" to
include alternate audio sources. Ans. 5, citing Appellant's Spec. 13-16. We
agree with the Examiner's finding that Minnich's radio interface system and
alternate audio sources teach or at least suggest the disputed limitation
"wirelessly acquiring ... third party information." Ans. 4--5. We agree with
the Examiner's findings because Appellant does not point to any evidence of
4 We note Appellant attempt to enter new evidence, and not dictionary
definitions, into the record regarding a desired interpretation of the disputed
phrase "network interface." See Reply Br. 3--4 n.1, n.2. Cf 37 C.F.R.
§ 41.30 ("Evidence means something (including testimony, documents and
tangible objects) that tends to prove or disprove the existence of an alleged
fact, except that for the purpose of this subpart Evidence does not include
dictionaries, which may be cited before the Board."); and see 37 C.F.R.
§ 41.41 (b )(2) ("A reply brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other Evidence. See
§ 1.116 of this title for amendments, affidavits or other evidence filed after
final action but before or on the same date of filing an appeal and § 41.33 for
amendments, affidavits or other Evidence filed after the date of filing the
appeal.").
5 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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record that demonstrates the Examiner's claim interpretation is overly broad,
unreasonable, or inconsistent with Appellant's Specification.
Limitation L2 - "Periodically Polling"
Regarding limitation L2, "periodically polling the third party
information," Appellant admits Meek teaches "searching for alternative
audio sources," but argues this is "not equivalent to determining whether
there is updated third party information when polling the third party
information source." App. Br. 12-13.
The Examiner finds Meek's user interface, which allows a user to
search for an alternative third party announcer for a sporting event, teaches
or at least suggests the limitation "periodically polling the third party
information .... " Final Act. 5, citing Meek, Figs. 4--5, i-fi-127-29, 33-36.6
The Examiner finds, under a broad but reasonable interpretation,
Meek's continuing search for replacement content teaches or at least
suggests the disputed limitation "periodically polling the third party
6 See e.g., Meek (i-f33) describing an embodiment that searches for or
queries (i.e., polls for) alternate audio sources: "The alternate audio sources
identified in the listing, for example, may not appeal to the user. The user
may, instead, wish to conduct a search for additional alternate audio
sources not identified in the listing. The alternate audio application 34, then,
may prompt to search for alternate audio sources, despite the listing (Step
104). When the user affirmatively responds to the prompt, the alternate
audio application 34 is authorized to query for additional alternate audio
sources. The alternate audio application 34 calls or invokes the search
application 50 and sends the query for any alternate audio sources
associated with the video content identifier (Step 106). A response to the
query is received (Step 108), and the query result describes more alternate
audio sources that may correspond to the same video content identifier."
(Emphasis added).
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information." Ans. 5---6. We note the claim term "periodically polling" is
not found in the originally filed disclosure, including the originally filed
claims, but was added during prosecution to overcome the cited art of
record. We agree with the Examiner's finding because Meek teaches use of
alternate audio content during a sporting event (Meek i-f 3), and Meek's query
result includes a listing of alternate audio sources, which the user selects
from based his personal preference. Meek i-f 27. We further agree with the
Examiner because we find searching for alternate audio sources of a sporting
event, as shown in the examples in Meek's Figures 4 and 5 (Josh Kendall's
game day podcast, Kyle King's dawgsports podcast), teaches or at least
suggests "periodically polling the third party information." See also n.6,
supra (discussing Meek i-f 33).
We agree with the Examiner's findings cited above that "continuing to
search for replacement content" teaches or at least suggests the recited
"polling." The Examiner buttresses his findings by noting Minnich teaches
that the content of a radio broadcast changes constantly over time, which at
least suggests "polling. "7 Id.
7 Contrary to Appellant's contentions alleging " inherency is not a legally
permissible tool with respect to an inquiry under 35 U.S.C. § 103" (Reply
Br. 6), our reviewing court has long "recognized that inherency may supply
a missing claim limitation in an obviousness analysis." PAR
Pharmaceutical, Inc. v TWI Pharmaceuticals, Inc. 773 F.3d 1186, 1194--95
(Fed. Cir. 2014). Moreover,
[t]he mere fact that a certain thing may result from a given set
of circumstances is not sufficient. If, however, the disclosure is
sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the
questioned function, it seems to be well settled that the
disclosure should be regarded as sufficient. In re Oelrich, 666
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Although not dispositive to our Decision, we further find polling (i.e.,
repeatedly searching or checking for new data, or a change in existing data)
is notoriously well-known in the art, as evidenced by at least Meek (i-f 33).
We find the Examiner (Final Act. 5) provides sufficient articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn, 441 F .3d at 988). We find no error with the Examiner's
conclusion of obviousness as it would have been obvious to someone of
ordinary skill in the art to modify Meek's and Minnich's systems, in the
manner proffered by the Examiner (Final Act. 5), to include polling for third
party information, and to simultaneously record both the live performance
and the third party information, which we find would have merely realized a
predictable result. See KSR, 550 U.S. at 401 ("[A] combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
The U.S. Supreme Court has held "[t]he obviousness analysis cannot
be confined by a formalistic conception of the words teaching, suggestion,
and motivation, or by overemphasis on the importance of published articles
F .2d at 581 (emphasis added) (citations and quotation marks
omitted). Thus, our early precedent, and that of our predecessor
court, established that the concept of inherency must be limited
when applied to obviousness, and is present only when the
limitation at issue is the "natural result" of the combination of
prior art elements. Id.
PAR Pharmaceutical, Inc., 773 F.3d at 1195 (quoting In re Oelrich, 666
F.2d 578, 581(CCPA1981)). Here, Appellants (Reply Br. 6) have not
shown how the Examiner's finding of inherency regarding Minnich would
not have been a "natural result" of the combination of cited prior art
elements. Ans. 6.
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and the explicit content of issued patents." KSR, 550 U.S. at 419. Instead,
the relevant inquiry is whether the Examiner has set forth "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418). Here, Appellant has provided no
evidence that combining such teachings was "uniquely challenging or
difficult for one of ordinary skill in the art," (Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), nor has Appellant
presented evidence that this incorporation yielded more than expected
results. Further, Appellant has not provided objective evidence of secondary
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).
We find Appellant's invention is simply a combination of known
teachings that; at the time of the invention; would have realized a predictable
result. We also find the Examiner has met the requisite burden by
articulating a rationale to modify Minnich's teachings and suggestions with
Meek's continuing search for replacement content, i.e., "polling," or
alternatively, that a polling operation is notoriously well-known in the art.
Thus, we find the Examiner has set forth sufficient "articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
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Appeal2015-006808
Application I 1/967, I 55
Examiner's obviousness Rejection RI of representative independent claim I
and claims 2 and 4---6 which fall therewith. See Claim Grouping, supra.
2. § I03 Rejection R2 of Claims 3 and 7
In view of the lack of any substantive or separate arguments directed
to the obviousness Rejection R2 of dependent claims 3 and 7 under § I 03
(see App. Br. I3), we sustain the Examiner's rejection of these claims, as
they fall with their respective independent claims. Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2-8) 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.
§ 4 I .4 I (b )(2)), which Appellant has not shown. We further note, no new or
non-admitted affidavit or other evidence may be submitted in a Reply Brief.
See 37 C.F.R. § 41.41.
CONCLUSION
(1) The Examiner did not err with respect to obviousness Rejection
RI of claims I, 2, and 4---6 under 35 U.S.C. § I03(a) over the cited prior art
combination of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 3 and 7 under 35 U.S.C. § I 03(a) over the cited prior art
combination of record, and we sustain the rejection.
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DECISION
We affirm the Examiner's decision rejecting claims 1-7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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