Ex Parte Stauder et al

Patent Trial and Appeal Board

Sep 29, 2014

11547372 (P.T.A.B. Sep. 29, 2014)

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.
11/547,372 10/03/2006 Jurgen Stauder PF040055 3174
24336 7590 09/30/2014
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
NGUYEN, KIM T
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
09/30/2014 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 JURGEN STAUDER, IZABELA GRASLAND,
and JOEL SIROT

Appeal 2012-005045
Application 11/547,372
Technology Center 2100
____________

Before MARC S. HOFF, DAVID M. KOHUT, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1–3, 5, and 6. Claim 4 has been cancelled.
App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants’ invention is directed to a device for multimedia data
retrieval, said multimedia data being associated with an active component,
said device being characterized in that, depending on an external event,
some of the active components trigger an action that make the user aware of
the multimedia data associated with said active components See Abstract.
Appeal 2012-005045
Application 11/547,372

2

Claim 1, reproduced below, is illustrative of the claimed subject matter, with
key disputed limitations emphasized:
1. A device for multimedia item retrieval, comprising:
a storage medium and processing means, the storage medium
stores at least one multimedia item associated with an active
component and at least one date;
the processing means requests time information from a
multimedia asset management system and sends remembering
information to a user interface, the processing means
comprising an execution platform for executing the active
component by using said processing means, the active
component for processing both the time information sent by the
multimedia asset management and the at least one date and,
depending on the result of such processing, sending the
remembering information to said user interface, the
remembering information comprising a trigger of an action that
makes a user aware of the multimedia item.

The Examiner relies on the following as evidence of unpatentability:
Nakamura US 2004/0201740 A1 Oct. 14, 2004

THE REJECTION
The Examiner rejected claims 1–3, 5, and 6 under 35 U.S.C. §102(e)
as anticipated by Nakamura. Ans. 4–6.1

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 6–13) and the Reply Brief (Reply

1 Throughout this opinion, we refer to the Appeal Brief filed July 18, 2011;
the Examiner’s Answer mailed October 28, 2011; and, the Reply Brief filed
December 27, 2011.
Appeal 2012-005045
Application 11/547,372

3
Br. 5–8) that the Examiner has erred. We have also reviewed the findings
set forth by the Examiner in the action from which this appeal is taken (Non-
Final Rej. 2–5), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 4–6).
We highlight and amplify certain teachings and suggestions of the
references as follows.
Appellants argue that Nakamura fails to disclose or suggest the
claimed “remembering information” which Appellants expressly claim as “a
trigger of an action that makes a user aware of the multimedia item.” App.
Br. 8.
The Examiner, cites Nakamura, ¶¶ 42–52 and ¶ 27 which the
Examiner found discloses the claimed “remembering information.”
Additionally, in response to Appellants’ arguments, the Examiner cites ¶¶
29–30 of Nakamura which the Examiner finds describes “prompting to the
user a calendar which contains the events, identified by an event titles such
as Dad's birthday, Nicholas's Birthday, Summer break, Spring break, New
York vacation, Paris vacation, 10th anniversary, Silver anniversary and etc.
which makes the user be aware of.” Ans. 6.
Claim Interpretation
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). 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 in question at the time of the invention,
i.e., as of the effective filing date of the patent application.” Id. at 1313.
Appeal 2012-005045
Application 11/547,372

4
Here, a proper interpretation of “remembering information” is
necessary to determine if the Examiner has met the initial burden of
presenting a prima facie case of obviousness. In re Rijckaert, 9 F.3d 1531,
1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)).
Appellants’ Specification describes “remembering information” as
being generated in response to time information being sent to the claimed
multimedia asset management system. When that time information
corresponds to an anniversary of the creation date, the
corresponding agent will send the content of the multimedia
item to the user interface 3 or will send to the user interface 3 a
remembering information informing the user that the database
contains a multimedia item, for instance a photo representing
the first steps of his young daughter, on that day some years
ago.
See Spec. ¶ 28.
Nakamura
We have reviewed the disclosure of Nakamura and we find that the
relied upon portions thereof describe prompting the user “for the name of the
data source, which is preferably a calendar, based on which user seeks to
organize images stored on image capture device 23.” ¶ 29. Thereafter
Nakamura describes the use of such named calendars to organize images.
Appeal 2012-005045
Application 11/547,372

5
We find nothing within the cited portions of Nakamura which
discloses or suggests the generation of “remembering information” which is
sent to the user by a processor to make the “user aware of the multimedia
item” as claimed. We find those portions of Nakamura which describe
prompting the user for calendar names utilized to store images are not
“remembering information.”

CONCLUSION
The Examiner erred in rejecting claims 1–3, 5, and 6 under § 102(e).

ORDER
The Examiner’s decision rejecting claims is reversed.

REVERSED

kme