15135772 - (D) (P.T.A.B. Apr. 16, 2020)

eVideo Incorporated

Patent Trials and Appeals BoardApr 16, 2020

15135772 - (D) (P.T.A.B. Apr. 16, 2020)

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. 15/135,772 04/22/2016 Mauro DIDOMENICO 12296-0002C 3974 22902 7590 04/16/2020 CLARK & BRODY 1700 Diagonal Road Suite 310 Alexandria, VA 22314 EXAMINER SALCE, JASON P ART UNIT PAPER NUMBER 2421 MAIL DATE DELIVERY MODE 04/16/2020 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 MAURO DIDOMENICO _____________ Appeal 2019-001849 Application 15/135,772 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and MICHAEL J. STRAUSS, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of claims 19–29. Claims 1–18, 30, and 31 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We Affirm. We additionally exercise our discretion under 37 C.F.R. § 41.50(b), and enter a NEW GROUND OF REJECTION under pre-AIA 35 U.S.C. § 112, fourth paragraph, for claims 20–29, which we conclude are improper 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is eVideo Incorporated. See Appeal Br. 3. Appeal 2019-001849 Application 15/135,772 2 dependent claims. We also enter a new ground of rejection for dependent claims 20–29 under pre-AIA 35 U.S.C. § 112, second paragraph, as being of indefinite scope. We further enter a new ground of rejection under 35 U.S.C. § 112, second paragraph, for dependent claims 25–29, which we conclude are of indefinite as hybrid claims. STATEMENT OF THE CASE 2 Introduction Appellant’s claimed invention relates generally to “delivering video on demand.” (Spec. ¶ 2). Independent Method Claim 19 19. [L1] A method for providing video on demand at a portal hosted at a web site and in communication with a plurality of video servers via a packet data communication network, consisting of the steps of: establishing a communications session with a user via the packet data communication network with a browser executing on a computer operated by the user, the user having no initial relationship to the portal; receiving an Internet Protocol (IP) address of a video decoding device of the user from the browser via the communications session, a request from the user for a particular video selection as part of said communications session, and 2 We herein refer to the Final Office Action, mailed Sept. 13, 2017 (“Final Act.”); Appeal Brief, filed July 13, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed Oct. 24, 2018 (“Ans.”), and the Reply Brief, filed Dec. 26, 2018 (“Reply Br.”). Appeal 2019-001849 Application 15/135,772 3 payment from the user for the requested particular video selection; searching a plurality of video servers for the video selection via the packet data communication network during said communications session; selecting one of the video servers that stores video content that corresponds to the user video selection during said communication session; and communicating the received Internet Protocol (IP) address of the video decoding device at the user's location to the selected video server during said communication session; causing the selected video server to download the corresponding video content to the video decoding device during said communication session for viewing the video content at a customer's premise, the communication session starting with the establishing step and ending when the video content is downloaded, wherein the absence of any initial relationship with the portal, paying for the video content at the time of request, and using of the IP address as part of the communications session allows the user to be independent of the portal and permits obtaining a desired video selection whenever the user decides, and [L2] repeating the steps of establishing, receiving, searching, selecting, communicating, and causing one or more times for selection of additional video content for the user. Appeal Br. 24–25, “CLAIMS APPENDIX.” (Bracketed lettering added, emphasis added). We also reproduce dependent system claim 25 below, which depends directly from sole independent method claim 19 (see last line of claim 25): Appeal 2019-001849 Application 15/135,772 4 Dependent System Claim 25 25. A system comprising: a plurality of video content servers being respectively configured to store video content; and a web portal configured to communicate with the plurality of video content servers and to receive, from a computer of a user, the user having no initial relationship to the portal, an Internet Protocol (IP) address of a video decoding device of the user from a browser via a communications session, a request from the user for a particular video selection as part of said communications session, and payment from the user for the requested particular video selection; wherein the web portal is further configured, based on user selection of video content, to search the plurality of video servers for the requested video selection and to select one of the plurality of video servers that stores video content that corresponds to the user video selection during said communication session; and wherein the web portal is further configured to establish a communication path for the received Internet Protocol (IP) address to a video decoding device at the user's location via the selected video server during said communication session and causing the selected video server to download the corresponding video content to the video decoding device during said communication session for viewing the video content at a customer's premise, the communication session starting with the establishing step and ending when the video content is downloaded, wherein the absence of any initial relationship with the portal, paying for the video content at the time of request, and using of the IP address as part of the communications session allows the user to be independent of the portal and permits obtaining a desired video selection whenever the user decides, the system practicing the method of claim 19. Appeal Br. 26–27, “CLAIMS APPENDIX” (emphasis added). Appeal 2019-001849 Application 15/135,772 5 References The prior art relied upon by the Examiner as evidence is: Name Reference Date Garfinkle Slezak Franco Wong et al. Lu 5,400,402 6,006,257 US 2002/0046407 A1 US 6,968,364 B1 US 7,231,411 B1 Mar. 21, 1995 Dec. 21, 1999 Apr. 18, 2002 Nov. 22, 2005 June 12, 2007 Rejections A. Claims 19–29 are rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. See Final Act. 5. B. Claims 19–29 are rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. See Final Act. 5. C. Claims 19–29 are rejected under pre-AIA 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.3 See Final Act. 6. 3 In our review of the Final Act. 5–7, we find cancelled claims 30 and 31 rejected under both pre-AIA 35 U.S.C. § 112, first and second paragraphs. Accordingly, we treat Examiner’s Rejections A, B, and C of claims 19–31 under the applicable pre-AIA 35 U.S.C. § 112 rejections as a typographical Appeal 2019-001849 Application 15/135,772 6 D. Claims 19, 23, 25 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Slezak in view of Wong et al. (“Wong”) and Franco. See Final Act. 7. E. Claims 20–22 and 26–28 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Slezak, Wong, Franco, and Garfinkle. See Final Act. 15. F. Claim 24 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Slezak, Wong, Franco, and Lu. See Final Act. 17. Prior Related PTAB and BPAI Decisions Appeal 2015-007526, Application No. 13/333,840, PTAB Decision mailed Feb. 22, 2016. An oral hearing was conducted on February 16, 2016. Examiner affirmed. Appeal 2011-000039, parent Application 09/840,868, BPAI Decision mailed Oct. 21, 2011, Examiner Reversed, and a new ground of rejection was entered pursuant to 37 C.F.R. § 41.50(b). Appeal 2008-000662, parent Application 09/840,868; BPAI Rehearing Decision mailed March 11, 2009; the request for rehearing was denied. Appeal 2008-000662, parent Application 09/840,868; BPAI Decision mailed Nov. 26, 2008; Examiner Affirmed. error that was intended to reference pending claims 19–29. Appropriate corrections have been made above. Appeal 2019-001849 Application 15/135,772 7 Continuity Information for Instant Application 15/135,772 Instant Application No. 15/135,772 was filed on 04/22/2016 and has one RCE-type filing therein. Application No. 15/135,772 is a continuation of 13/333,840, filed on 12/21/2011, now abandoned and has one RCE-type filing therein. Application No. 13/333,840 is a continuation of 09/840,868, filed on 04/25/2001, now abandoned and has one RCE-type filing therein. Application No. 09/840,868 claims priority from provisional application 60/259,903, filed on 01/08/2001. Source: USPTO PALM system. ANALYSIS Rejection A of claims 19–29 under 35 U.S.C. § 112, first paragraph, enablement Although Appellant refers to and quotes the Examiner’s enablement rejection on page 13 of the Appeal Brief, we find Appellant advances no separate, substantive arguments traversing the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, for lack of enablement. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we summarily sustain Rejection A of claims 19–29 under 35 U.S.C. § 112, first paragraph (enablement), based upon the doctrine of waiver. Rejection B of claims 19–29 under 35 U.S.C. § 112, first paragraph, written description Appellant argues “the Examiner errs in the contention that the Repeating Limitation L2 is not supported by the specification as originally filed.” Appeal Br. 15. Appeal 2019-001849 Application 15/135,772 8 Appellant further contends: On one hand when rejecting the claims using 35 USC § 112, the Examiner admits that the purchase of additional videos by a user is disclosed. On the other hand, the Examiner is taking the position that the specification does not disclose that the additional purchase involves a repeating of the claimed sequence of steps used to make the first purchase. In making this rejection, the Examiner does not say why the specification does not support the repeating limitation but just concludes that it does not. Appeal Br. 15. Appellant also contends: “the fact that the specification does not explicitly say that the steps of claim 19 are repeated does not mean that this concept is [not] taught by the specification at all.” Appeal Br. 16. Our reviewing court guides the written description “must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation and quotations omitted). The test is whether the disclosure “conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. “[A]ctual ‘possession’ or reduction to practice outside of the specification is not enough. Rather, . . . it is the specification itself that must demonstrate possession.” Id. at 1352; see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008) (explaining that § 112, ¶ 1 “requires that the written description actually or inherently disclose the claim element”). See also Lockwood: Appeal 2019-001849 Application 15/135,772 9 [I]t is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . Rather, it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added). We note the purported support for the newly added “repeating” step is indicated in the Appeal Brief: “Support for the repeating step of claim 19 and claim 25 is found in paragraph [28] of the specification and Figure 1.” Appeal Br. 10. We reproduce paragraph 28 of the Specification below: The approach to VOD and e-entertainment outlined herein and shown schematically in FIG. 1 creates the opportunity for a new business model for VOD distribution. In this model, customers have control of the entertainment products they buy. They only pay for what they see on a pay per view basis. All pricing is handled through the eVideo Web site and all transactions are through credit card purchases. In essence, customers have a completely automated virtual video store at their disposal any time of day. All of the video components from the customer side are customer owned or customer obtained, such as the local broadband connection and set top box. The VOD provider sets up the Web site creating the VOD and e-entertainment portal. The e commerce functions that are part of the VOD would occur through the e Video Web site. The VOD provider would set up through ownership, or partnering relationships, the video server network configuration with the search software that integrates all the server sites together. The VOD provider markets its VOD delivery capabilities to video content providers and producers giving them the opportunity to reach customers on the terms and conditions that are best suited to their business Appeal 2019-001849 Application 15/135,772 10 interests. From the standpoint of content producers, the VOD provider is creating an electronic virtual theater with electronic ticketing for video asset event distribution to a wide assortment of customers that have broadband connections. These customers could be in cable networks, DSL networks, or DBS networks. Spec. ¶ 28 (emphasis added). At best, we find paragraph 28 describes that “customers have control of the entertainment products they buy,” referring to plural purchases of entertainment products. (emphasis added). However, we find no express written description support for the complete “repeating” step of method claim 19 that was added by amendment: “repeating the steps of establishing, receiving, searching, selecting, communicating, and causing one or more times for selection of additional video content for the user.” (emphasis added). Nor do we find express written description support for the claim 19 “repeating” step in Figure 1 of Appellant’s drawings. In reviewing the record, we find Appellant admits “the specification does not explicitly say that the steps of claim 19 are repeated.” Appeal Br. 16 (emphasis added). However, Appellant urges that this “does not mean that this concept is [not] taught by the specification at all.” Id. Under the controlling authority of Lockwood, “it is a question [of] whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood, 107 F.3d at 1572 (emphasis added). Here, we find the plural purchase language in paragraph 28 merely suggests the repeated steps, without providing express written description Appeal 2019-001849 Application 15/135,772 11 support, as required to show possession of the invention under 35 U.S.C. § 112, first paragraph. See Lockwood, 107 F.3d at 1572. Moreover, Appellant only incorporated the “repeating” step into independent claim 19 after years of prosecution and is now unable to direct attention to any disclosure sufficient to persuade us the “repeating” step was intended as part of the inventive subject matter at the time the application was originally filed. We note the “repeating” step of independent claim 19 was added by an amendment filed on July 24, 2017.4 Thus, the issue before us is not just whether Appellant’s disclosure merely suggests and thus renders obvious the newly added “repeating” step (which is insufficient to show possession under Lockwood, 107 F.3d at 1572), but also whether one skilled in the art would have understood that such repetition was integral to the subject matter invented, such that the inventor would have been in possession of the invention (including the “repeating” step added by the claim 19 amendment), at the time the invention was originally filed. On this record, we find Appellant has not shown the originally filed Specification “conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm. 598 F.3d at 1351. Accordingly, we sustain the Examiner’s Rejection B of claims 19–29 under pre-AIA 35 U.S.C. § 112, first paragraph, as lacking adequate written 4 See Claim 19 (“repeating the steps of establishing, receiving, searching, selecting, communicating, and causing one or more times for selection of additional video content for the user”). Appeal 2019-001849 Application 15/135,772 12 description to demonstration possession of the claim limitation added by amendment: “repeating the steps of establishing, receiving, searching, selecting, communicating, and causing one or more times for selection of additional video content for the user.” Independent Claim 19 (emphasis added). Rejection C of claims 19–29 under 35 U.S.C. § 112, second paragraph The Examiner concludes claims 19–29 are indefinite under pre-AIA 35 U.S.C. § 112, second paragraph, because: “[w]hile Paragraph 0028 does imply that a user could request more than one video, Paragraph 0028 fails to explicitly teach repeating each step recited in the claims. Therefore, the claim amendments do not particular[ly] point out and distinctly claim the subject matter of the invention.” Final Act. 7. Appellant notes “the Examiner has not objected to the form of claim 19 and its sequence of steps prior to the addition of the repeating limitation [therefore] . . . the sequence of steps . . . [is] definite from the standpoint of 35 USC §112.” Appeal Br. 16. We conclude the basis for Rejection C, as stated by the Examiner (Final Act. 7), conflates the written description requirement under pre-AIA 35 U.S.C. § 112, first paragraph, with indefiniteness under pre-AIA 35 U.S.C. § 112, second paragraph. Moreover, we see no language that is indefinite in the “repeating” step of method claim 19 that was added by amendment after our prior Decision (PTAB Appeal 2015-007526). Appeal 2019-001849 Application 15/135,772 13 Accordingly, we are constrained on this record to reverse the Examiner’s Rejection C of claims 19–29 under pre-AIA 35 U.S.C. § 112, second paragraph. Rejection D of Independent Claims 19 under pre-AIA § 103(a) Issue: Under 35 U.S.C. § 103(a), we focus our analysis on the following argued limitations that we find to be dispositive regarding Rejection D of sole independent method claim 19: Did the Examiner err by finding Slezak, Wong, and Franco collectively teach or suggest the disputed limitations “L1” and “L2:” [L1] A method for providing video on demand at a portal hosted at a web site and in communication with a plurality of video servers via a packet data communication network, consisting of the steps of: . . . and; 5 [L2] repeating the steps of establishing, receiving, searching, selecting, communicating, and causing one or more times for selection of additional video content for the user, within the meaning of representative independent claim 19?6 (emphasis added). See Final Act. 7. 5 We note that the transitional phrase “consisting of” was added to claim 19 in an amendment submitted concurrently with the Request for Continued Examination that was filed on Jan. 17, 2017. The originally-filed claims did not include any claims that recited the closed set “consisting of” transitional language. 6 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-001849 Application 15/135,772 14 Analysis Appellant disputes the Examiner’s findings regarding limitations “L1” and “L2” of claim 19, by contending: [M]ethod claim 19 defines a series of specific steps using “consisting of” and is closed to these recited steps both practiced once and repeated as claim 19 calls for. Put another way, repeating the steps of claim 19 excludes the lookup steps of Slezak and a method of obtaining additional videos using the sequence of steps of claim 19 is not taught by this prior art . . . . The Examiner ignores the fact that a repeating of the Slezak method requires the subscribed look up and this step is excluded from claim 19. App. Br. 20 (emphasis added). The Examiner disagrees with Appellant, and notes that Appellant had argued “that because of the ‘consisting of’ language, each step must be repeated.” Ans. 12. The Examiner then emphasizes that Appellant “further does not dispute the fact that Slezak discloses obtaining additional videos,” and further reiterates “that Franco and Wong also disclose receiving additional videos.” Id. The phrase “consisting of” is a “closed” transitional phrase that is “understood to exclude any elements, steps, or ingredients not specified in the claim.” AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1244–45 (Fed. Cir. 2001); see also CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1361 (Fed. Cir. 2007) (“It is equally well understood in patent usage that ‘consisting of’ is closed-ended and conveys limitation and exclusion.”). Appeal 2019-001849 Application 15/135,772 15 But cf. Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (“‘consisting of’ is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim ... [however] . . . it does not limit aspects unrelated to the invention.”) (emphasis added); see also Conoco, Inc. v. Energy & Environmental International, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006) (“Although ‘consisting of’ is a term of restriction, the restriction is not absolute.”). See also In re Taylor, 445 Fed. Appx. 343, 346 (Fed. Cir. 2011) (nonprecedential) (“As the Solicitor pointed out, MPEP § 2111.03 recognizes the case law exceptions to the rule of absolute exclusion.”). This reasoning is applicable here. Therefore, we agree with Appellant that the use of the transitional phrase “consisting of” within the preamble of method claim 19, effectively excludes any step not specified in the claim. See AFG Indus., 239 F.3d at 1245; see also MPEP § 2111.03(II). In so concluding, we turn to the Final Action (9, 11, 13). Although the Examiner points to specific teachings found in Slezak, Wong, and Franco that cumulatively teach selecting additional videos (i.e., suggesting “repeating” step “L2”), the Examiner did not fully develop the record regarding any claim construction analysis, nor set forth specific findings establishing the limiting closed-set scope required by the “consisting of” transitional phrase recited in the preamble of independent method claim 19. See Final Act. 7–14. In the Answer (9–15), the Examiner supports the rejection by merely restating the specific teachings of Slezak, Wong, and Franco, as applied to “repeating” step “L2” but does not address Appellant’s arguments against these teachings stemming from Appellant’s express intent to use the Appeal 2019-001849 Application 15/135,772 16 transitional phrase “consisting of the steps of:” in the preamble of claim 19 to exclude any step not specified within the body of independent method claim 19. (emphasis added). Nor has the Examiner shown or explained how the additional subscribed lookup step in Slezak is unrelated to the invention under the guidance of Norian Corp., 363 F.3d at 1331 (“‘consisting of’ is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim . . . [however] . . . it does not limit aspects unrelated to the invention.”) (emphasis added); see Id. at 1331–32 (holding that a spatula added to a kit was “not a part of the [chemical] invention that [wa]s described”). In the Reply Brief, Appellant argues that “Slezak and Franco are both lookup or authentication systems . . . that require both a registration of a user and a look up from a database if the user accesses the system again.” Reply Br. 4. Appellant urges that “[t]his lookup or authentication step is excluded by claims 19 and 25.” Appellant further notes: In the comment on page 12 of the Examiner’s Answer, the Examiner ignores this aspect of Slezak and that fact that the claim defines a closed set of step[s] by the term “consisting of” and merely notes that obtaining of additional videos is taught by Slezak. Appellant is not claiming a method like Slezak and repeating it; claim 19 is not taught by Slezak, even if modified by Franco. Reply Br. 4 (emphasis added). Therefore, for essentially the same reasons argued by Appellant (id.) we find the Examiner has not fully developed the record to show how the teachings of Slezak, Wong, and Franco individually or collectively teach or suggest the disputed repeating step “L2” to repeat only the steps of Appeal 2019-001849 Application 15/135,772 17 independent method claim 19 that are recited in the body of the claim, to the exclusion of any other additional steps or elements, as required by the “consisting of” language recited in the preamble of claim 19. See MPEP § 2111.03(II). Accordingly, for essentially the same reasons argued by Appellant in the Briefs, we are constrained on this record to reverse the Examiner’s § 103 Rejection D of independent claim 19, and associated dependent claims 23, 25, and 29, also rejected on the same basis under Rejection D. Rejections E and F of claims 20–22, 24, and 26–28 Under pre-AIA § 103(a) For essentially the same reasons pertaining to the closed set “consisting of” language recited in the preamble of sole independent method claim 19, as argued by Appellant and discussed above, we are constrained on this record to reverse remaining dependent claims 20–22, 24, and 26–28 under § 103 Rejections E and F. NEW GROUND OF REJECTION for Dependent Claims 20–29 under Pre-AIA 35 U.S.C. § 112, 4th Paragraph Under our authority pursuant to 37 C.F.R. § 41.50(b), we set forth a new ground of rejection of dependent claims 20–29 under pre-AIA 35 U.S.C. §112, 4th paragraph, as being of improper dependent form for failing to specify a further limitation of the subject matter claimed. “[A] claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by Appeal 2019-001849 Application 15/135,772 18 reference all the limitations of the claim to which it refers.” Pre-AIA 35 U.S.C. § 112, fourth paragraph. (emphasis added). We recognize that the literal language of dependent claims 20–29 does specify a further limitation of the subject matter claimed by independent method claim 19. However, a problem arises because of the guidance in MPEP § 2111.03(II): “A claim which depends from a claim which ‘consists of’ the recited elements or steps cannot add an element or step.” (emphasis added). Because the preamble of independent method claim 19 recites closed- set transitional language (“consisting of the steps of:”), and in accordance with MPEP § 2111.03(II), method claim 19 cannot have any additional dependent claims which “add an element or step.” Id. Therefore, even though the literal language of each dependent claim 20–29 does specify a further limitation of the subject matter claimed by independent method claim 19, we conclude dependent claims 20–29 improperly add additional method steps and/or elements to the closed set (“consisting of”) of independent method claim 19, in violation of the USPTO practice and procedure guidance set forth under MPEP § 2111.03(II). Because we conclude claims 20–29 are in improper dependent claim form under pre-AIA 35 U.S.C. § 112, fourth paragraph, for the reason discussed above regarding MPEP § 2111.03(II), we set forth a new ground of rejection under pre-AIA 35 U.S.C. § 112, fourth paragraph, for dependent claims 20–29. Appeal 2019-001849 Application 15/135,772 19 NEW GROUND OF REJECTION for Dependent Claims 20–29 under Pre-AIA 35 U.S.C. 112, 2nd Paragraph In the event our reviewing court may find our application of pre-AIA 35 U.S.C. § 112, fourth paragraph, to be inapplicable here,7 in the alternative, we exercise our discretion under 37 C.F.R. § 41.50(b) and enter a NEW GROUND OF REJECTION under pre-AIA 35 U.S.C. § 112, second paragraph, because we conclude the improper dependent claim form of claims 20–29 under MPEP § 2111.03(II) raises a question regarding the indefinite scope of every dependent claim 20–29 on appeal. We therefore set forth a new ground of rejection under pre-AIA 35 U.S.C. § 112, second paragraph, for all dependent claims 20–29, as being of indefinite scope, because these dependent claims improperly add additional method steps and/or elements to the closed set (“consisting of”) of independent method claim 19, in violation of the USPTO practice and procedure guidance set forth under MPEP § 2111.03(II). 7 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2019-001849 Application 15/135,772 20 NEW GROUND OF REJECTION for Dependent Claims 25–29 under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite as hybrid claims. We further exercise our discretion under 37 C.F.R. § 41.50(b) and enter a NEW GROUND OF REJECTION under 35 U.S.C. § 112, second paragraph, for claims 25–29, which we conclude are indefinite as hybrid claims. We note the last line of claim 25 recites: “the system practicing the method of claim 19.” We further note independent method claim 19 recites at least one user-performed step (“permits obtaining a desired video selection whenever the user decides”) (emphasis added). System claim 25 similarly recites functions performed by a user (indicated in bold supra). “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.” MPEP § 2173.05(p)(II) (citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011) (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)). See also MasterMine Software, Inc. v. Microsoft Corporation, 874 F.3d 1307 (Fed. Cir. 2017) (providing clarifying guidance in applying IPXL Holdings); see also UltimatePointer, L.L.C. v. Nintendo Co., Ltd., 816 F.3d 816, 826–28 (Fed. Cir. 2016) (providing clarifying guidance in applying IPXL Holdings). Because of the user performing at least one step of method claim 19, and because claim 25 recites a system for performing the method of claim 19, we conclude claim 25, and claims 26–29 that each depend directly from claim 25, are indefinite under pre-AIA 35 U.S.C. § 112, second paragraph, as hybrid claims. Appeal 2019-001849 Application 15/135,772 21 Conclusions The Examiner did not err with respect to Rejection A under pre-AIA 35 U.S.C. § 112, first paragraph (enablement), of claims 19–29. The Examiner did not err with respect to Rejection B under pre-AIA 35 U.S.C. § 112, first paragraph (written description), of claims 19–29. The Examiner erred with respect to Rejection C under pre-AIA 35 U.S.C. § 112, second paragraph, of claims 19–29. The Examiner erred with respect to obviousness Rejections D, E, and F of claims 19–29, under pre-AIA 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). DECISION SUMMARY Rej Claims Rejected Pre-AIA 35 U.S.C. § Reference(s)/Basis Affirmed Reversed A 19–29 112, first paragraph Enablement 19–29 B 19–29 112, first paragraph Written Description 19–29 C 19–29 112, second paragraph Indefinite 19–29 D 19, 23, 25, 29 103(a) Slezak, Wong, Franco 19, 23, 25, 29 E 20–22, 26–28 103(a) Slezak, Wong, Franco, Garfinkle 20–22, 26–28 F 24 103(a) Slezak, Wong, Franco, Lu 24 Overall result 19–29 Appeal 2019-001849 Application 15/135,772 22 NEW GROUNDS OF REJECTION BY BOARD We enter a new ground of rejection for claims 20–29 under pre-AIA 35 U.S.C. § 112, fourth paragraph, as being in improper dependent claim form. 8 We enter a new ground of rejection for claims 20–29 under pre-AIA 35 U.S.C. § 112, second paragraph, as being of indefinite scope. See infra, n.8. We enter a new ground of rejection for claims 25–29 under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite as hybrid claims. NEW GROUNDS OF REJECTION Claims Rejected Pre-AIA 35 U.S.C. § Reference(s)/Basis 20–29 112, fourth paragraph Improper Dependent Claims 20–29 112, second paragraph Indefinite 25–29 112, second paragraph Indefinite as hybrid claims This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” (emphasis added). 8 See MPEP § 2111.03(II) (“A claim which depends from a claim which “consists of” the recited elements or steps cannot add an element or step.”) (emphasis added). Appeal 2019-001849 Application 15/135,772 23 Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. 9 or (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 9 Regarding option (1), “Reopen prosecution,” and particularly regarding the requirement to submit an amendment and/or new evidence, please note MPEP 1214.01(I): “If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 C.F.R. 41.50(b)(2).” If for any reason Appellant desires to reopen prosecution before the Examiner without submitting an amendment and/or new evidence, a Request for Continued Examination (RCE) that complies with 37 C.F.R. § 114 will remove the application from the jurisdiction of the Board under 37 C.F.R. §41.35, and will reopen prosecution before the Examiner. Appeal 2019-001849 Application 15/135,772 24 (emphasis added). 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). See 37 C.F.R. § 41.50(f). AFFIRMED 37 C.F.R. § 41.50(b)