Ex Parte Al-Shaykh et al

Patent Trial and Appeal Board

Mar 17, 2015

12459090 (P.T.A.B. Mar. 17, 2015)

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.
12/459,090 06/26/2009 Osama Al-Shaykh PVC-P-09-004 6832
7590 03/18/2015
PacketVideo Corp.
10350 Science Center Drive
San Diego, CA 92121
EXAMINER
NGUYEN, KIM T
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
03/18/2015 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 OSAMA AL-SHAYKH, RICK SCHWARTZ, RALPH NEFF,
MAGDALENA LEUCA ESPELIEN, and GREG SHERWOOD

____________________

Appeal 2013-001008
Application 12/459,090
Technology Center 2100
____________________

Before JEAN R. HOMERE, CATHERINE SHIANG, and
DANIEL J. GALLIGAN, Administrative Patent Judges.

GALLIGAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1–27 and 29–34. We have jurisdiction under
35 U.S.C. § 6(b). Claim 28 has been canceled. App. Br. 2.
We AFFIRM IN PART.
2

1
The Appeal Brief identifies PacketVideo Corp. as the real party in interest.
App. Br. 1. On January 19, 2015, Appellants filed a statement under
37 C.F.R. § 3.73(b) showing an assignment from PacketVideo Corp. to III
Holdings 2, LLC.
2
Our Decision refers to Appellants’ Appeal Brief filed June 4, 2012 (“App.
Br.”); Appellants’ Reply Brief filed October 16, 2012 (“Reply Br.”);
Examiner’s Answer mailed August 16, 2012 (“Ans.”); Final Office Action
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STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 16, and 21 are independent claims. Claim 1 is reproduced
below:
1. A method for rendering internet multimedia content in a
network connected to the internet wherein a rendering device is
connected to the network, the method comprising the steps of:
retrieving a first webpage from a remote content source
via the internet wherein a first device connected to the network
retrieves the first webpage from the remote content source and
further wherein the first device is a different device than the
rendering device;
displaying the first webpage in a user interface provided
by the first device wherein the first webpage provides access to
the internet multimedia content;
retrieving the internet multimedia content from the
internet using the network wherein the internet multimedia
content is retrieved from the internet based on user input
accepted by the user interface provided by the first device;
transmitting the internet multimedia content to the
rendering device; and
rendering the internet multimedia content on the
rendering device wherein rendering by the rendering device is
controlled by the first device.

The prior art relied upon by the Examiner in rejecting the claims on
appeal:
Gran et al. US 2010/0095332 A1 Apr. 15, 2010
(hereinafter “Gran”)

mailed December 22, 2011 (“Final Act.”); and original Specification filed
June 26, 2009 (“Spec.”).
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Examiner’s Rejection
Claims 1–27 and 29–34 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Gran. Final Act. 12–21.

ANALYSIS
Independent Claims 1 and 16
Appellants advance similar arguments with respect to claims 1 and 16.
In particular, Appellants argue claims 1 and 16 are not anticipated because
Gran does not disclose displaying a web page in the user interface of the first
device as required by claim 1. App. Br. 15–18, 43–46; Reply Br. 2–6, 22–
23. Appellants further argue Gran does not disclose retrieving internet
multimedia content from the internet. App. Br. 44–45.
The Examiner found Gran discloses the control element 100 in Figure
4 gives the user control over content rendering. Ans. 4. Gran explains this
is accomplished through a control interface, depicted in Figure 4:
A first mobile device 141, a second mobile device 142
and/or a third mobile device 143 (collectively “the mobile
devices 141, 142, 143”) may be connected to the control
element 100 by a first exposed control interface 151, a second
exposed control interface 152 and/or a third exposed control
interface 153 (collectively “the control interfaces 151, 152,
153”), respectively. The control interfaces 151, 152, 153 may
be exposed via any available connection by which the control
element 100 may communicate with the mobile devices 141,
142, 143.
Gran ¶ 68. Gran further discloses presenting the control interface as a web
page:
The control interface may allow control of the control
element 100 by a specialized software application installed on
the mobile devices 141, 142, 143. Alternatively, the control
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interface may allow control of the control element 100 via
standard software that may be present on the mobile devices
141, 142, 143. Such standard software may be, for example, an
HTML web browser, an XHTML web browser, a JavaScript
interpreter, a Java virtual machine, a Flash Player and/or the
like. In these cases, the control interface may be designed
and/or formatted for compatibility with specific standard
software modules. For example, the control element 100 may
expose a control interface based on XHTML web pages
supplemented with JavaScript.
Gran ¶ 72 (emphasis added). Therefore, Gran discloses using standard
software, such as a web browser, to present the control interface in a web
page. Gran further discloses retrieving content from the internet:
Each of the media servers 111, 112, 113 may store the
multimedia content files and/or may access externally stored
multimedia content. For example, a media server may have
access to a remotely accessible multimedia content file, a
content stream and/or a content feed via a content service which
the media server may access using the Internet.
Gran ¶ 63.
Because Gran discloses presenting the control interface as a web page
on the first mobile device and retrieving content from the internet,
Appellants’ arguments do not persuade us of Examiner error. As such, we
sustain the rejection of claims 1 and 16.
Dependent Claims 3–5 and 8
Claims 3–5 and 8 depend from claim 1 and are not separately argued.
As such, we also sustain the rejection of these claims.
Dependent Claims 19, 20, and 34
Claims 19, 20, and 34 depend from claim 16 and are not separately
argued. As such, we also sustain the rejection of these claims.
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Dependent Claim 2
Appellants argue Gran does not teach transcoding a file but merely
teaches determining whether a rendering device is capable of rendering a
file. App. Br. 22; Reply Br. 6–7. The Examiner found Gran discloses
determining the capabilities of a media rendering device and determining the
properties of multimedia files. Ans. 5–6 (citing Gran ¶¶ 91–92).
We are persuaded the Examiner has not demonstrated that Gran
discloses transcoding the multimedia content, as required by claim 2. With
respect to claims 21 and 22, the Examiner made further findings with respect
to transcoding. For example, the Examiner found Gran’s URL is a reference
to “transcoded internet multimedia content.” Ans. 20–21 (citing Gran ¶ 51).
The Examiner also found Gran’s teaching that “[t]he browse results may be
formatted as plain text, as Extensible Markup Language (‘XML’), as a
Digital Item Declaration Language (‘DIDL’)-Lite fragment and/or in another
appropriate format” discloses transcoded internet multimedia content. Ans.
22 (quoting Gran ¶ 91). However, the Examiner has not adequately
articulated why this content is “transcoded” content, for example, by
explaining where Gran discloses transcoding the content.
Based on the foregoing, we do not sustain the rejection of claim 2.
Dependent Claim 6
Appellants argue the device queue lock feature of Gran “has nothing
to do with restricting transmittal of media content to a rendering device.”
App. Br. 24. Appellants also argue Gran “fail[s] to teach or suggest any
restriction which prohibits transmittal of a multimedia content file to a
rendering device.” Reply Br. 8.
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We are not persuaded of Examiner error. Claim 6 recites: “retrieving
a restriction associated with the internet multimedia content before
transmitting the internet multimedia content to the rendering device wherein
the internet multimedia content is transmitted to the rendering device if the
restriction does not prohibit transmittal to the rendering device.” Thus, the
claim does not require restricting transmittal; rather, it provides that content
is transmitted if there is no restriction on transmitting it.
We agree with the Examiner that Gran’s queue lock feature discloses
the limitations of claim 6. Ans. 6–7 (citing Gran ¶ 117). First, Gran
discloses a device queue is associated with multimedia content. Gran ¶ 103
(“Detailed information about a device queue may have, for example, an
ordered list of multimedia content files located in the device queue . . . .”).
Gran further discloses that the session or user that generated the request to
lock the queue may have full access while “other mobile devices, the other
sessions and/or the other users may be allowed to view contents of and/or
the playback state of the device queue, but may be prohibited from editing,
managing, deleting and/or controlling rendering of the locked device queue.”
Gran ¶ 117. Therefore, Gran discloses a lock on a queue is a restriction
associated with the multimedia content in that queue, and it discloses that the
lock may not prohibit transmittal of the content to the rendering device, such
as in the situation where the user who requested the lock still has control
over the queue.
As such, we sustain the rejection of claim 6.
Dependent Claim 7
Appellants contend Gran discloses determining whether a particular
rendering device is capable of rendering the content but not displaying a list
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indicating that the rendering device and an additional rendering device are
capable of rendering the content. App. Br. 25–26; Reply Br. 8–9. We are
not persuaded. Gran discloses displaying a list of rendering devices to the
user. Gran ¶ 87 (“The user may utilize the mobile device 200 to request that
the control element 100 provide a list of known media servers connected to
the network and/or a list of known media rendering devices connected to the
network (collectively ‘the requested lists’). In response, the control element
100 may provide the requested lists to the mobile device 200. . . . The
mobile device 200 may display the requested lists to the user.”). Gran
further discloses:
As shown at step 805, the control element 100 may
request detailed descriptions of the devices and their associated
services. . . . The messages that may provide capability
information to the control element 100 may provide capability
information for each of the media servers 111, 112, 113 and/or
the media rendering devices 121, 122, 123 available in the
home network.
. . . The capability information may be used internally by
the control element 100 and/or may be provided to mobile
devices which request information about the available media
servers 111, 112, 113 connected to the home network and/or the
available media rendering devices 121, 122, 123 connected to
the home network. In the specific example depicted in FIGS.
8A and 8B, the control element 100 may receive and/or may
store information about the first media server 111 and/or
information about the second media rendering device 122. The
control element 100 may also receive and/or may store
information about other media servers and media rendering
devices.
Gran ¶¶ 161–162 (emphasis added). Therefore, Gran discloses determining
the capabilities of more than one rendering device and providing that
information to the requesting device, which Gran discloses can display a list
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of rendering devices. Therefore, the evidence supports the Examiner’s
rejection (Ans. 7–8 (citing Gran Fig. 4, ¶¶ 51, 92)).
As such, we are not persuaded by Appellants’ arguments and we
sustain the rejection of claim 7.
Dependent Claim 9
Appellants argue Gran “merely disclose[s] that the mobile device uses
the control point to browse multimedia files available from a local media
server and controls rendering of one or more of the multimedia files” and
does not disclose storing the content as a digital file in response to user input
accepted by the device that controls rendering. App. Br. 29–30. Appellants
further argue Gran discloses browsing files already stored on the server and,
therefore, “[a]ccepting user input on a mobile device which causes a media
file to be stored on a media server makes little sense when the media file is
already stored on and available from the media server.” Reply Br. 11.
We are not persuaded by these arguments because, as discussed above
with respect to claim 1, Gran discloses providing access to content external
to the media server:
Each of the media servers 111, 112, 113 may store the
multimedia content files and/or may access externally stored
multimedia content. For example, a media server may have
access to a remotely accessible multimedia content file, a
content stream and/or a content feed via a content service which
the media server may access using the Internet. . . . The present
invention is not limited by the location in which multimedia
content is stored, and may utilize multimedia content made
available via a media server.
Gran ¶ 63. Therefore, the evidence supports the Examiner’s findings that
Gran discloses storing content on a server in response to user input (Ans. 9–
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10), such as when a user browses external content that is not already stored
on the media server. As such, we sustain the rejection of claim 9.
Dependent Claim 10
Claim 10 recites “rendering the internet multimedia content in the user
interface in substantial synchronization with rendering of the internet
multimedia content by the rendering device.” The Examiner found Gran
discloses the mobile device can be used to control content rendering. Ans. 9
(citing Gran ¶ 94). However, Appellants argue Gran does not disclose
rendering the multimedia content in the user interface of the first device.
See App. Br. 31–33; Reply Br. 12.
We are persuaded of Examiner error. The Examiner’s findings show
using the first device to control rendering on the rendering device, but the
Examiner has not demonstrated that the content is rendered on the first
device itself. As such, we do not sustain the rejection of claim 10.
Dependent Claim 11
Claim 11 recites “displaying a graphic representation of the rendering
device wherein the user interface provided by the first device displays the
graphic representation and further wherein the internet multimedia content is
transmitted to the rendering device in response to selection of the graphic
representation.” Appellants contend Gran does not disclose the limitations
of claim 11 and argue “FIG. 4 is a black-box diagram and does not disclose
a graphic representation of a rendering device displayed so that selection of
the graphic representation transmits internet multimedia content to the
rendering device.” App. Br. 34.
Appellants’ characterization of Figure 4 as a “black-box diagram” that
does not disclose certain features fails to appreciate the disclosure of Gran.
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Gran states: “FIG. 4 generally illustrates a system 90 for controlling media
rendering in a network using a mobile device in an embodiment of the
present invention.” Gran ¶ 57. Gran then provides further detail about the
various components of Figure 4, including the user interface on the mobile
device and commands for requesting and displaying information on the
interface. For example, Gran discloses displaying a list of rendering devices
on the mobile device. Gran ¶ 87 (“The user may utilize the mobile device
200 to request that the control element 100 provide a list of known media
servers connected to the network and/or a list of known media rendering
devices connected to the network (collectively ‘the requested lists’). In
response, the control element 100 may provide the requested lists to the
mobile device 200. . . . The mobile device 200 may display the requested
lists to the user.”). Gran further discloses: “The user may utilize the mobile
device 200 to instruct the control element 100 to direct a specific media
rendering device to render a specific multimedia content file.” Gran ¶ 93.
Gran still further discloses graphic icons are used in the user interface. Gran
¶ 101 (“The mobile device 200 may establish a preferred resolution for
graphic thumbnail icons to be used in a user interface display located on the
mobile device 200.”). Therefore, Gran discloses displaying a list of
rendering devices and transmitting content to a specific rendering device
based on the user’s selection of that device, and Gran discloses using
graphical icons to represent information in the interface.
Based on the foregoing, we are not persuaded that Gran does not
disclose the limitations of claim 11. As such, we sustain the rejection of
claim 11.
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Dependent Claim 12
Claim 12 recites:
creating a bookmark for the internet multimedia content using
the user interface provided by the first device wherein a default
rendering device connected to the network is associated with
the bookmark and further wherein selection of the bookmark
using the user interface provided by the first device initiates
rendering of the internet multimedia content on the default
rendering device.
As with claim 11, Appellants’ characterization of Figure 4 as a
“black-box diagram” that does not disclose the limitations of claim 12 (App.
Br. 36) fails to appreciate the disclosure of Gran. Providing further detail
about the system generally depicted in Figure 4, Gran discloses using the
user interface to create a device queue (a bookmark for content):
The user may utilize the mobile device 200 to request
that the control element 100 create a new device queue. . . . The
new device queue may be empty initially and/or the new device
queue may have multimedia content files that may be specified
by the mobile device 200 by the new device queue creation
command. The new device queue may be associated with a
default media rendering device.
Gran ¶ 104. Gran further discloses that a rendering device associated with
the queue may be a default rendering device and selection of the queue
initiates rendering of the content on the associated device:
The user may utilize the mobile device 200 to instruct the
control element 100 to initiate and/or to control rendering of a
device queue by an associated media rendering device. The
associated media rendering device may have been previously
associated with the device queue, may be a default media
rendering device or may be specified when the mobile device
instructs the control element 100 to initiate the rendering of the
device queue.
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Gran ¶ 110. Therefore, Gran’s teachings describing the system of Figure 4
disclose the limitations of dependent claim 12. As such, we sustain the
rejection of claim 12.
Dependent Claim 13
Claim 13 recites: “The method of Claim 1 wherein the rendering
device continues to render the internet multimedia content after the user
interface navigates from the first webpage to a second webpage that is a
different webpage than the first webpage.”
As explained above with respect to claim 1, Gran discloses presenting
the control interface as a web page. Gran ¶ 72. As such, Appellants’
arguments that Gran does not disclose displaying web pages (App. Br. 38;
Reply Br. 18) are unpersuasive. The Examiner found Gran teaches the user
may utilize the mobile device to control content rendering. Ans. 11 (citing
Gran ¶¶ 94, 170). According to Gran’s disclosure of presenting the interface
in a web page, the controls presented to the user for controlling content
rendering would be in a web page in a web browser. We further note Gran
discloses creating a new device queue while the first device queue is
playing. Gran ¶ 200 (“FIGS. 11A and 11B generally illustrate the first user
91 utilizing the first mobile device 141 to create and/or use the second
device queue 132. . . . Thus, the first media rendering device 121 may be
rendering the first device queue 131 which may have been created and/or
may have been modified by the first user 91 using the first mobile device
141.”); Figs. 11A, 11B. Therefore, rendering of content continues while the
user navigates to new pages in the interface to set up the new queue.
As such, we are not persuaded of Examiner error and we sustain the
rejection of claim 13.
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Dependent Claim 14
The Examiner found Gran’s teaching of using a content
recommendation engine to select content to include in a device queue
discloses transmitting and rendering advertising content, as required by
claim 14. Ans. 12 (citing Gran ¶¶ 64, 107). Appellants argue the
recommended content is not “advertising content” but “simply normal
multimedia content selected according to the user’s preferences.”
Reply Br. 20.
Appellants’ Specification broadly describes “advertising content”:
“The advertising content may have and/or may be image content, video
content, audio content, graphics, animations, video clips, text, web
formatting, links to URLs and/or the like.” Spec. 52. Given this broad
description, we are not persuaded the Examiner erred in finding content
selected by a content recommendation engine is “advertising content.” As
such, we sustain the rejection of claim 14.
Dependent Claim 15
Claim 15 recites:
The method of Claim 1 further comprising the step of:
storing the internet multimedia content and advertising content
associated with the internet multimedia content as a digital
multimedia content file on a server connected to the network in
response to user input accepted by the user interface provided
by the first device.
Appellants’ argument that Gran does not disclose advertising content
(App. Br. 41–42) is unpersuasive for the reasons explained with respect to
claim 14. Furthermore, Appellants’ argument that Gran fails to disclose
storing multimedia content on a server in response to user input (Reply Br.
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21) is unpersuasive for the reasons explained with respect to claim 9. We
further note Gran discloses that the content recommendation engine
“select[s] multimedia content to be included in a new device queue based on
user preferences” (Gran ¶ 107 (emphasis added)) and, therefore, discloses
that the content is selected and stored in response to user input.
As, we are not persuaded of error in the Examiner’s findings that Gran
discloses the limitations of claim 15 (Ans. 12–13 (citing Gran Fig. 4, ¶¶ 64,
107)), and we sustain the rejection of claim 15.
Dependent Claim 17
Claim 17 recites “reviewing a restriction associated with the internet
multimedia content wherein the at least one rendering device conforms to
the restriction.”
As we explained with respect to claim 6, the device queue lock is a
restriction associated with multimedia content. As the Examiner found,
Gran discloses that other devices or users may be prohibited from
controlling rendering of the locked queue. Ans. 15 (citing Gran ¶¶ 116–
117). If the lock (restriction) prohibits a user from controlling (i.e., playing)
the queue, then the rendering device conforms to the restriction by not
playing the locked queue. As such, we are not persuaded by Appellants’
arguments (App. Br. 47; Reply Br. 23–24), and, therefore, we sustain the
rejection of claim 17.
Dependent Claim 18
Claim 18 recites “displaying a restriction associated with the internet
multimedia content in the user interface wherein the internet multimedia
content is transmitted to the target rendering device in response to user input
after display of the restriction.”
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We are not persuaded by Appellants’ arguments. See App. Br. 49–50;
Reply Br. 25–26. As we explained with respect to claim 6, the device queue
lock is a restriction associated with multimedia content. Gran discloses:
The mobile device 200 may indicate to the user whether the
control element 200 granted the request to lock access or denied
the request to lock access. . . . The core component 101 may
allow full access to and/or full control of a locked device queue
to the mobile device 200, to the associated session and/or to the
user which may have generated the request to lock access.
Gran ¶ 116. Thus, Gran discloses displaying (indicating to the user) the
restriction and allowing the user who requested the restriction full control,
including rendering control. As such, we sustain the rejection of claim 18.
Dependent Claims 31–33
With respect to claims 31, 32, and 33, each of which depends from
claim 16, Appellants argue Gran does not disclose displaying a web page or
accessing the information via the internet. App. Br. 50–59; Reply Br. 26–
29. For the reasons discussed above with respect to claim 1, we are not
persuaded by Appellants’ arguments that Gran does not disclose displaying a
web page. Furthermore, Gran discloses retrieving information via the
internet. For example, Gran discloses that the mobile device can be
connected to the control element via the internet: “Connection of a mobile
device 340 to the control element may be accomplished using a carrier
mobile network 320, the internet 330 and/or the home Wi-Fi network 301 if
the mobile device 340 may utilize the carrier mobile network 320.” Gran
¶ 135; see also Gran ¶ 68 (“The control interfaces 151, 152, 153 may be
exposed via any available connection by which the control element 100 may
communicate with the mobile devices 141, 142, 143.”).
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As such, we are not persuaded of error and we sustain the rejection of
claims 31–33.
Independent Claim 21
Independent claim 21 is directed to a “computer-readable medium”
3

having instructions for performing certain steps, including “transcoding the
internet multimedia content to generate transcoded internet multimedia
content in response to the user input wherein the transcoded internet
multimedia content is based on the capabilities of the rendering device.”
Appellants argue Gran does not disclose transcoding. App. Br. 61–
62; Reply Br. 30. For the reasons discussed above with respect to claim 2,
we are persuaded the Examiner has not shown Gran discloses transcoding.
As such, we do not sustain the rejection of independent claim 21.
Dependent Claims 22–27, 29, and 30
Because we do not sustain the rejection of claim 21, we likewise do
not sustain the rejection of claims 22–27, 29, and 30, which depend from
claim 21.

3
Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to ascertain whether the
“computer-readable medium” of claim 21 encompasses transitory media,
rendering it patent ineligible. See Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013) (precedential-in-part) (computer-readable media encompass
transitory embodiments unless explicitly excluded). See also In re Nuijten,
500 F.3d 1346, 1355–57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); see also MPEP § 2106 (discussing
claims directed to a “computer readable medium”). See Spec. 20 (listing as
examples of a computer readable medium “a compact disc, a DVD, a
computer memory, a hard drive and/or the like” but not excluding any
particular medium).
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DECISION
We affirm the Examiner’s rejection of claims 1, 3–9, 11–20, 31–34;
however, we reverse the Examiner’s rejection of claims 2, 10, 21–27, 29,
and 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-IN-PART

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