Ex Parte Anderson et al

Board of Patent Appeals and Interferences

Jan 13, 2012

10650903 (B.P.A.I. Jan. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEPHANIE BLACK ANDERSON, JOHN A. BLANCHARD,
III, BLAINE H. DOLPH, JENNIFER MARTIN, and
JOHN NATHAN TOLVA
____________________

Appeal 2009-007159
Application 10/650,903
Technology Center 2400
____________________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1, 6-10, 15, 16, 56-59, and 72. Claim 2 has been
cancelled. Claims 3-5, 11-14, 17-55, and 60-71 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. §
41.50(b).
Introduction
According to Appellants, the invention is a system and method for a
Digital Guide System (DGS) that assembles and delivers contextual,
narrative content information to an end-user. The digital guide device
provides a guided or self-guided tour of a physical space. (Abstract; Spec. 1,
§ Field of the Invention).

STATEMENT OF THE CASE
Exemplary Claim
Claim 1 is an exemplary claim:
A digital guide system comprising:

a content repository containing a content information;

a server computer having a first memory and a first processor
connected to the content repository by a network; and

a content management system application in the first memory
for creating and assembling the content information;

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wherein, a channel device application receives the content
information from the content repository and transmits the content
information to a channel device;

wherein the content information is created, edited, assembled,
approved and published in accordance with an access right granted
within the content management system application; and

wherein the content information enables a user to locate an
object within a physical location and provides current information
regarding the object, relating the object to the physical location, and
relating the object to one or more persons associated with the object.

Prior Art
Jones US 2002/0069312 A1 Jun. 6, 2002
Wu US 2003/0212759 A1 Nov. 13, 2003

Rejections
(1) Claims 6-9 and 15 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter since these claims depend from cancelled
claim 2.
(2) Claims 1 and 56 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Jones.
(3) Claims 6-10, 15, 16, 57-59, and 72 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Jones and Wu.

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GROUPING OF CLAIMS

(1) We address the rejection under 35 U.S.C. § 112, second
paragraph of claims 6-9 and 15 as a group.
(2) We address the rejection of claims 1 and 52 for anticipation as
a group.
(3) We address the rejections of claims 6-10, 15, and 16 for
obviousness as a group.
(4) We address the rejection of claims 57-59 for obviousness as a
group.
(5) We address the rejection of claim 72 for obviousness
individually.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE 1
35 U.S.C. § 112, second paragraph: claims 6-9 and 15
The Examiner rejects claims 6-9 and 15 as being indefinite for failing
to particularly point out and distinctly claim the subject matter which
applicant regards as the invention since the claims are dependent on
cancelled claim 2 (Final Rej. 2; Ans. 3). Appellants did not address this
rejection. Accordingly, we summarily sustain the Examiner’s rejection of
claims 6-9 and 15 under 35 U.S.C. § 112, second paragraph. See Manual of
Patent Examining Procedure (MPEP) § 1205.02, 8th ed., Rev. 8, July 2010
(“If a ground of rejection stated by the examiner is not addressed in the
appellant's brief, that ground of rejection will be summarily sustained by the
Board.”).
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ISSUE 2
35 U.S.C. § 102(b): claims 1 and 56
Appellants argue their invention is not anticipated by Jones because
Jones does not disclose a “content information” and a “content management
system application” as defined in the claim and specification (App. Br. 10).
The Examiner maintains that the terms should be given their broadest
reasonable interpretation consistent with the Specification, but the
“limitations” in Appellants’ Specification cannot be read into the claims
(Ans. 14-15).

Issue 2: Has the Examiner erred in finding Jones discloses “a content
management system application in the first memory for creating and
assembling the content information” as recited in claim 1 and
commensurately recited in claim 56?

ANALYSIS
“Where an inventor chooses to be his own lexicographer and to give
terms uncommon meanings, he must set out his uncommon definition in
some manner within the patent disclosure” so as to give one of ordinary skill
clear and precise notice of the meaning that is to be construed. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citations omitted).
Here, Appellants have done just that. Specifically, Appellants have
set out definitions in their Specification of several terms including “content
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information,” “content management system application,” and “channel
device application” (Spec. 8-10). “[T]he specification may reveal a special
definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor's
lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en banc). Thus, the Examiner erred in adopting a broader
interpretation of these terms.
In light of the interpretation of these terms, we agree with Appellants
that Jones’ spatial-temporal information is created and edited by the channel
device (the users), not by the channel device application in the first memory
of a server computer (Reply Br. 3-4). “[A]n invention is anticipated if the
same device, including all the claim limitations, is shown in a single prior art
reference. Every element of the claimed invention must be literally present,
arranged as in the claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226,
1236 (Fed. Cir. 1989) (citing Perkin-Elmer Corp. v. Computervision Corp.,
732 F.2d 888, 894 (Fed. Cir. 1984); Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 771-72 (Fed. Cir. 1983)). “[A]bsence from the reference of any
claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible,
Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). We find Jones discloses client
devices create the Geomarks and send the Geomarks to the centralized
system (see e.g. pg. 1, [0005]). However, the Examiner has not shown and
we do not readily find that the Web Server of Jones creates content.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
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follows that Appellants have shown that the Examiner erred in finding Jones
anticipates the invention as recited in claims 1 and 56.
Accordingly, the Examiner erred in rejecting claims 1 and 56 under
35 U.S.C. § 102(b) for anticipation by Jones.

ISSUE 3
35 U.S.C. § 103(a): claims 6-10, 15, 16, 57-59, and 72

Claims 6-10, 15, and 16
Claims 6-10, 15, and 16 inappropriately depend from cancelled claim
2; therefore, we are unable to ascertain the precise scope of each of these
claims. A prior art rejection cannot be sustained if the hypothetical person
of ordinary skill in the art would have to make speculative assumptions
concerning the meaning of the claim language. See In re Steele, 305 F.2d
859, 862-863 (CCPA 1962). We emphasize that our reversal is based on
procedure rather than on the merits of the obviousness rejections. The
reversal does not mean that we consider the claims to be patentable as
presently drawn.
Accordingly, the rejection of claims 6-10, 15, and 16 is reversed.

Claims 57-59
Claims 57-59 depend from independent claim 56. As set forth above
in Issue 2, we find Jones does not disclose the invention as recited in claim
56. The Examiner has not shown that Wu cures the deficiencies of Jones.
Accordingly, claims 57-59 stand with claim 56.
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Claim 72
We agree with Appellants that the Examiner has not shown the
combination of Jones and Wu would have taught or suggested the invention
as recited in claim 72. As discussed above in Issue 2, Appellants have set
forth explicit definitions for various terms used in both the Specification and
the claims. The Examiner points to various paragraphs and/or figures
without identifying specifically the portion that discloses the limitation
recited. For example, the Examiner indicates Figs. 1 and 2 and paragraphs
16 and 17 of Jones teaches “a channel for carrying a content information in
digital form and presenting the content information in an audio, visual, or
audio visual display; a channel administration application that delivers the
content information through the channel to a channel device having a
channel device application where the channel device application has been
assigned to the content information by a content management system” (Ans.
11). However, the Examiner has not identified the element of Jones that
teaches or suggests the channel, channel device, channel administration
application, or content management system. In another example, the
Examiner cites 27 total paragraphs of Jones as teaching “assembling the
content information in a plurality of elements, modules and stories,
assigning channels to the content information” (Ans. 12).
Absent a persuasive explanation from the Examiner in support of why
the cited portions of Jones are deemed to teach or suggest the disputed
features, we are left to speculate how and why the reference is being applied.
Consequently, we are constrained by the record before us to conclude that
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the combination of Jones and Wu would not have taught or suggested each
recited feature of Appellants’ claim 72 to one of ordinary skill in the art at
the time of Appellants’ invention, and thus the rejection of claim 72 fails to
establish a prima facie case of obviousness.
Accordingly, the Examiner erred in finding the combination of Jones
and Wu would have taught or suggested the invention as recited in claim 72.
Therefore, the Examiner erred in rejecting claim 72 under
35 U.S.C. § 103(a) for obviousness over Jones and Wu.

NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b)
ISSUE
Claim 10 depends upon claim 6 which improperly depends upon
cancelled claim 2. Similarly, claim 16 depends upon claim 15 which
improperly depends upon cancelled claim 2. Therefore, we reject claims 10
and 16 as indefinite under 35 U.S.C. §112, second paragraph for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.

DECISION
The Examiner’s rejection of claims 6-9 and 15 under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
affirmed.
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The Examiner’s rejection of claims 1 and 56 under 35 U.S.C. § 102(b)
as being anticipated by Jones is reversed.
The Examiner’s rejection of claims 6-10, 15, and 16 under 35 U.S.C.
§ 103(a) as being obvious over Jones and Wu is reversed.
The Examiner’s rejection of claims 57-59 and 72 under 35 U.S.C. §
103(a) as being obvious over Jones and Wu is reversed.
A new ground of rejection is entered under 37 C.F.R. § 41.50(b) in
which claims 10 and 16 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention
due to dependence upon a cancelled claim.

37 C.F.R. § 41.50(b)
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."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b) 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 proceeding will be remanded to the examiner ...
(2) Request rehearing. Request that the proceeding be reheard under
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37 C.F.R. § 41.52 by the Board upon the same record ...

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) (2010).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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