Ex Parte Freer et al

Patent Trial and Appeal Board

Aug 22, 2016

11202859 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111202,859 08/1112005
27899 7590 08/24/2016
WILLIAMJ, BENMAN
1875 CENTURY PARK EAST
SUITE 700
LOS ANGELES, CA 90067
FIRST NAMED INVENTOR
Carl Johan Freer
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.
Smart Adds - 2 8803
EXAMINER
NGUYEN, CUONG H
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
wbenman@pacbell.net
wbenman@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL JOHAN FREER and STEPHEN CARROLL
Appeal2014-008827
Application 11/202,859
Technology Center 3600
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Carl Johan Freer and Stephen Carroll (Appellants) appeal under 35
U.S.C. § 134 from the rejection of claims 1, 3--47, 61, and 62. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2014-008827
Application 11/202,859
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for distributing multimedia content comprising:
means for receiving said multimedia content;
means for automatically transmitting said content; and
a mobile wireless platform including means for
automatically receiving, storing and playing out said content,
said platform including a processor and software stored on a
tangible medi-um for autonomous background execution by said
processor to:
and
download audio/video content;
prompt a user to view said content;
play out said content;
collect data regarding the viewing of said content;
upload said data.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fogg
Cabral
Kangas
Weber
Lisanke
us 6,466,624
US 2003/0149601 Al
US 2003/0229723 Al
US 2004/0093394 Al
US 2006/0085343 Al
REJECTIONS
Oct. 15, 2002
Aug. 7, 2003
Dec. 11, 2003
May 13, 2004
Apr. 20, 2006
I. Claims 1, 3, 13, 24, 36, 47, 61, and 62 stand rejected under 35
U.S.C. § 102(e) as anticipated by Lisanke or under§ 103(a) as
unpatentable over Lisanke.
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Appeal2014-008827
Application 11/202,859
II. Claims 4---6, 14, 15, 18, 19, 22, 23, 25-29, 34, 41, 42, 45, and
46 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Lisanke and Cabral.
III. Claims 7-9, and 30-32 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lisanke, Cabral, Weber, and Kangas.
IV. Claims 10-12, 21, 33-35, and 44 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Lisanke, Cabral, and
Fogg. 1
DISCUSSION
New Ground of Rejection
Claims 1, 3--47, 61, and 62 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
It is unclear whether the "audio/video content" recited in line 7 of
claim 1, is the same content as the "multimedia content" recited in the
preamble and referenced in lines 2, 3, and 5 of the claim. ivioreover, if the
"audio/video content" is different from the "multimedia content" it is
unclear which content is referenced in lines 8-10 of the claim. Thus, claim
1 is subject to two different interpretations. "[I]f a claim is amenable to two
or more plausible claim constructions, the USPTO is justified in requiring an
applicant to more precisely define the metes and bounds of the invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008)
(precedential). Claims 3-23 depend from claim 1, and likewise are
1 Although, the Examiner includes a separate statement of the grounds of
rejection for claims 21 and 44 (Final Act. 11 ), these claims are subject to the
same ground of rejection as claims 10-12 and 33-35. See id. at 10-11.
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Appeal2014-008827
Application 11/202,859
indefinite. Claims 24, 4 7, 61, and 62 similarly first recite "multimedia
content," then recite "audio video content," followed by "said content" and
are indefinite for the same reason. Claims 25--46 depend from claim 24 and
likewise are indefinite.
Rejections I-IV
Having determined that claims 1, 3--4 7, 61, and 62 are indefinite, we
cannot sustain the rejections of these claims under 35 U.S.C. §§ 102(e) or
103(a) because to do so would require speculation as to the scope of the
claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding
that the Board erred in affirming an anticipation rejection of indefinite
claims); In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (Holding that the
Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)).
Further, we do not consider Appellants' allegation of inequitable
conduct on the part of the Examiner (Appeal Br. 12-13) as this is a
petitionable, not appealable, matter which is not within the jurisdiction of the
Board. See MPEP § § 1002 and 1201.
DECISION
We enter a NEW GROUND OF REJECTION of claims 1, 3--47, 61,
and 62 under 35 U.S.C. § 112, second paragraph.
The Examiner's rejections of claims 1, 3--4 7, 61, and 62 are
REVERSED.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
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Appeal2014-008827
Application 11/202,859
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.
(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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 41.50(b)
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