Ex Parte Harouche et al

Patent Trial and Appeal Board

Mar 22, 2018

14639558 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/639,558 03/05/2015 David Harouche
75620 7590 03/23/2018
Kane Kessler P.C.
666 Third A venue
New York, NY 10017-4041
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.
828111738 7385
EXAMINER
KHAN, AFTAB N
ART UNIT PAPER NUMBER
2454
MAILDATE DELIVERY MODE
03/23/2018 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 DAVID HAROUCHE,
and GREGORY PATRICK ORSI
Appeal2017-007398
Application 14/639,558
Technology Center 2400
Before: BRUCE R. WINSOR, IRVINE. BRANCH, and
AMBER L. HAGY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-30, which constitute all the claims pending in this application. 1
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and institute NEW GROUNDS OF
REJECTION within the provisions of 37 C.F.R. § 41.50(b) (2015).
1 Appellants identify Multimedia Plus, Inc., as the real party in interest.
App. Br. 3. Multimedia Plus, Inc. is one of the Applicants. Bib. Data Sheet.
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Application 14/639,558
STATEMENT OF THE CASE
Appellants' disclosed invention "relates to corporate content such as
corporate training programs and more specifically to ... disseminating
corporate content and tracking the results of retail, service, or other similar
training and communication programs and similar interactive corporate
content." Spec. 1. Claim 1, which is illustrative, reads as follows:
1. A remote device content and learning management
system (LMS) for distributing, administering, and tracking of
content, providing centrally updatable digital content on local
electronic devices, comprising:
at least one media server having central high bandwidth
content resident thereon;
at least one local electronic device at least intermittently
communicatable with said media server, adapted to be
populatable with said central high bandwidth content as an
instance of local high bandwidth content and user-interactive
content, and having a user interface and a computer executable
program to play said local high bandwidth content for a user via
said user interface and to enable user-interaction with said user-
interacti ve content,
said computer executable program further comprising:
a comparator adapted to compare said local high
bandwidth content to said central high bandwidth content to
determine the currentness of said local high bandwidth content
with respect to said central high bandwidth content; and
an updater for updating said local high bandwidth
content if said local high bandwidth content is determined to be
not current with respect to said central high bandwidth content
via said computer executable program downloading newer
content from said media server to said local electronic device,
wherein users of said remote device content and learning
management system (LMS) access said local high bandwidth
content via said user interface and thus conserve local
connectivity bandwidth.
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Claims 1-30 stand rejected under 35 U.S.C. § 103as being
unpatentable over Alsina et al. (US 2014/0074783 Al; pub. Mar. 13, 2014)
(hereinafter "Alsina") and McMenimen et al. (US 6,514,079 Bl; iss. Feb. 4,
2003) (hereinafter "McMenimen"). 2 See Final Act. 3-18.
Rather than repeat the arguments here, we refer to the Briefs (Appeal
Brief, filed Aug. 25, 2016, (hereinafter "App. Br."); Reply Brief, filed April
7, 2017 (hereinafter "Reply Br.")) for the positions of Appellants; the Final
Office Action (mailed Dec. 31, 2015 (hereinafter "Final Act.")) and Answer
(mailed Feb. 8, 2017 (hereinafter "Ans.")) for the reasoning, findings, and
conclusions of the Examiner; and the Specification (filed Mar. 5, 2015
(hereinafter "Spec.")). Only those arguments actually made by Appellants
have been considered in this decision. Arguments that Appellants did not
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUES
The issues presented by Appellants arguments are as follows:
Does the Examiner err in finding the combination of Alsina and
McMenimen teaches or suggests a learning management system (LMS), as
recited in claim 1?
2 All rejections are under the provisions of 35 U.S.C. in effect after the
effective date of the Leahy-Smith America Invents Act of 2011 ("AIA").
Final Act 2.
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Does the Examiner err in finding the combination of Alsina and
McMenimen teaches or suggests "updating local high bandwidth content,"
as recited in claim 1?
Does the Examiner err in finding the combination of Alsina and
McMenimen teaches or suggests "user-interactive content," as recited in
claim 1?
Does the Examiner err in concluding it would have been obvious to a
person of ordinary skill in the art at the time of the invention to combine the
teachings of Alsina and McMenimen?
Does the Examiner err in finding the combination of Alsina and
McMenimen teaches or suggests "said central high bandwidth content
comprises primary content and secondary content," as recited in claim 5?
Does the Examiner err in finding the combination of Alsina and
McMenimen teaches or suggests "each of the employees having a unique
employee identifier, wherein when an employee provides a response to said
interactive content, said employee identifier and said response are
communicated to said system," as recited in claim 9?
Does the Examiner err in finding the combination of Alsina and
McMenimen teaches or suggests "a second admin server communicatable
with said local electronic devices and receiving said employee identifier and
said response to said interactive content," as recited in claim 1 O?
Does the Examiner err in finding the combination of Alsina and
McMenimen teaches or suggests "making only a portion of said local high
bandwidth content available to a given user," as recited in claim 13?
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ANALYSIS
CLAIM 1
Learning Management System
Appellants contend that "the Alsina reference does not teach an LMS
and has nothing to do with LMSes" (App. Br. 9), and that "McMenimen
fails to make up the deficiencies of Alsina." (App. Br. 11). We are not
persuaded of error.
It is well established that "one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
The Examiner relies on the combination of McMenimen with Alsina to teach
the claimed LMS finding that "McMenimen, teaches interactive training
methods for demonstrating and teaching occupational skills that is clearly
directed to learning management system." Final Act. 5 (citing McMenimen
Abstract, col. 1:30-40, col. 5:1-10). As evidenced by "A Field Guide to
Leaming Management Systems" (App. Br., Ex. 2), the broadest reasonable
interpretation of "LMS" encompasses "a software application that automates
the administration, tracking and reporting of training events." App. Br., Ex.
2, at 1. McMenimen teaches a "computer based multimedia presentation
... to provide a trainee with a presentation regarding the performance of an
occupational skill" (McMenimen, Abstract), i.e., "a software application that
automates the administration ... of training events" (App. Br. Ex. 2, at 1).
McMenimen further teaches that such a software application "is enabled to
monitor and track a trainee's progress throughout training for making
management decisions, such as hiring, retention and promotion of the
trainee" (McMenimen col. 2:41--44, col. 8: 10-12), i.e., "a software
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application that automates the ... tracking and reporting of training events"
(App. Br. Ex. 2, at 1 ).
Appellants contend "McMenimen is effectively silent as how to gauge
the effectiveness of training, leaving it at ' [ t ]he invention also provides for a
system administrator, manager, employer and the like to evaluate the
trainee's performance' and nothing more." App. Br. 11 (quoting
McMenimen col. 8:10-12) (emphasis added). We find this argument to be
unavailing as claim 1 is also silent as to how to gauge the effectiveness of
training.
Accordingly, we find no error in the Examiner's finding that the
combination of Alsina and McMenimen teaches an LMS, as claimed.
Updating High Bandwidth Content
Appellants contend "McMenimen is silent as to ... a comparator, or
an updater." App. Br. 11. Appellants further contend that McMenimen's
training program is burned onto a CD, DVD, other media and therefore
cannot be updated in accordance with the invention. App. Br. 11. We are
not persuaded of error because the Examiner relies on Alsina (see Final Act.
3-5), when combined with McMenimen (see id. at 5---6), not McMenimen
alone, for the claim limitations related to distributing content from a remote
server to local electronic devices and updating of content. See Keller, 642
F.2d at 426.
Appellants contend "Alsina only teaches updating metadata associated
with one's iTunes account, not the content itself. Songs do not need to be
updated, whereas corporate training often does." App. Br. 9 (emphasis
omitted). Appellants further explain "[t]he Examiner ... conflates
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essentially zero-bandwidth metadata with high bandwidth content such as
video." Reply Br. 2. We are not persuaded of error. Appellants are correct
that Alsina teaches the updating of metadata. However, Alsina also teaches
that updating can include transmitting newly purchased media items, in
addition to metadata, for storage on a local electronic device such as a
mobile phone or media player. See, e.g., Alsina i-fi-139 ("After receiving the
purchase request 214, the server 216 transmits the purchased media item
222A, metadata 222B associated with the purchased media item 222A, and a
hash value 222C associated with the purchased media item 222A to the
portable media player 202."), 40 ("After receiving the purchase request 214,
the server 216 also transmits a notification 224 to the mobile phone 208,
indicating that the server list of media items 220A has changed. The
notification 224 can include the purchased media item 222A, metadata
222B, and hash value 222C, which the mobile phone 208 can use to update
the local list of media items 206A and hash values 212B.") (italics added).
Thus, Alsina teaches or suggests updating the media library, i.e., "high
bandwidth content" (claim 1 ), on a local electronic device when a new
media item is added to the media library.
Accordingly, we find no error in the Examiner's finding that the
combination of Alsina and McMenimen teaches updating high bandwidth
content.
User-Interactive Content
Appellants contend "Alsina ... fails to teach user-interactive content
and the enabling of user interaction with such user-interactive content."
App. Br. 10. We are not persuaded of error because the Examiner relies on
McMenimen (see Final Act. 5---6), when combined with Alsina (see id. at 4--
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5), not Alsina alone, for the claim limitations related to user-interactive
content. See Keller, 642 F .2d at 426.
Appellants contend "McMenimen is silent as to user-interactive
content." App. Br. 11. We find this contention to be at odds with the entire
thrust of McMenimen's disclosure, which is replete with references to user-
interactive content. For example, McMenimen's Figure IA illustrates a user
log in procedure lOOa, I Ola, 102a, and 103a, which clearly involves user
interaction with the content; Figure 2 illustrates the content posing questions
to a user regarding various scenarios, and taking action depending on
whether the answer is correct or incorrect; Figure 3B illustrates that a
training module is made up of "interactive scenario[s];" and Figure 6
illustrates numerous functions that involve interaction between the system
and a user such as login 620, main menu 660, class menu 690, module menu
700, query user for input 730, provide feedback on query 740, test for
comprehension 770, and comprehension reviews with feedback 790, 800.
Accordingly, we find no error in the Examiner's finding that the
combination of Alsina and McMenimen teaches user-interactive content.
Combination of Alsina and McMenimen
Appellants contend the Examiner's "articulated reasoning for making
the combination of references to reject the claims has not been accompanied
by the requisite rational underpinning. There would be no motivation to
combine the teachings of Alsina and McMenimen. Alsina and McMenimen
are in two widely disparate fields." App. Br. 13. We disagree.
In an obviousness analysis,
[t]wo separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
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the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (emphases added). Appellants' invention
and McMenimen are in the same field of endeavor: learning management
systems. Compare McMenimen, Title, Abstract, with Spec. 1: 1-8 (Title and
Field of Invention). A problem addressed by Appellants' invention is
ensuring that employees are using the same training materials (Spec. 3: 18-
19) while minimizing the usage of connectivity bandwidth for training
(Spec. 4: 1---6). "A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor's endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor's attention in considering his problem." Klein, 647 F.3d
at 1348 (quoting In re Clay, 966 F.2d 656, 659 (Fed Cir. 1992)). We find
Alsina's teaching of downloading content items, such as audio and video
files, to local electronic devices, and updating the downloaded content when
new content items are added, would have logically commended itself to one
of ordinary skill in the art when considering Appellants' problem.
Accordingly we find that both McMenimen and Alsina are analogous art to
Appellants' invention.
The Examiner concludes as follows:
It would have been obvious to an ordinary person
skilled in the art at the time invention was made to modify
Alsina's updating of incremental data changes to the client
device by sending latest media items list for a given user
account to include an associate ID of McMenimen for an
interactive training software for number of trainees in order to
efficiently provide training updates for a given user across
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multiple devices from a central location thereby reducing cost
and enhancing productivity of the network user.
Final Act. 6. Put another way, it would have been obvious to modify
McMenimen's LMS to provide and update McMenimen's user-interactive,
high bandwidth content from a central server as taught by Alsina in order to
provide trainees with content synchronized across multiple local electronic
devices. See Application of Bush, 296 F .2d 491, 496 (CCP A 1961)
("[W]here a rejection is [based on a combination of references, the order in
which prior art references are cited] to the Applicant [is] of no significance,
but merely a matter of exposition."). In other words, one of ordinary skill in
the art would have recognized that techniques taught by Alsina would
improve McMenimen's LMS in the same way as they improve Alsina's
video and music delivery system. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.").
Appellants contend as follows:
[The Examiner's articulated] motivation ... is at odds with the
invention, which provides updates to multiple users across
respective multiple devices. As a non-limiting example, in the
invention, a first employee's tablet in a retail location can
update a second employee's tablet in the same retail location
without involving the central media server. ... [S]ince the basis
of the Alsina teaching is an iTunes account, Alsina teaches
away from devices owned by or assigned to different people
updating each other's content (which would be tantamount to
stealing music on iTunes ).
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Reply Br. 9 (repeating App. Br. 13-14). Appellants' argument relies on a
limitation not found in claim 1 and is, therefore unpersuasive. Appellants do
not point to any particular language of any claim to support their argument.
We agree with the Examiner's conclusion that it would have been
obvious at the time of the invention to combine the teachings of
McMenimen and Alsina.
Claim 1 Summary
For the foregoing reasons, on this record we find no error in the
rejection of claim 1. Accordingly we sustain the rejection of (1) claim 1;
(2) independent claim 16, which was argued together with claim 1;
(3) claims 2--4, 12, 17, 18, and 25, which variously depend, directly or
indirectly from claim 1 or 16, and were not separately argued with
particularity; and (4), to the extent that we are able to ascertain its meaning
(see infra), claim 30, which was not separately argued with particularity.
CLAIMS
Appellants contend as follows:
[T]here is no teaching or suggestion in the cited prior art of
primary content and corresponding secondary content, as
recited in Claims 5-8 and 19-21. An example of
primary/secondary content as claimed would be a video
program (primary) and several different audio tracks in
different language corresponding to the same video
(secondary).
App. Br. 14. We find no error on this record.
Although we agree with the Appellants that "primary" and
"secondary" are more than mere labels for content (compare Reply Br. 10-
11, with Ans. 11 ), we do not agree that the broadest reasonable interpretation
of "secondary content" requires multiple secondary files (App. Br, 11; see
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also Reply Br. 11). Appellants' Specification clearly describes secondary
files (e.g., an audio file) as being related in some way to an associated
primary file (e.g., a video file). Spec. 5:18-6:7. Although the Specification
gives examples of a primary file as having a plurality of associated
secondary file (Spec. 5:21-6:3), the Specification discloses that this is
optional (Spec. 5: 19-20). A contrary reading would render claim 6, which
recites a plurality of secondary files corresponding to a primary file, as mere
surplusage. Therefore, a primary file having one corresponding secondary
file meets the broadest reasonable interpretation of claim 5.
As admitted by Appellants, Alsina teaches downloading video files.
App. Br. 14; see also Alsina i-f 45 ("The client devices 408, 410 can store
media, such as audio and video files, purchased from the online store 406,
received from a remote location, and/or local non-purchase media stored on
the client devices 408, 410."). One of ordinary skill in the art would have
understood that Alsina' s videos (e.g. a "CNN podcast" (id.)) each comprise
video content ("primary" content) and at least one instance of corresponding
audio content ("secondary" content). See Alsina i-f 45. For the foregoing
reasons we sustain the rejection of claim 5 and claim 19, which was argued
together with claim 5.
Appellants argue claims 6-8, 20, and 21 together with claims 5 and
19, from which they variously depend, directly or indirectly. Appellants'
separate arguments for the patentability of claims 6-8, 20, and 21 are no
more than recitations of the claim language and naked allegations that the
cited references do teach or suggest the recited limitations. See App. Br. 14.
Appellants do not, for example, address the Examiner's reliance on Alsina's
teaching of playlists to teach a plurality of files of secondary content
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corresponding to a single file of primary content. Final Act. 8 (citing Alsina
i-f 48). Such conclusory statements are unpersuasive of Examiner error. See
37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim."). Accordingly, we also sustain the rejection of claims 6-8, 20,
and 21.
CLAIM9
Appellants contend "there is no teaching or suggestion of receiving
employee responses ... , as recited in Claim[] 9. . . . Alsina is completely
inapplicable, and McMenimen is silent as to what to do with employee
responses once they are provided." App. Br. 16. We are not persuaded of
error.
Appellants' arguments are naked assertions that fail to address with
particularity the Examiner's findings regarding the combination of Alsina
and McMenimen. See Final Act. 9 (citing Alsina generally: McMenimen
cols. 1:30-40, 5:1-10); 37 C.F.R. § 41.37(c)(l)(iv).
For further emphasis we note that McMenimen discloses that its LMS
"may be carried out on any suitable computer or computer network.
Alternatively, the present invention is contemplated to be employed on the
Internet, and on an Intranet of the user[']s specification." McMenimen col.
6:34--37. This passage at least suggests communicating employee identifiers
and responses to the LMS system.
For the foregoing reasons we sustain the rejection of claim 9 and
claim 22, which is argued together with claim 9.
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CLAIM 10
Appellants contend as follows:
[T]here is no teaching or suggestion of a second admin server
for receiving and sorting employee responses to interactive
content, as recited in Claim[] 10. . . . This feature corresponds
to elements 40 and 50 in [Specification] Fig. 1 and all of Figs.
4A-D. Alsina has no second server at all. And McMenimen
fails to teach what to do with those employee responses etc.,
leaving it at "[ t ]he invention also provides for a system
administrator, manager, employer and the like to evaluate the
trainee's performance" and nothing more. (col. 8, lines 10-12).
App. Br. 15. The Examiner explains that "[A]ppellants are seeking exact
teaching that are only available under anticipation type of rejection. It is
quite clear the system of Alsina can be equipped with a secondary admin
server for receiving a sorting employees responses." Ans. 12. We agree
with Appellants.
Accepting, arguendo, that one of ordinary skill in the art would have
recognized that Alsina can be equipped with a secondary admin server, the
Examiner gives no explanation as to why one of ordinary skill in the art
would have done so.
Accordingly, we do not sustain the rejection of (1) claim 1 O;
(2) claims 15, 23, and 29, which include limitations similar to that recited in
claim 10 and were argued together with claim 1 O; and (3) claims 11 and 24,
which depend from claims 10 and 23 respectively.
CLAIM 13
Appellants contend "there is no teaching or suggestion of providing
selective access to local high bandwidth content, as recited in Claim[] 13."
App. Br. 15. We are not persuaded of error. McMenimen teaches that each
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user is identified by a user ID entered at the beginning of a training session.
McMenimen Figs. IA, 6 (item 620). McMenimen further teaches requiring
that a training module be successfully completed in order to continue to
further training. Id. at cols. 7:44--8:3, Fig. 2 (item 205). In other words,
McMenimen teaches that only a portion (i.e., one that excludes subsequent
training modules) of local high bandwidth content (i.e., interactive training
modules) is made available to a given user (i.e., the user associated with the
user ID).
Accordingly, we will sustain the rejection of (I) claim 13; (2) claims
14, 26, and 27, which include similar limitations and were argued together
with claim 13; and (3) claim 28, which depends from claim 27 and was
argued together with claim 13.
NEW GROUNDS OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Because our reasons for sustaining the rejection of claims 13, 14, 26,
27, and 28 rely on explanations not provided by the Examiner, in the
interests of giving Appellants a full and fair opportunity to respond, we will
designate our affirmance of the rejection of claims 13, 14, 26, 27, and 28 as
a new ground of rejection.
Claim 30 is rejected on a new ground of rejection under 35 U.S.C.
§ 112(b) for failing to particularly point out and distinctly claim the subject
matter that the inventor or a joint inventor regards as the invention. Claim
30 is additionally rejected on a new ground of rejection under 35 U.S.C.
§ 112( d) for being a claim written in dependent form that fails to contain a
reference to a claim previously set forth and specify a further limitation of
the subject matter claimed. Claim 30 recites "[a] method ... according to
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claim 30 wherein." App. Br. 27 (Claims App.); see also Spec. 33. Although
claim 30 is ostensibly a dependent claim, its reference to itself, rather than to
a previous claim, renders the claim indefinite under section 112(b ), as it is
impossible to ascertain what limitations are to be incorporated in the claim
by reference. Moreover, the claim fails to comply with the statutory
requirements of section 112(d) for a claim in dependent form.
DECISION
The decision of the Examiner to reject claims 1-9, 12-14, 16-22, 25-
28, and 30 is affirmed.
The decision of the Examiner to reject claims 10, 11, 15, 23, 24, and
29 is reversed.
We designate the affirmance of the rejection of claims 13, 14, 26, 27,
and 28 as a new ground of rejection under 35 U.S.C. § 103(a).
We enter new grounds of rejection for claim 30 under 35 U.S.C.
§§ 112(b) and 112(d).
lll{)lltl1s fr()Ill tl1e