Ex Parte Hintermeister et al

Patent Trial and Appeal Board

Jul 29, 2013

10767044 (P.T.A.B. Jul. 29, 2013)

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.
10/767,044 01/29/2004 Gregory Richard Hintermeister ROC920030050US1 4831
7590 07/29/2013
Grant A. Johnson
IBM Corporation, Dept. 917
3605 Highway 52 North
Rochester, MN 55901-7829
EXAMINER
HUTTON JR, WILLIAM D
ART UNIT PAPER NUMBER
2176
MAIL DATE DELIVERY MODE
07/29/2013 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 GREGORY RICHARD HINTERMEISTER and
MICHAEL D. RAHN
____________
Appeal 2010-011961
Application 10/767,044
Technology Center 2100
____________

Before CARL W.WHITEHEAD, JR, ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011961
Application 10/767,044

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 22-32 and 34-43. Claims 1-21 and 33 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a method of displaying a web
page by receiving a multi-image file, which includes a primary image and a
secondary image, where the secondary image is adapted for cooperative
display and wherein the web page includes a tag specifying which image
should be displayed. See Specification 18, Abstract of the Disclosure.
Claim 22 is illustrative, with key disputed limitations emphasized:
22. A computer-implemented method of displaying a web
page, comprising:

receiving a multi-image file via a network interface,
wherein the multi-image file consists of a single data file
comprising a primary image and a plurality of secondary
images adapted for cooperative display;

receiving a web page containing a markup language tag
via the network interface, the markup language tag comprising
a code specifying a first subset of the images in the multi-image
file that should be displayed; and

selectively displaying only the specified first subset of
images from the multi-image file on a display unit.

The Examiner relies on the following as evidence of unpatentability:
Munro US 2002/0089549 A1 Jul. 11, 2002
Miller US 2005/0185055 A1 Aug. 25, 2005
(filed Dec. 8, 2000)
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Wan US 7,461,168 B1 Dec. 2, 2008
(filed Sep. 15, 2000)
THE REJECTIONS
1. The Examiner rejected claims 30-32 and 34 under 35 U.S.C. §112,
second paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter which Appellants regard as
the invention. Ans. 3-4.
2. The Examiner rejected claims 30-32 and 34 under 35 U.S.C. §101
as directed to nonstatutory subject matter. Ans. 4.
3. The Examiner rejected claims 22-25 and 29-31 under 35 U.S.C.
§102(e) as anticipated by Wan. Ans. 5-8.
4. The Examiner rejected claims 26 and 27 under 35 U.S.C. §103(a)
as unpatentable over Wan and Miller. Ans. 8-9.
5. The Examiner rejected claims 28, 32 and 34-43 under 35 U.S.C.
§103(a) as unpatentable over Wan and Munro. Ans. 9-16.

ISSUES
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issues to
be dispositive of the claims on appeal:
1. Has the Examiner erred in rejecting claims 30-32 and 34 under
35 U.S.C. §112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention?
2. Has the Examiner erred in rejecting 30-32 and 34 under 35 U.S.C.
§101 as directed to nonstatutory subject matter?
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3. Under §102, or §103, has the Examiner erred in rejecting claims
22-32 and 34-43 over Wan, Miller and Munro by finding that any one
of the references, or any combination thereof, teaches or suggests a
“multi-image file…wherein the multi-image file consists of a single
data file comprising a primary image and a plurality of secondary
images adapted for cooperative display” as generally set forth in
independent claims 22, 30 and 35?
4. Under §103 has the Examiner erred in rejecting 35-43 over Wan and
Munro by finding those references teach or suggest “parsing the
multi-image file to identify the one or more images specified by the
second code” as set forth in independent claim 35?

ANALYSIS
We have reviewed the Examiner’s rejections in light of
Appellants’contentions in the Appeal Brief (App. Br. 9-16) and the Reply
Brief (Reply Br. 1-5) that the Examiner has erred.

Appellants argue that the Examiner erred in rejecting claims 30-32
and 34 under 35 U.S.C. §112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention, urging that claim 30 sets forth a standard
Beauregard format claim, directed to a computer program for performing
certain steps, embodied within computer readable storage media. App. Br. 9.
The Examiner finds that claim 30 claims both apparatus and method
steps and is thus indefinite under 35 U.S.C. §112, second paragraph. Ans.
17.
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"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co.,
927 F.2d 1200, 1217 (Fed. Cir.1991)). "[T]he definiteness of the language
employed must be analyzed — not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
In the present case, one of ordinary skill in the art would comprehend
that Appellants intended to claim an article of manufacture, i.e. computer
readable storage media, which bears a computer program for accomplishing
certain recited steps.
Consequently, we find that the Examiner erred in rejecting claims 30-
32 and 34 under 35 U.S.C. §112, second paragraph, as indefinite for failing
to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.
With respect to the Examiner’s rejection of claims 30-32 and 34 under
35 U.S.C. §101 as directed to nonstatutory subject matter, Appellants argue
that the present specification recites that the present invention is capable of
distribution on a variety of “signal bearing media” and that such “signal
bearing media” can include: “non-writable storage media;” “writable storage
media;” and, “communications medium.” Appellants urge that “storage
media” is thus clearly a subset of “signal bearing media.” App. Br. 9-10.
The Examiner finds that “computer readable storage media” is defined
by Appellants as “signal bearing media” which is not limited to tangible
embodiments. Ans. 18.
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"[T]he PTO gives claims their 'broadest reasonable interpretation.'" In
re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir.
1989)).
In the present application we find nothing within Appellants’
Specification which necessarily limits the term “computer readable storage
media” to non-transitory storage media, which would fall within the class of
statutory subject matter recognized by the Office. We therefore find that the
Examiner did not err in rejecting claims 30-32 and 34 under 35 U.S.C. §101
as being directed to nonstatutory subject matter.
Appellants argue generally, with respect to the various rejections by
the Examiner of claims 22-32 and 34-43, under §102, or §103, that no single
cited reference, either alone or in combination, shows or suggests a “multi-
image… wherein the multi-image file consists of a single data file
comprising a primary image and a plurality of secondary images adapted for
cooperative display.” App. Br. 11-15.
Specifically, Appellants argue that Wan discloses a method for
addressing specific portions of an audio/visual file on a time block basis.
Appellants note that the relied upon by the Examiner does
not teach the claimed multi-image files, but rather merely identifies a
particular segment of the audio/visual file for download. Id. at 15.
With respect to Munro, Appellants argue that paragraph 8 thereof,
relied upon by the Examiner, merely discloses a “single image file that is
rendered as a mosaic of multiple pictures, and not a single file containing
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multiple images.” Id. at 13. Appellants also point out that Miller also fails to
disclose the claimed “multi-image file.” Id. at 14.
The Examiner finds that Wan discloses receiving a single data file
(identified by the ) which comprises multiple images, such
as images relating to a rocket launch which include a BeforeLaunch image
and a Launching image. Ans. 19-20.
We agree with the Examiner’s findings. Nothing in Appellants’ claims
would preclude the claimed “single data file” from comprising an
audio/video segment. Further, we find the consecutive images contained
within a typical audio/video file to be the very essence of images which are
“adapted for cooperative display.” Consequently we find that Wan indeed
discloses a “multi-image… wherein the multi-image file consists of a single
data file comprising a primary image and a plurality of secondary images
adapted for cooperative display” and we find the Examiner did not err in
rejecting claims 22-32 and 34-43.
Finally, Appellants argue that the Examiner erred in rejecting claims
35-43 under 35 U.S.C. §103(a) as unpatentable over Wan and Munro.
Appellants argue that neither reference shows nor suggests “parsing the
[received} multi-image file to identify the one or more images specified by
the second codes” as set forth within independent claim 35. App. Br. 15-16.
The Examiner finds Wan discloses parsing the multi-image file
utilizing the fragment identifier of Figure 13 to identify one or more images
specified by that fragment code. Ans. 21.
We agree with the Examiner’s findings and subsequently we do not
find Appellants’ arguments regarding parsing occurring at a receiving device
versus at the sending device to be persuasive. We find that the fragment
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identifier, which is utilized to denote a particular fragment within a multi-
image file, may be utilized by the sending device and is thereafter associated
with the multi-image file and may be utilized at the receiving device as well.
We therefore find the Examiner did not err in rejecting claims 22-32
and 34-43 under 35 U.S.C. §103(a) as unpatentable over Wan and Munro.

CONCLUSION
The Examiner did not err in rejecting claims 22-32 and 34-43.

ORDER
The Examiner’s decision rejecting claims 22-32 and 34-43 is
affirmed.
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

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