Ex Parte Kearney et al

Board of Patent Appeals and Interferences

May 23, 2012

10862115 (B.P.A.I. May. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP F. KEARNEY III, ROBERT DALE
NEWBERRY JR., JEFFREY L. ROBBIN, DAVID HELLER,
CHRISTOPHER R. WYSOCKI, and
STEPHEN ANDERSON DAVIS
____________________

Appeal 2010-002137
Application 10/862,115
Technology Center 2400
____________________

Before: JOSEPH L. DIXON, LANCE LEONARD BARRY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-26. Claims 27 and 28 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We Affirm-In-Part.

The claims are directed to networked media station. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A networked media station comprising:

at least one network interface; and

at least one multimedia interface;

wherein the networked media station is configurable to receive
multimedia data pushed from a multimedia server via the at
least one network interface and output the multimedia data to an
entertainment device attached to the at least one multimedia
interface.
REJECTIONS
Claims 1-9, 11, 15, 19, and 21-26 stand rejected under 35 U.S.C
§102(e) as being anticipated by Weber (US 2004/0177063 A1).
Claim 10 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Weber and Dawson (US 7,260,714).
Claims 12-14 and 16-18 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Weber and Smith (US 2004/0133908 A1).
Claim 20 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Weber and Kattukaran (US 7,082,320).

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GROUPING OF CLAIMS
Based on Appellants’ arguments in the principal Brief, we decide the
appeal on the basis of claims 1, 8, 21, 23, 25, 10, 12, and 20. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Brief, page 16, et seq.
Independent Claim 1
Issue: Under §102, did the Examiner err in finding
that Weber discloses “multimedia data pushed
from a multimedia server,” within the meaning of
claim 1?

Appellants contend that Weber does not disclose “multimedia data
pushed from a multimedia server,” as required by claim 1. (App. Br. 11). In
particular, Appellants contend, inter alia:
A person of ordinary skill in the art would appreciate that
when multimedia data is pushed from a multimedia server, the
request for delivery of the multimedia from the multimedia
server is made at the server itself. If a system discloses a
multimedia server delivering multimedia data where the request
for the multimedia data is made by the user, then such a system
does not push the multimedia data. But such a system is exactly
what is disclosed by Weber-wherein the media service is
delivered to the output device only in response to a request
that comes from the user itself and not from a server that
delivers the media. Therefore, because the system disclosed by
Weber does not disclose multimedia data pushed from a
multimedia server, Weber fails to teach or disclose at least one
limitation of claim 1.
(App. Br. 11-12).

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We disagree. Claim 1 is silent regarding any request. We construe
the disputed “multimedia data pushed from a multimedia server” to broadly
but reasonably read on transmitting multimedia data from a server to a
media station. (Claim 1). Thus, we agree with the Examiner’s broader
construction that if a “server [ ] delivers, distributes, and transmits [ ] the
multimedia data, then it is a push.” (Ans. 18, ¶1).1
To the extent that Appellants’ argument is based on the recited
“multimedia data” (claim 1), we conclude that such multimedia data is non-
functional descriptive material, e.g., “songs, movies, etc.” (Spec. para.
[0001]), that does not alter the machine or computer function (i.e., the
multimedia data is not executable code). The informational content of non-
functional descriptive material is not entitled to weight in the patentability
analysis.2
Moreover, we conclude that the recited wherein clause of claim 1
(“wherein the networked media station is configurable to . . .”) merely
expresses an intended use of the recited “networked media station.” Under a

1 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)).

2 See Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim
merely the information content of a memory . . . Nor does he seek to patent
the content of information resident in a database.”). See also Ex parte
Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal
No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84
USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed.
Cir. 2006).
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broad but reasonable interpretation of claim 1, we conclude that the disputed
limitation of “multimedia data pushed from a multimedia server” is not
positively recited as actually occurring, given that the claim merely requires
that the “networked media station is configurable to receive multimedia data
pushed from a multimedia server . . . .” 3 Although “[s]uch statements often
. . . appear in the claim's preamble,” In re Stencel, 828 F.2d 751, 754
(Fed.Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
Furthermore, in the context of anticipation of a claimed apparatus, our
reviewing court has held that the absence of a disclosure relating to function
does not defeat a finding of anticipation if all the claimed structural
limitations are found in the reference. In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997).
Here, regarding the Examiner’s anticipation rejection of the claimed
“networked media station” (apparatus), we agree with the Examiner’s
findings that Weber meets all the structural limitations of representative
claim 1. (Ans. 3-4).
For essentially the same reasons articulated by the Examiner in the
Answer, as further discussed above, we sustain the anticipation rejection of
claim 1 over Weber. Dependent claims 2-7 (not argued separately) fall
therewith. 37 C.F.R. § 41.37(c)(1)(vii).

3 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.”' Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003).
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Independent Claim 8
Issue: Under §102, did the Examiner err in finding
that Weber discloses “permitting a user, at the
computer, to select one or more entertainment
devices corresponding to the one or more
networked media stations as a destination for
multimedia content,” within the meaning of claim
8?
Referring to Weber (paras. [0031] and [0033]), Appellants contend
inter alia:
Clearly, the selection of multimedia devices in Weber is
performed at the media station and not at the computer where
the multimedia content is stored. Therefore, Weber does not
disclose "permitting a user, at the computer, to select one or
more entertainment devices corresponding to the one or more
networked media stations as a destination for multimedia
content," as required by claim 8.
(App. Br. 14, emphasis added).

Under a broad but reasonable construction of method claim 8, we
observe that the disputed step of claim 8 recites that a user is permitted to
make a selection; however, the “permitting a user” clause of claim 8 does
not positively require the user to actually make a selection.
Thus, we conclude that the permitted selection by the user at the
computer is a statement of intended purpose. As discussed above, a
statement of intended use or purpose can appear in the body of a claim. See
Stencel, 828 F.2d at 754. Therefore, we find Appellants’ arguments
unpersuasive that urge patentability based on the location of the user (“at the
computer”) who is merely permitted (but not required) to perform a
selection. (App. Br. 13-15; Reply Br. 6-7; claim 8). We sustain the
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anticipation rejection of claim 8 over Weber. Dependent claims 9, 11, 15,
and 19 (not argued separately) fall therewith. 37 C.F.R. § 41.37(c)(1)(vii).
Independent Claim 21
Issue: Under §102, did the Examiner err in finding
that Weber discloses “receiving feedback from the
output device on the progress of the output,”
within the meaning of claim 21? (emphasis added).
Based upon our review of the record, we agree with Appellants’
arguments regarding claim 21:
The rejection, on the other hand, asserts that the feedback
allegedly provided by Weber is that of the moving indicator.
The moving indicator 315 (Weber, Figs. 3A-3C), "is a
cursor/icon/arrow that is manipulated by an user control device,
such as a remote control, with a means for moving indicator
315, such as a joystick, touchpad, trackball, scrolling dial,
arrow keys, or the like." Weber, ¶0039. Therefore, even if the
moving indicator 315 of Weber were to provide feedback, such
feedback is limited to providing spatial movement on the screen
in response to user action on a control device. This spatial
movement in response to user action has no relation to the
progress of streaming real time data to the multimedia interface
for output on an attached output device, as required by claim
21. Therefore, the rejection of claim 21 is improper.
(App. Br. 16).
For these reasons, we are persuaded of Examiner error. (See also
Reply Br. 8-9). We reverse the anticipation rejection of claim 21 and
associated dependent claim 22 over Weber.

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Independent Claim 23
Issue: Under §102, did the Examiner err in finding
that Weber discloses “wherein the computer
presents an interface to a user allowing the user to
send the multimedia content to the entertainment
device via the network media station,” within the
meaning of claim 23?
Appellants present the following contentions regarding
the aforementioned “wherein” clause of claim 23:
[F]or Weber to disclose this limitation of claim 23, it would be
required that the network user processor 108 present an
interface to a user allowing the user to send the multimedia
content stored on the network user processor 108 to the
multimedia devices of the media center device via the media
center 200. But, Weber does not disclose this. Instead, Weber
discloses the media center 200 presenting an interface to the
user for the user to request media services from the storage unit
106. Therefore, because the media center 200 and not the
network user processor 108 that presents an interface to the
user, and because the interface presented by the media center
200 is used for requesting multimedia data from the local
storage unit 106 and not for sending multimedia content stored
on the network user processor 108 via the media center 200,
Weber fails to disclose this limitation of claim 23. Therefore,
rejection of claim 23 is improper.
(App. Br. 16-17).

Similar to our discussion above regarding claim 1, we conclude that
the recited wherein clause (“wherein the computer presents an interface to a
user allowing the user to send the multimedia content to the entertainment
device via the networked media station”), merely expresses an intended use
of the recited “interface.” Under a broad but reasonable interpretation of
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claim 23, we conclude that the disputed limitation of “the user [sending] the
multimedia content to the entertainment device via the networked media
station” is not positively recited as actually occurring, given that the claim
only requires that the interface be presented by the computer to the user who
is allowed (but not required) to perform the act of sending multimedia
content. See Stencel, 828 F.2d at 754. Therefore, on this record we are not
persuaded of Examiner error. We sustain the anticipation rejection of claim
23 over Weber. Associated dependent claims 24 and 26 (not argued
separately) fall therewith. 37 C.F.R. § 41.37(c)(1)(vii).
Independent Claim 25
Issue: Under §102, did the Examiner err in finding
that Weber discloses “wherein the computer
presents an interface to a user allowing the user to
access multimedia content from the multimedia
input device via the network media station,” within
the meaning of claim 25?
Similar to our discussion above regarding claims 1 and 23, we
conclude that the recited wherein clause (“wherein the computer presents an
interface to a user allowing the user to access multimedia content from the
multimedia device via the network media station”), merely expresses an
intended use of the recited “interface.” Under a broad but reasonable
interpretation of claim 25, we conclude that the disputed limitation of “the
user [accessing] multimedia content from the multimedia input device via
the networked media station” is not positively recited as actually occurring,
given that the claim only requires that the interface be presented by the
computer to the user who is allowed (but not required) to perform the act of
accessing multimedia content. See Stencel, 828 F.2d at 754. Therefore, we
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are not persuaded by Appellants’ arguments of Examiner error. We sustain
the anticipation rejection of claim 25 over Weber.
35 U.S.C. § 103(a) rejections
Claims 10, 12-14, and 16-18
Each of these claims depends directly or indirectly from independent
claim 8. We sustain the § 103(a) rejections of claims 10, 12-14, and 16-18,
because Appellants essentially argue that the cited secondary references do
not overcome the deficiencies of Weber. We find no deficiencies regarding
Weber for the reasons discussed supra.
Independent Claim 20
Issue: Under §103, did the Examiner err in finding
that Weber discloses “wherein the power adapter,
the wireless network interface, the wired network
interface, the peripheral interface, and the
multimedia interface are encapsulated within a
single integrated casing,” within the meaning of
claim 25?
The Examiner relies on the secondary Kattukaran reference for
teaching the claimed power adapter (Ans. 16), and the Examiner relies on
Weber’s media center 200 (Fig. 2) as teaching or suggesting the claimed
integrated casing. (Ans. 16).
Appellants present the following contentions:
Thus, the dotted line around the various components of
the media center 200 shown in FIG. 2 merely denotes an
operating environment. An operating environment does not
necessarily denote a "single integrated casing" as required by
claim 20. Therefore, Weber fails to teach or suggest this
limitation of claim 20. Kattukaran has been cited merely as
disclosing a standard AC-DC power adapter. Kattukaran does
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not teach or suggest "wherein the wireless network interface,
the wired network interface, the peripheral interface, and the
multimedia interface are encapsulated within a single
integrated casing." Thus Kattukaran fails to teach or suggest all
of the limitations of claim 20 and fails to supply that which
Weber lacks with respect to claim 20.
(App. Br. 19-20).

We agree with Appellants. Although Weber depicts the various
multimedia devices within dotted box 200 (Weber, Fig. 2), we find the
dotted box shown in Figure 2 does not teach or fairly suggest that the
claimed components are “encapsulated within a single integrated casing,”
within the meaning of claim 20. Weber’s associated description of Figure 2
(para. [0028]) clearly indicates that dotted box 200 merely shows an
example of an operating environment, as argued by Appellants (App. Br. 19-
20). Accordingly, we reverse the Examiner’s §103 rejection of independent
claim 20.
DECISION
We reverse the Examiner’s decision rejecting claims 21 and 22 under
§102, and we reverse the Examiner’s decision rejecting claim 20 under
§103.
We affirm the Examiner’s decision rejecting claims 1-9, 11, 15, 19,
and 23-26 under §102, and we affirm the Examiner’s decision rejecting
claims 10, 12-14, and 16-18 under §103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
ORDER
AFFIRMED-IN-PART
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