Ex Parte Kelly et al

Board of Patent Appeals and Interferences

Mar 13, 2012

10530382 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DECLAN PATRICK KELLY and YANG PENG
____________________

Appeal 2010-000220
Application 10/530,382
Technology Center 2400
____________________

Before: JOSEPH L. DIXON, THU A. DANG, and ANDREW J. DILLON,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000220
Application 10/530,382
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3-5. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to method of enhancing multimedia. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of enhancing multimedia data contained on an
information carrier, said information carrier also containing
additional carrier data, said method comprising the following
acts:
reading a user file containing user data defining previous
actions of a user, in a storage unit of a recording and/or
reproducing device,
providing, in an off-line session, the additional carrier
data as a function of the user data,
updating the user data to reflect a latest off-line action of
the user,
providing, in an on-line session, additional remote data
from a remote unit as a function of the user data, the remote
unit being connected to the recording and/or reproducing device
via a network, and
updating the user data to reflect a latest on-line action of
the user so that a viewing experience of the user is consistent
during both the off-line session and the on-line session and
same customization features are provided when the additional
carrier data are coming from the information carrier or when the
additional remote data are coming from the remote unit.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lamkin US 2002/0078144 A1 Jun. 20, 2002
Appeal 2010-000220
Application 10/530,382
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REJECTIONS
Claim 1 and 3-5 stand rejected under 35 U.S.C §102(b) as being
anticipated by Lamkin. OPINION PRINCIPLES OF LAW35 U.S.C. §
102"[A]nticipation of a claim under § 102 can be found only if the prior art
reference discloses every element of the claim . . . ." In re King, 801 F.2d
1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[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). "A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim
is patentable over the prior art under 35 U.S.C. § 102 begins with a
determination of the scope of the claim. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
properly interpreted claim must then be compared with the prior art.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner's position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).

Appeal 2010-000220
Application 10/530,382
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ANALYSIS
The Appellants contend that:

Updating the very same user data to reflect both the latest and
off-line and on-line user actions so that a viewing experience of
the user is consistent during both off-line and on-line sessions,
and same customization features are provided when the
additional carrier data are coming from the information carrier
or from the remote unit are nowhere disclosed or suggested in
Lamkin.

(App. Br. 12-13). We agree with Appellants that the portions of Lamkin
identified by the Examiner merely teach the general use of cookies and use
of both content review (off-line) and web view (on-line), but does not
address the function of modifying the same cookie to "updating … during
both the off-line session and the on-line session and same customization
features" as recited independent claim 1. Appellants further contend that:
Lamkin is completely silent about any updating of the very
same cookie to reflect both off-line and on-line user actions, let
alone doing so to provide a consistent viewing experience
during both off-line and on-line sessions, with same
customization features when the additional carrier data are
coming from the information carrier or from the remote unit.
Lamkin is not even concerned with any viewing experience
during both off-line and on-line sessions. Rather, Lamkin is
merely concerned with synchronizing and displaying together a
movie (from a DVD) and HTML content (from the Internet).

(App. Br. 13). We agree with Appellants' contention. Turning to the
Examiner's responsive arguments at pages 6-11 of the Examiner's Answer,
we find the Examiner's responsive arguments to merely quote the various
paragraphs of the reference and generally contend that the citations teach the
claimed invention. We disagree with the Examiner's analysis and find no
Appeal 2010-000220
Application 10/530,382
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clear explanation of modifying the same "user data [defining previous
actions of a user]" as recited throughout the language of independent claim
1. Therefore, we cannot sustain the rejection of independent claim 1.

Independent claims 3 and 4 recite essentially the same limitations in
means plus function format and independent claim 5 recites "[a] computer
program stored on a computer readable medium … implementing the
method of … claim 1". These claims include similar limitations, for which
the Examiner has not established a sufficient showing of obviousness.
Therefore, we cannot sustain the rejection of claims 3-5.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1 and 3-5 based upon
anticipation over Lamkin.
DECISION
For the above reasons, the Examiner’s rejection of claims 1 and 3-5 is
reversed.

REVERSED

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