Ex Parte Kenna et al

Patent Trial and Appeal Board

Sep 12, 2018

13772084 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/772,084 02/20/2013 Frank Kenna III
23413 7590 09/14/2018
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
TMC0004US 3115
EXAMINER
OBISESAN, AUGUSTINE KUNLE
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/14/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte FRANK KENNA III and PREETI PATEL
Appeal2018-002783
Application 13/772,084
Technology Center 2100
Before ELENI MANTIS-MERCADER, BETH Z. SHAW, and
CARLL. SILVERMAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1, 3-8, 10-12, 14, 16-19, and 22-27,
which represent all the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Throughout this Decision we have considered the Appeal Brief filed July
27, 2017 ("App. Br."), Reply Brief filed January 9, 2018 ("Reply Br."), the
Examiner's Answer mailed November 9, 2017 ("Ans."), and the Final
Rejection mailed November 3, 2016 ("Final Act).
2 Appellants identify The Marlin Company as the real party in interest. App.
Br. 1.
Appeal2018-002783
Application 13/772,084
INVENTION
Appellants' invention is directed to a system that allows a user to
search a database of content addressing specific workplace topics to present
on an employee communication system. Spec. ,r 1.
Claims 1 and 14 are independent. Claim 1 is illustrative of the claims
at issue and is reproduced below, with disputed limitations italicized:
1. A system for transmitting and displaying electronic
media from a service provider to a subscriber comprising:
a service provider computer coupled to a controller of the
subscriber via a network connection;
software executing on said service provider computer to present
a web page that is used to log onto the system;
an electronic media library accessible by said service provider
computer, said electronic media library searchable by key word;
wherein, prior to initiating a search from the subscriber via the
web page, the electronic media library, via the software, displays an
index of key words available for searching and a number count for
each of the key words, the number count indicating the number
of different media content associated with each of the
respective key words;
wherein, when the electronic media library is searched by a
user-selected key word from the index, a plurality of pre-assembled
media content associated with the key word is presented, and upon
receiving a user-selected one of the plurality of pre-assembled media
content presented, the selected content is presented allowing the
subscriber to view the selected pre-assembled media content prior to
the content being added to the electronic media collection;
wherein the pre-assembled media content that is added to the
electronic media collection is configured for transmission to a display;
wherein a value specifying a number of discrete media for
presentment as a preview at one time and, both prior to selection of
any of the plurality of pre-assembled media content and prior to being
added to the electronic media collection as the plurality of pre-
assembled media content, is selectable by the user via the web page.
(App. Br., Claims Appendix, 19, 20.)
2
Appeal2018-002783
Application 13/772,084
REJECTIONS
The Examiner rejected claims 1, 3--4, 7-8, 10-12, 14, 16-17, and 22-
-27 under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Kenna, Ill
(US 2007/0038696 Al, published Feb. 15, 2007), Rodenburg et al. (US
2008/021551 Al, published Sept. 4, 2008), and further in view ofLouw (US
2007 /0204285 Al, published Aug. 30, 2007). Final Act. 4--14.
The Examiner rejected claims 5, 6, 18, and 19 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Kenna, Rodenburg, Louw,
and Olson et al. (US 2009/0106671 Al, published Apr. 23, 2009). Final Act.
14--19.
The Examiner rejected claim 11 under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Kenna, Rodenburg, Louw, and Chin (US
2005/0165742 Al, published July 28, 2005). Final Act. 19-23.
The Examiner rejected claims 1 and 14 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Kenna, Rodenburg, Louw, and Russ
(WO 2008/053168 Al, published May 8, 2008). Final Act. 23-29.
ANALYSIS
Appellants argue the Examiner erred in rejecting claim 1. In
particular, Appellants argue the cited references do not disclose "wherein a
value specifying a number of discrete media for presentment as a preview at
one time and, both prior to selection of any of the plurality of pre-assembled
media content and prior to being added to the electronic media collection as
the plurality of pre-assembled media content, is selectable by the user via the
web page," as recited in claim 1. ( emphasis added) See App. Br. 5; Reply
Br. 2-3.
3
Appeal2018-002783
Application 13/772,084
We agree with Appellants that the Examiner has not sufficiently
explained how the cited portions of Kenna (e.g., ,r,r 40-44) or Russ (e.g.,
page 4, lines 22-29 or page 7, lines 23-29) teach a value specifying a
number that is selectable by the user via the web page as recited in claim 1.
( emphasis added). The Examiner points to Kenna's selection of media and
Russ' s selection of media components, but does not explain how these
updates apply to the claimed "value specifying a number." Therefore, on
this record, the Examiner has not shown sufficiently how either Kenna or
Russ teaches "wherein a value specifying a number of discrete media for
presentment as a preview at one time and, both prior to selection of any of
the plurality of pre-assembled media content and prior to being added to the
electronic media collection as the plurality of pre-assembled media content,
is selectable by the user via the web page," as recited in claim 1 (emphasis
added).
Accordingly, we do not sustain the rejection of claim 1, or of
independent 14, which recites commensurate limitations. The pending
dependent claims stand with their respective independent claims.
DECISION
The decision of the Examiner to reject claims 1, 3-8, 10-12, 14, 16-
19, and 22-27 is reversed.
REVERSED
4