Ex Parte Mahan et al

Board of Patent Appeals and Interferences

Sep 13, 2010

09540756 (B.P.A.I. Sep. 13, 2010)

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.
09/540,756 03/31/2000 Laura L. Mahan 27996-232-UTIL 3424
35437 7590 09/14/2010
MINTZ LEVIN COHN FERRIS GLOVSKY & POPEO
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
VAUGHN, GREGORY J
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
09/14/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAURA L. MAHAN,
KELLY K. FORBES,
and SHAUN ILLINGWORTH
____________

Appeal 2009-000935
Application 09/540,756
Technology Center 2100
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-000935
Application 09/540,756

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8, 14-26, 33-40, and 42, which are all the claims
remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellants’ invention relates to a system for building a presentation
having multimedia content. See Abstract.

Representative Claim
1. A method of building a presentation, the method
comprising:

accessing a page including multimedia content from a
multimedia source through a multimedia content application;
and

subsequent to receiving user selection input while said
page is accessed through said multimedia content application,
automatically identifying multimedia content having a tag by
parsing said page, and

copying said multimedia content having said tag from
said multimedia source to memory, for access by a presentation
application.

Examiner’s Rejections
Claims 1-3, 6-8, 14-19, 22-26, 33, 35, and 37-40 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Gill (US 6,081,262).
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Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gill.
Claims 4, 5, 20, 21, 34, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gill and Fields (US 6,128,655).

FINDINGS OF FACT
Gill
1. Gill describes a menu driven multi-media presentation generation
system (MPG), which accesses data from media sources S1-S6. Col. 5, ll. 8-
17; Fig. 1.
2. The media objects from sources S1-S6 may include video
information from Internet S4. Col. 5, l. 65 - col. 6, l. 8.
3. An author creates a multi-media presentation by placing multiple
objects on a page (Fig. 2), such as a movie object MB which is obtained and
stored in memory. Col. 8, l. 55 - col. 10, l. 13.
4. An export process (Fig. 4) allocates memory to store the data
required for the presentation. The multi-media data is stored and processed
by a page based document layout system. The data is identified by tags
which note the multi-media nature of the particular data object. In creating
an export object, the authoring tool queries the page based document layout
system to locate multi-media information contained on the presentation
pages. Col. 15, l. 34 - col. 16, l. 10.
5. Once the object information is collected, the authoring tool
prepares the retrieved objects for export. Col. 16, ll. 11-15.
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6. The multi-media presentation is exported as a non-editable object,
which may be embodied as a single file for storage on a computer hard
drive. Col. 17, ll. 9-45.

PRINCIPLES OF LAW
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997) (citations omitted); In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Our reviewing
court has repeatedly warned against confining the claims to specific
embodiments described in the specification. Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).

ANALYSIS
For claim 1, Appellants contend in the Appeal Brief2 that Gill does
not describe “subsequent to receiving user selection input while said page is
accessed through said multimedia content application, automatically
identifying multimedia content having a tag by parsing said page,” and

2 Filed January 17, 2008. The only arguments by Appellants that we have
considered are contained in the Appeal Brief and the Reply Brief (filed June
16, 2008). We have reviewed none of the papers alleged to be “incorporated
by reference” at page 2 of the Reply Brief. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief filed
pursuant to § 41.41 will be refused consideration by the Board, unless good
cause is shown.”).
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copying the multimedia content from the multimedia source to memory, for
access by a presentation application.
The Examiner points out in the Answer that many of Appellants’
arguments are not commensurate with the scope of claim 1. The Examiner
further points out where each feature of claim 1, when properly interpreted,
is deemed to be described in the reference.
Appellants respond, in turn, that Gill’s disclosure is contrary to the
instant invention, where “while” the page is being accessed by the
multimedia content application, “the multimedia content is identified based
on the received user selection input.” Reply Br. 4 (emphasis added).
According to Appellants, the “while” term means that the functions of
“accessing” and “automatically identifying” are performed simultaneously.
Id.
We agree with the Examiner that instant claim 1 is not as limiting as
Appellants seem to allege. The claim does not recite what might occur in
response to “receiving user selection input,” and in particular does not
require that the “automatically identifying” is in response to that, or any
other, “user selection input.” The claim requires that “subsequent to
receiving user selection input while said page is accessed through said
multimedia content application,” the “automatically identifying” occurs.
The claim thus requires no more than that the sub-step of “automatically
identifying multimedia content having a tag by parsing said page” occurs at
some time after some unspecified “user selection input” is received, rather
than in response to, or as a direct consequence of, the “input.”
We therefore are not persuaded that Gill fails to anticipate the subject
matter of claim 1. In view of the breadth of claim 1, both the “accessing a
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page” and the “receiving user selection input” can occur simultaneously, but
prior to, automatically identifying multimedia content having a tag by
parsing the page. We thus find no error in reading the “accessing” and “user
selection input” on the authoring phase described by Gill, with the
“automatically identifying” sub-step being read on the (later) export phase of
Gill’s system (col. 15, l. 35 et seq.). Further, the reference describes, in that
export phase, “copying said multimedia content” to memory for access by a
presentation application (see FF 5, 6) within the constraints of claim 1.
However, the “copying” to memory could also occur during the authoring
phase described by Gill, in view of the broad terms of the claim.
For claim 42, rejected under § 103(a) over Gill, Appellants appear to
rely on substantially the same arguments presented for claim 1. See App.
Br. 17. In any event, Appellants do not allege that it would not have been
obvious for HTML tags to serve as the multi-media tags disclosed by Gill.
Moreover, in view of the content of pages 1 and 8 of the Specification,
HTML pages and HTML tags were widely used at the time of invention.
Appellants’ arguments in response to the § 103(a) rejection over Gill
and Fields are also unavailing, as the arguments rely on the issues we have
considered in the rejection of claims 1 and 42.
We thus decide the appeal on the basis of claims 1 and 42. See 37
C.F.R. § 41.37(c)(1)(vii). We sustain the Examiners’ rejections under
§§ 102 and 103(a).

DECISION
The rejection of claims 1-3, 6-8, 14-19, 22-26, 33, 35, and 37-40
under 35 U.S.C. § 102(e) as being anticipated by Gill is affirmed.
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The rejection of claim 42 under 35 U.S.C. § 103(a) as being
unpatentable over Gill is affirmed.
The rejection of claims 4, 5, 20, 21, 34, and 36 under 35 U.S.C.
§ 103(a) as being unpatentable over Gill and Fields 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

msc

MINTZ LEVIN COHN FERRIS GLOVSKY & POPEO
ONE FINANCIAL CENTER
BOSTON, MA 02111