Ex Parte Mazhar et al

Board of Patent Appeals and Interferences

Oct 30, 2009

09411171 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KHURSHED MAZHAR, DAVID M. NADALIN, and
KEVIN P. LARKIN
___________

Appeal 2009-003140
Application 09/411,171
Technology Center 2100
____________

Decided: October 30, 2009
____________

Before JEAN R. HOMERE, STEPHEN C. SIU, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 22-42. Claims 1-21 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

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STATEMENT OF THE CASE
INVENTION
The invention on appeal is directed generally to the field of
utilizing Internet sources of streaming-media content on a computer. More
particularly, the invention relates to client/server architectures and graphical
user interfaces for toolbars and explorer bars utilized in conjunction with
Web browsers providing streaming-media content. (Spec. 1).

ILLUSTRATIVE CLAIM
22. A computer system having a display device for
rendering a graphical user interface of a Web browser
displaying Web page content in a browser pane, and having at
least one speaker for playing streaming media, the graphical
user interface of the Web browser comprising:

a) a radio toolbar displaying radio-toolbar buttons for
controlling the streaming media irrespective of the Web page
content being browsed, the radio-toolbar buttons including:

i) a play/stop button enabled to toggle between play and
stop to control, respectively, playing and stopping of available
streaming media, and disabled when streaming media is
unavailable;

ii) a mute button for instructing the Web browser to
silence streaming media, the mute button assuming an inactive
state if the computer system cannot modify volume and an
active state otherwise;

iii) a volume slider for controlling the volume of
streaming media played over the speaker, the volume slider
assuming an inactive state if the computer system cannot
modify volume and an active state otherwise;

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iv) a radio-stations button selectable to alter a source of
streaming media by providing a drop-down list that includes an
"add station to favorites" entry and a list of recently used radio
stations; and
v) an information area displaying a status text component
and a status icon component, the status text component
presenting meta data information associated with a streaming
media source, the status icon component presenting an Internet
connection status regarding the streaming media source; and

b) a cursor controllable by a user to select the radio-
toolbar buttons, the cursor configured to highlight a radio-
toolbar button while passing over that radio-toolbar button and
to display a rollover tool tip describing a corresponding
function of the highlighted radio-toolbar button.

PRIOR ART
The Examiner relies upon the following references as evidence:
Realplayer G2 TM @1998. pp. 1-2. (hereinafter “RealPlayer”).

“Realnetworks Ships Final Release of Realsystem G2, Next
Generation Media Delivery System” (Nov 13, 1998), pp. 1-3
(hereinafter “Press Release”).

THE REJECTIONS
The Examiner rejected claims 22-42 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of RealPlayer and Press Release.

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an
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improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Appellants have the burden 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). Therefore, we look to Appellants’ Briefs to show error in
the Examiner’s proffered prima facie case.

ISSUE 1 (claims 29-42)
Regarding claims 29-42, Appellants contend that the Examiner has
not established a prima facie case of obviousness in rejecting claims 29-42
over the proffered combination of RealPlayer and Press Release (App. Br.
15-16). In particular, Appellants point out that in the Answer the Examiner
merely rejects these claims by stating: as “claims 29-42 are analyzed as
previously discussed with respect to claims 22-28.” (App. Br. 16; see also
Ans. 6). Since this statement is the sole basis for rejecting claims 22-28,
Appellants contend that the Office has failed to consider numerous elements
or features in claims 29-42. Appellants list certain claimed features as not
being addressed by the Office Action on pages 16-19 of the Brief.
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In the “Response to Argument” portion of the Answer, the Examiner
addresses Appellants’ arguments regarding the limitations alleged as not
being taught or suggested by the proffered combination of RealPlayer and
Press Release. (Ans. 6-9).
Issue 1: Have Appellants shown that the Examiner has
not established a prima facie case of obviousness in
rejecting claims 29-42 over the proffered combination of
RealPlayer and Press Release?

ANALYSIS - ISSUE 1 (claims 29-42)
We decide the question of whether Appellants have shown the
Examiner has not established a prima facie case of obviousness in rejecting
claims 29-42 over the proffered combination of RealPlayer and Press
Release.
We note that Appellant’s arguments regarding claims 29-42 do not
attempt to distinguish the listed limitations over the Examiner’s proffered
combination of RealPlayer and Press Release. Instead, Appellants merely
assert: (1) that the Examiner has not established a prima facie case, and (2)
Appellants merely recite selected features of claims 29-42. (App. Br. 15-20).
The record indicates that the Examiner addressed Appellants’
arguments with the detailed response on pages 6-9 of the Answer. However,
the record also shows that Appellants have not rebutted any of the
Examiner’s responsive arguments by filing a Reply Brief.
Based on this record, it is our view that Appellants have been given
full and fair notice of the teachings of the RealPlayer and Press Release
references, as further clarified by the Examiner in the “Response to
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Argument” section of the Answer (See Ans. 6-9). Appellants are responsible
for all that is disclosed by the collective teachings of the cited references.
See In re Zenitz, 333 F.2d 924, 926 (CCPA 1964). “They are part of the
literature of the art, relevant for all they contain.” In re Heck, 699 F.2d
1331, 1333 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009
(CCPA 1968)).
Based on the record before us, we find Appellants have failed to rebut
the Examiner’s rejection of claims 29-42 with any persuasive analysis. It is
our view that Appellants’ assertions are ineffective in demonstrating error in
the Examiner’s prima facie case to establish the patentability of the claims
on appeal. (App. Br. 15-20). See Ex parte Belinne, No. 2009-004693, slip
op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf
Moreover, a general allegation that the claims define a patentable
invention without specifically pointing out how the language of the claims
patentably distinguishes them from the reference does not comply with the
requirements of 37 C.F.R. § 1.111(b). Likewise, a statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
For at least the aforementioned reasons, we find Appellants have not
sustained the requisite burden on appeal of providing arguments or evidence
persuasive of error in the Examiner’s rejection of claims 29-42.

ISSUE 2 (claims 22-28)
Regarding independent claim 22, Appellants contend that the
RealPlayer does not have all of the necessary capabilities of a web browser
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(App. Br. 21, ¶ 3). Appellants aver that “Press Release appears to distinguish
the RealPlayer application from a web browser; and that the viewing pane of
the RealPlayer application is linked to the media being played, and it is
incapable of displaying a web page as described in the Application and as
recited in independent claim 22.” (Id.).
In response, the Examiner notes that “RealPlayer G2” is a program
that accesses audio and video files from the World Wide Web. (Ans. 11, ¶2).
Thus, the Examiner finds that “RealPlayer G2” is a web browser that reads
and processes hyperlinks to get to the appropriate site. (Id.)
Issue 2: Have Appellants shown that the Examiner erred in
finding that “RealPlayer G2” teaches or suggests a web browser, as
claimed? (Claim 22).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF):
1. RealPlayer G2 connects to a web site and has a graphical user
interface, as shown. (RealPlayer 1).
2. RealPlayer G2 displays information retrieved from the World Wide
Web (audio and video) in the right half of the screenshot. (RealPlayer
1).
3. Press Release teaches: “RealChannels - There are more than 70
RealchannelsTM built into RealPlayer G2, including major brands such
as CNN, ESPN, and the Wall Street Journal.” (Press Release 2).

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ANALYSIS - ISSUE 2 (claims 22-28)
We decide the question of whether Appellants have shown the
Examiner has erred in finding that “RealPlayer G2” teaches or suggests a
web browser, as claimed. (Representative claim 22). Based on Appellants’
arguments in the Appeal Brief, we will decide the appeal of claims 23-28 on
the basis of representative claim 22. See 37 C.F.R. § 41.37(c)(1)(vii).
During prosecution, “the 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)).
When we look to Appellants’ Specification for context, we note that a
“web browser” is described as follows:
A Web browser is a client application, software component, or
operating system utility that communicates with server
computers via FTP, HTTP, and Gopher protocols. Web
browsers receive Web documents (i.e. Web pages) from the
network and present them to a user. Internet Explorer, available
fiom Microsoft Corporation, of Redmond, Washington, is an
example of a popular Web browser.
(Spec. 2, ll. 7-11).
Consistent with Appellants’ Specification, we broadly but reasonably
construe the recited “web browser” as a client application or software
component that communicates with a server. Given this construction, we
find the scope of Appellants’ claimed “web browser” broadly encompasses
the “RealPlayer G2” client application that connects to a web site (server)
and has a graphical user interface (FF 1), where RealPlayer G2 also displays
information retrieved from the World Wide Web (FF 2-3). Because we find
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that the disclosed “RealPlayer G2” application is a client application or
software component that communicates with a server, we agree with the
Examiner’s position as articulated in the Answer (11).
Appellants also aver that the “RealPlayer does not disclose ‘streaming
media irrespective of the Web page content being browsed.’” (App. Br. 29,
§ 3). We find this argument for patentability is predicated on nonfunctional
descriptive material. The content of such nonfunctional descriptive material
is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-1888 (BPAI 2008) (precedential) available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf.1
For at least the aforementioned reasons, we find Appellants have not
sustained the requisite burden on appeal of providing arguments or evidence
persuasive of error in the Examiner’s rejection of representative claim 22
and claims 23-28 that fall therewith.

CONCLUSIONS
Based on the findings of facts and analysis above:
Appellants have not established the Examiner erred in rejecting claims
22-42 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of RealPlayer and Press Release.

1 Cf. In re 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
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent Examining
Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, July 2008).
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DECISION
We affirm the Examiner’s rejection of claims 22-42 under 35 U.S.C.
§103(a).
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

pgc

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