Ex Parte Nejat et al

Patent Trial and Appeal Board

Jun 29, 2016

13232560 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/232,560 09/14/2011
37123 7590 06/30/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Mahyar Nejat
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.
7114-104075-US 3599
EXAMINER
NGUYEN, KIM T
ART UNIT PAPER NUMBER
2163
MAILDATE DELIVERY MODE
06/30/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MAHY AR NEJAT and KLAUS HOFRICHTER
Appeal2014-007731
Application 13/232,5601
Technology Center 2100
Before JOHNNY A. KUMAR, LARRY J. HUME, and
NATHAN A. ENGELS, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-26, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Sony Corp. App.
Br. 3.
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Application 13/232,560
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention "relates generally to
computer systems and devices, and more particularly to a system and
methods for providing an electronic library service." Spec. i-f 1.
Exemplary Claims
Claims 1, 6, and 24, reproduced below, are representative of the
subject matter on appeal (emphasis and labeling added):
1. A method for providing an electronic library
service, the method comprising the acts of:
[L 1] receiving, by a server, a request for content of the
electronic library service,
[L2a] the request identifYing an account number for the
electronic library service and identification number of a device;
[L2b] authenticating the request, by the server, based on
an account number for the electronic library service and
identification number of a device;
determining, by the server, that content associated with
the request is available for access by the device based on one or
more restriction limitations; and
providing access to the content based on said determining
associated with the one or more restriction limitations, wherein
the content of the electronic library is accessible to a device
associated with the account number for a limited period of time.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 19, 2014); Reply Brief ("Reply Br.," filed July 2, 2014); Examiner's
Answer ("Ans.," mailed May 16, 2014); Final Office Action ("Final Act.,"
mailed Sept. 27, 2013); and the original Specification ("Spec.," filed
Sept. 14, 2011
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6. The method of claim 1, wherein authenticating
includes identifYing the device as a local device configured to
receive content from the server.
24. The method of claim 1, wherein the providing
access to the content includes providing access to the content
stored on the server that receives the request.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Antognini et al. US 5,649,185
("Antognini")
Ishibashi et al. US 8,094,807 B2
("Ishibashi")
July 15, 1997
Jan. 10,2012
(filed Mar. 22, 2006)
Rejection on Appeal
Claims 1-26 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Antognini and Ishibashi. Final Act. 3.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 11-18), we decide the
appeal of the obviousness rejection of claims 1-5, 7-16, and 18-23 on the
basis of representative claim 1; we decide the appeal of the obviousness
rejection of claims 6 and 17 on the basis of representative claim 6; and we
decide the appeal of the obviousness rejection of claims 24--26 on the basis
of representative claim 24. 3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-26,
and we incorporate herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1, 6,
and 24 for emphasis as follows.
1. § 103 Rejection of Claims 1-5, 7-16, and 18-23
Issue 1
Appellants argue (App. Br. 11-15; Reply Br. 2--4) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Antognini and Ishibashi is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the "receiving" and
"authenticating" limitations, LI and L2a and L2b, as recited in claim 1?
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Analysis
Appellants contend "[c]ontrary to the assertion in the Final Action,
fig. 16 and lines 15-35 of Ishibashi do not disclose or suggest the [contested
limitations] of independent claim 1, and the portions (i.e., fig. 16 and col. 32,
lines 15-35) of Ishibashi relied on in the Final Action do not cure the
deficiencies of Antognini .... " App. Br. 11-12. In particular, Appellants
contend "FIG. 16 of Ishibashi does not disclose or suggest that the server
1021 authenticates the user based on both an account number for the
electronic library service and identification number of a device, as required
by independent claim 1," but instead, this figure "merely shows various
account information parameters catalogued and stored in a database." App.
Br. 12. Appellants further argue, "[t]here is no disclosure in ... Ishibashi
[column 32, lines 18-24], relied on in the Final Action, that any one, let
alone two of these account parameters simultaneously are used for
authentication of the user on the server 1021." Id.
Appellants conclude their arguments by restating that "Ishibashi does
not cure the deficiency of Antognini with respect to the [contested
limitations L2a and L2b] of independent claim l" (App. Br. 13), and then
additionally set forth arguments said to counter the Examiner's purported
reliance upon inherency in rejecting claim 1 under § 103 as being obvious
over the combination of Antognini and Ishibashi. App. Br. 13.
In response, we note Appellants' arguments countering the purported
reliance upon inherency in the obviousness rejection are misplaced, as we
find the Examiner did not rely upon any theory of inherency in making the
rejection. See Final Act. 2 et seq.
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Further, because the Examiner rejects the claims as obvious over the
combined teachings of Antognini and Ishibashi, the test for obviousness is
not what the references show individually but what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In response to Appellants' arguments, the Examiner finds:
Antognini teaches [limitation L 1] "receiving, by a server, a
request, for content of the electronic library service" (on fig. 8,
col. 10 lines 59-col. 11 lines 60) the request, from the library
client (10), for content of the electronic library service has been
received by the library server (12). Antognini does not teach
[limitation L2a] "the request identifying an account number for
the electronic library service and identification number of a
device and [limitation L2b] authenticating the request based on
an account number for the electronic library service and
identification number of a device". Ishibashi, however, teaches
(on fig. 18) the device communication section verified that the
user is the true person by acquiring the account number and
device ID from the user's request.
Ans. 3--4.
We note, as do Appellants (see Reply Br. 2), the Examiner originally
cited Ishibashi Figure 16 (illustrating typical account information, e.g.,
account number, name, and device ID, among other information) as teaching
or suggesting limitations L2a and L2b, but now buttresses the rejection by
citing Ishibashi Figure 18 (see Fig. 18, Step S202, "ACQUIRE ID AND
ACCOUNT NUMBER FROM PORTABLE DEVICE," and the ensuing
authentication process in steps S203 through S208) as teaching or at least
suggesting contested limitation L2a and L2b. We find this additional
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teaching in Ishibashi cited by the Examiner provides further evidentiary
support for the Examiner's original position.
In further support of the Examiner's finding, we find Ishibashi teaches
or suggests the use of both an account number and device ID number to
authenticate. In particular,
As the determination result produced in a process carried
out at the step S201 reveals that the device communication
section 1043 has been capable of communicating with the
portable device 1003, the flow of the processing goes on to a
step S202 at which the control section 1044 controls the device
communication section 1043 to acquire an ID and an account
number from the portable device 1003 . . . . Receiving the
request, the portable device 1003 transmits the ID (that is, the
device ID) and account number stored in the storage section
employed in the portable device 1003 to the device .... Then,
at the next step S203, the control section 1044 carries out
processing to verify that the user 1002 is the true person.
Ishibashi col. 33, 11. 4--20.
We have reviewed Appellants' arguments in the Reply Brief, and
specifically note Appellants' challenge to the references individually,
primarily Ishibashi, is not convincing of error in the Examiner's position
because all of the features of the secondary reference need not be bodily
incorporated into the primary reference, but consideration should be given to
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425
(CCP A 1981 )). Furthermore, the artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
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independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2-5, 7-16, and 18-23 which fall therewith. See Claim Grouping,
supra.
2. § 103 Rejection of Claims 6 and 17
Issue 2
Appellants argue (App. Br. 15-16; Reply Br. 4---6) the Examiner's
rejection of claim 6 under 35 U.S.C. § 103(a) as being obvious over the
combination of Antognini and Ishibashi is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, "wherein authenticating includes
identifying the device as a local device configured to receive content from
the server," as recited in claim 6?
Analysis
Appellants contend
[n]either the portion of the disclosure nor FIG. 8 of Antognini
relied on in the Final Action disclose or suggest "identifying the
device" as recited in claims 6 and 17 ... [and] as discussed
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above ... [with respect to the rejection of claim 1], the
proposed combination of Antognini and Ishibashi fails to
disclose or suggest authenticating the request based on an
identification number of a device.
App. Br. 15. Instead, Appellants contend, Antognini and Ishibashi disclose
"authenticating the request based on an ID or a Password of a user without
identifying the device from which the ID or Password is coming from."
App. Br. 16.
In response, in the Answer, the Examiner cites Antognini (Fig. 8;
col. 4, 11. 46-48) as teaching or suggesting "the library client is typically a
workstation containing a local store or cache which sends the request[ed]
content to the library server and in respon[ se] to the request the library sever
provides the requested content (receive content from the library sever)."
Ans. 5; see also Final Act. 5 (citing Antognini col. 10, 11. 59---66, col. 11,
11. 1---60) (discussing, inter alia, validation of a library client, i.e., a device
operated by a user, by a library server, before content is made available).
Accordingly, in agreement with the Examiner, we find the
combination of Antognini and Ishibashi teach or suggest the contested
limitation of claim 6. Therefore, based upon the findings above, on this
record, we are not persuaded of error in the Examiner's reliance on the
combined teachings and suggestions of the cited prior art combination to
teach or suggest the disputed limitation of claim 6, nor do we find error in
the Examiner's resulting legal conclusion of obviousness. Therefore, we
sustain the Examiner's obviousness rejection of dependent claim 6, and
grouped claim 17 which falls therewith. See Claim Grouping, supra.
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3. § 103 Rejection of Claims 24--26
Issue 3
Appellants argue (App. Br. 16-17; Reply Br. 6-7) the Examiner's
rejection of claim 24 under 35 U.S.C. § 103(a) as being obvious over the
combination of Antognini and Ishibashi is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, "wherein the providing access to the
content includes providing access to the content stored on the server that
receives the request," as recited in dependent claim 24?
Analysis
Appellants contend the portions of Antognini cited by the Examiner
(col. 10, 11. 54--56) in rejecting claim 24 states:
[T]he request message is "received by the library server 12. "'
However, no portion of col. 10, lines 59-66 or col. 11, lines 1-
60 of Antognini, relied on in the Final Action, discloses that the
library server 12, which receives the request, also stores the
content requested by the user having an authorized
PATRONID/PASSWORD.
App. Br. 16.
The Examiner cites to various portions of Antognini as teaching or
suggesting this limitation. Final Act. 10 (citing col. 10, 11. 59-66, col. 1,
11. 1---60); Ans. 6 (citing Fig. 8). We agree with the Examiner's findings.
In further support of the Examiner's findings and legal conclusion of
obviousness, we note, while Antognini Figure 8 arguably shows content
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stored separately from library server 12 on store 20 or 21 via an image
server 14 or 15, the reference also teaches:
A single central electronic complex, including a digital
computer with connected workstations, may house any
combination of library clients, library servers, and image
servers. However, the procedures described below assume that
each client and server is housed in its own physical
environment. The inventors, however, assume that client and
servers may include co-located communicating processes.
Antognini col. 4, 1. 64---col. 5, 1. 3. We thus find Antognini teaches or at least
suggests the contested limitation of claim 24, i.e., "wherein the providing
access to the content includes providing access to the content stored on the
server that receives the request."
Moreover, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Nor have Appellants
provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013); see also App. Br. 24 ("(9) Evidence Appendix . ..
None.")).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 24, nor do we find error in the Examiner's
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resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 24, and grouped
claims 25 and 26 which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-8) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1-26 under 35 U.S.C. § 103(a) over the cited prior art combination of
record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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