Ex Parte Ni et al

Patent Trial and Appeal Board

Apr 7, 2017

12770405 (P.T.A.B. Apr. 7, 2017)

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.
12/770,405 04/29/2010 BinNi 2043.707US1 9656
49845 7590 04/11/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
STOPP, COURTNEY L
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
04/11/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIN NI and VENU REDDY
Appeal 2015-003076
Application 12/770,4051
Technology Center 3600
Before ANTON W. FETTING, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants identify eBay Inc. as the real party in interest. Appeal
Br. 2.
Appeal 2015-003076
Application 12/770,405
ILLUSTRATIVE CLAIM
1. A method comprising:
displaying a publication, the publication being embedded
within a computing application, the computing application
executing on a mobile device;
receiving information that is current as of a specific
period, the information being subject to change with a
progression of time, the information being a current version of
the publication; and
causing the received information to be output to a user
interface of the mobile device concurrently with a computing
application element being output to the user interface, the
computing application element being associated with the
computing application executed by the mobile device.
REJECTION
Claims 1—20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Coelho et al. (US 2008/0270251 Al, pub. Oct. 30, 2008) (“Coelho”).
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 2—8 and the Answer at pages 3—10. Additional
findings of fact may appear in the Analysis below.
ANALYSIS
The Appellants present two reasons for error in the rejection of
claim 1. First, the Appellants allege that Coelho does not disclose the
claimed “publication . . . embedded within a computing application.”
Second, the Appellants allege that Coelho does not disclose the claimed
“current version of the publication.”
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Application 12/770,405
As to the first proposed reason, the Appellants argue that a text
message including a link, as disclosed in Coelho, is not a “computing
application” having an “embedded publication,” per claim 1. Appeal Br. 10.
In response, the Examiner states that the Appellants — despite
disputing the Examiner’s position — have not articulated any reason why
Coelho does not disclose the claimed feature. Advisory Action 2; Answer 8.
The Reply Brief, for the first time in the Appeal, proposes a
construction of certain claim language at issue:
It is respectfully submitted that, as is well known in the
art and as is readily understood by a person of ordinary skill in
the art, the phrases “embedded content” and “embedded
publication,” when used with reference to a computing
application, describe[ ] content that is extraneous to the
functionality of the computing application even though it may
be presented in conjunction with the user interface elements of
the computing application.
Reply Br. 3.
The Appellants’ arguments based upon this newly presented
interpretation of the claim language will not be considered for purposes of
the present Appeal. See 37 C.F.R. §41.41(b)(2) (“Any argument raised in
the reply brief which was not raised in the appeal brief, or is not responsive
to an argument raised in the examiner’s answer, including any designated
new ground of rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”) The Appellants’ other
arguments, regarding the “publication . . . embedded within a computing
application” limitation, are not persuasive of error in the rejection of claim 1
because, as the Examiner notes, such arguments do not explain any
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Application 12/770,405
shortcoming in Coelho, in regard to the claimed features at issue. See
Answer 8.
As to the Appellants’ second proposed reason for error in the rejection
of claim 1, the Appellants argue that the claimed “current version” cannot
apply to Coelho’s disclosure of a text message received/displayed by a text
message application, because Coelho does not teach a particular text
message that is a version of another text message. Appeal Br. 11.
According to the Appellants:
While information conveyed in a text message may or may not
be information that is current as of [a] specified period and may
or may not be subject to change with a progression of time,
there is no indication in Coelho that there can be two versions
of a text message as opposed to two different messages.
Id.
In response, the Examiner states that the claim language requires
neither a single version nor multiple versions, but simply requires a “current
version of the publication” that is, per claim 1, “subject to change with a
progression of time.” See Answer 9.
In the Reply Brief, the Appellants argue that the Examiner’s analysis
affords no weight to the word “version” or the phrase “a current version of.”
Reply Br. 8. According to the Appellants, “the existence of a current
version of a publication necessarily requires a possibility of an outdated
version of said publication,” whereas “Coelho does not contemplate a
version of any given text message.” Id.
The Appellants concede that Coelho teaches the claimed “information
that is current as of a specific period” and that is “subject to change with a
progression of time,” regardless of whether or not it also might teach
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Application 12/770,405
multiple versions of a text message. See Appeal Br. 11, Reply Br. 7. As the
Examiner correctly explains, claim 1 does not require multiple versions. See
Answer 9. The Appellants’ assertions that the claim language “requires a
possibility of an outdated version of said publication” and that “Coelho does
not contemplate a version of any given text message” (Reply Br. 8) do not
correspond to what is recited in claim 1. Thus, the Appellants do not
identify any claimed feature not satisfied by Coelho.
Accordingly, the rejection of independent claim 1 and its dependent
claims — and, for similar reasons, independent claims 11 and 20, along with
their dependent claims — under 35 U.S.C. § 102(b) is sustained.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—20 under 35
U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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