Ex Parte Okeh

Patent Trial and Appeal Board

Mar 31, 2014

11124959 (P.T.A.B. Mar. 31, 2014)

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.
11/124,959 05/10/2005 Francois Okeh 1051
7590 03/31/2014
FRANCOIS OKEH
136 LOKOYA STREET
KANATA, ON K2S 0J4
CANADA
EXAMINER
GORNEY, BORIS
ART UNIT PAPER NUMBER
2449
MAIL DATE DELIVERY MODE
03/31/2014 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 FRANCOIS OKEH
____________________

Appeal 2011-011124
Application 11/124,959
Technology Center 2400
____________________

Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
JILL D. HILL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3-5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method for creating and distributing
media discs through a web interface, providing
author initiated electronic transfer of a media disc
image in software as a computer file whereby the
process of sending an electronic media disc image
as a computer file and the process of receiving a
media disc image as a computer file are linked by
the arrival and processing of an email message
received at the destination.

REJECTIONS
Appellant requests review of the following rejections:1
I. Claims 1 and 3-5 are rejected under 35 U.S.C. § 112, second
paragraph.
II. Claims 3-5 are rejected under 35 U.S.C. § 101.

1 The Examiner withdrew the rejection of claims 1 and 3-5 under 35 U.S.C.
§ 112, first paragraph. Ans. 3; Final Rej. 6.
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III. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Stern (US 2002/0069113 A1; pub. Jun. 6, 2002) and Ellis (US
2004/0054893 A1; pub. Mar. 18, 2004).
IV. Claims 3-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stern, Ellis, and Levy (US 2003/0174861; pub. Sep. 18,
2003).

ANALYSIS
Rejection I
Claim 1
Claim 1 recites, inter alia, the limitation “the process of sending an
electronic media disc image as a computer file and the process of receiving a
media disc image as a computer file are linked by the arrival and processing
of an email message received at the destination.” Emphasis added. The
Examiner determined that it is not clear how the recited processes of sending
and receiving “are linked by the arrival and processing of an email
message.” Ans. 3. For examination purposes, the Examiner interpreted the
limitation in accordance with paragraph [0026] of the Specification “as a
web link embedded in the email message and pointing to the location of the
disc image file.” Id. at 4.
Paragraph [0026] of the Specification states:
In the first sequence shown in Figure 2, the
first multimedia author 2 chooses to forward a
download link to her creation for a third party
recipient 5 to download through an email message.
The author 2 is able to initiate such action through
the network web interface and application. The
recipient 5 upon receiving this email message can
then proceed to click on a web link, embedded into
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the email message to download the target disc
image and cover graphics which are at this point
combined into a single file archive.
Emphases added.
Appellant contends that “the inventive step disclosed by this invention
is not limited to the mere use of email. It is in the novel method that email is
used as a relay mechanism to transfer and replicate discs over geographically
separated locations.” App. Br. 5.
However, we agree with the Examiner that this contention does not
address the articulated reason for the rejection, noted supra. Ans. 9.
Appellant also references paragraphs [0012] and [0013] of the
Specification. Reply Br. 6. However, Appellant does not adequately
explain how these paragraphs clarify “the relationship/link between
processes of sending and receiving a media disc image and the arrival and
processing of an email message.”
The term “linked” is not described in the Specification. The term
“download link” appears in paragraphs [0013] and [0017] (“send a
download link”) and [0026]. The Examiner’s construction of “linked” for
purposes of considering the prior art is consistent with these disclosures in
the Specification.
Appellant contends that the Examiner’s construction of “linked” is
overly limiting and thus incorrect. Reply Br. 7. However, Appellant does
not indicate any particular meaning that the recitation of “the process of
sending an electronic media disc image as a computer file and the process of
receiving a media disc image as a computer file are linked by the arrival and
processing of an email message received at the destination” (emphasis
added) should be given, in view of the Specification, instead of the
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Examiner’s construction. Thus, we agree with the Examiner that the
meaning of this limitation is not sufficiently clear and definite to satisfy the
requirements of 35 U.S.C. § 112, second paragraph.
Claims 3-5
The Examiner determined that claim 3 does not set forth any method
steps, making it unclear what method is intended to be encompassed. Ans.
4.
Although the preamble of claim 3 is directed to a method, it recites
“further including a distributed network delivery system . . . to media disc
authors and recipients.” This recitation does not indicate what exactly
“further include[s]” a distributed network delivery system, that is, what the
system is included in. It is not apparent to us how the method itself “further
include[s]” the recited system, which is a physical system, as opposed to a
manipulative step. Thus, this recitation is indefinite and does not define a
method step.
Claim 3 further recites “whereby, a worldwide network of facilities
with web servers and media disc writer drive bays is used to determine
where to receive a media disc image . . . create the physical disc and deliver
the physical disc . . . .” Emphasis added. The Examiner appears to have
determined that the recitation of “is used” does not provide an active,
positive method step specifying how the worldwide network of facilities “is
used” in the method in actual practice to “determine,” “create” and
“deliver,” as claimed. Ans. 4.
We disagree with the Examiner. We construe claim 3 as effectively
reciting “using a worldwide network of facilities with web servers and media
disc writer drive bays to determine where to receive a media disc image . . .
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create the physical disc and deliver the physical disc . . . .” Emphasis added.
Accordingly, we construe the recitations “to determine,” “create,” and
“deliver” as defining steps of the “method for creating and distributing
media discs through a web interface.”
The Examiner also determined that the recitation “to ensure the
shortest delivery time and cost” (emphasis added) is a relative limitation and
is not defined by the claim, the Specification does not provide a standard for
ascertaining the requisite degree, and one skilled in the art would not be
reasonably apprised of the claim scope. Ans. 4. The Examiner added that it
is unclear how to verify or measure that the shortest delivery time and cost
are ensured. Id.
In response, Appellant contends that the skilled artisan would be able
to provide the shortest delivery time and cost to a sender and a recipient.
Reply Br. 9. In support, Appellant references paragraph [0018] of the
Specification (id.), which describes, in part, “[s]trategically placed drive
bays networked over the Internet can be used to reduce shipping costs, times
or restrictions between countries.” Emphasis added.
We agree with the Examiner that the Specification does not provide a
standard or sufficient guidance for determining the meaning of “shortest
delivery time and cost.” The Specification does not describe the term
“shortest.” Even assuming that a skilled artisan would be able to reduce
delivery time in light of the Specification, the Specification does not provide
any standard for determining what the “shortest delivery time” equals, or
how one would know whether it has been achieved, in any situation.
Consequently, one skilled in the art would be unable to determine with
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certainty whether “a distributed network delivery system,” as claimed
“ensure[s] the shortest delivery time.”
Regarding “cost,” claim 3 does not clearly specify whether this term is
“delivery cost,” or perhaps some other “cost.” It is also unclear whether
“shortest” modifies “cost.” Even assuming that the “cost” is the “delivery
cost” and “shortest” modifies “delivery cost” and means “lowest,” the
Specification does not provide any standard or sufficient guidance for
determining what the lowest delivery cost equals in any situation.
Consequently, the skilled artisan would be unable to determine with
certainty whether the lowest delivery cost has been achieved. Furthermore,
it is not clear how “further including a distributed network delivery system”
(which has an indefinite meaning in claim 3) “ensures” the lowest delivery
cost, as other factors would also affect delivery cost. Thus, we agree with
the Examiner that the meaning of “the shortest delivery time and cost” is
indefinite.
In addition, claim 5, which also depends from claim 1 or 3, recites the
limitation “further including a means . . . over the Internet.” This limitation
fails to specify what “further include[s] a means.” It is unclear how this
recitation of structure further limits the recited method steps. Accordingly,
claim 5 is indefinite for this additional reason.
In view of the above, we sustain the rejection of claims 1 and 3-5
under 35 U.S.C. § 112, second paragraph. Because we have advanced
additional reasoning beyond that set forth by the Examiner, we designate our
affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. §
41.50(b).
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Rejection II
The Examiner rejected claims 3-5 under 35 U.S.C. § 101 “because the
claimed recitation of a use, without setting forth any steps involved in the
process, results in . . . a claim which is not a proper process claim under 35
U.S.C. 101.” Ans. 5 (emphasis added).
We disagree with the Examiner’s reasoning. First, we disagree that
claims 3-5 do not recite any process steps for the reasons discussed supra in
regard to rejection I. Second, claims 3-5 are not directed to a “use” per se.
Rather, these claims are each directed to “[a] method for creating and
distributing media discs through a web interface.” Emphasis added.
Accordingly, because a method is one of the categories of statutory subject
matter, we do not sustain the rejection of claims 3-5 under 35 U.S.C. § 101.
Rejection III
Regarding claim 1, the Examiner found that Stern discloses the
claimed method except for not explicitly disclosing the “whereby” clause
limitations. Ans. 5 (citing Stern, para. [0580]). The Examiner found that
Ellis discloses these missing features of Stern, by disclosing “the file
download link . . . is distributed to authorized user via E-mail.” Id. at 6
(citing Ellis, para. [0023]). The Examiner concluded that it would have been
obvious to combine the teachings of Stern and Ellis to facilitate downloads
for end users. Id.
Appellant contends that “distributed systems” can be divided into two
classes, namely, “Class A” and “Class B.” App. Br. 6. Appellant contends
that Stern teaches a distributed system that is an example of a “Class A
distributed network,” whereas the invention is a Class B system, and thus
there is no motivation to combine the teachings of Stern and Ellis. Id. at 6-7.
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However, claim 1 does not recite a network of connected computers,
as Appellant contends is required of a Class B distributed system. Id. at 6.
Thus, Appellant’s contentions regarding “distributed systems” are not
commensurate in scope with claim 1.
Appellant generally states that it previously showed that the invention
“produces new and unexpected results over [the] Examiner’s proposed
combinations and solves a long-felt and unsolved need.” App. Br. 7 (citing
pp. 15-22 of “Applicant’s response to Examiner’s final office action”).
However, Appellant does not provide with the Appeal Brief (or Reply Brief)
the information Appellant states was provided in the previous response (i.e.,
“technical references” and “design differences innate to the Stern, Ellis and
Levy disclosures”) (id.). “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.” See 37 C.F.R. § 41.37
(c)(1)(vii). Here, Appellant does not show good cause for not including
previously-provided information in its Briefs. Accordingly, we will not
consider that information in this appeal.
Appellant also contends that Stern teaches away from the invention,
and that the distributed systems disclosed by Stern and Ellis teach away
from each other. Reply Br. 10.
However, Appellant again relies on its response to the Examiner’s
final Office Action to support this contention. Id. Moreover, in its Briefs,
Appellant does not direct us to any particular disclosure in Stern or Ellis that
teaches away from the claimed invention. Specifically, Appellant does not
identify any particular disclosure in Stern or Ellis that “criticize[s],
discredit[s], or otherwise discourage[s]” the claimed method. See In re
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Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Hence, Appellant’s
contentions regarding “teaching away” with respect to Stern and/or Ellis are
not persuasive.
Appellant also has not apprised us of any error in the Examiner’s
findings or articulated reasoning for combining the teachings of Stern and
Ellis.
In view of the above, we sustain the obviousness rejection of claim 1.
Rejection IV
The Examiner relied on Levy for disclosure regarding the features of
claims 3-5. Ans. 6-8.
In response, Appellant does not provide any additional persuasive
argument in regard to the Examiner’s combination of Stern, Ellis, and Levy,
but relies substantially on the same argument presented for rejection III, as
discussed supra. App. Br. 6-7; Reply Br. 9-10. Thus, we also sustain the
obviousness rejection of claims 3-5 for reasons similar to those discussed in
regard to claim 1.
New Ground of Rejection
Claims 1 and 3 require creating and distributing media discs. Claim 4
depends from claim 1 or 3 and recites “wherein data discs are distributed
instead of media discs.” Emphasis added. 35 U.S.C. § 112, fourth
paragraph, states “a claim in dependent form shall contain a reference to a
claim previously set forth and then specify a further limitation of the subject
matter claimed.” Emphasis added. Claim 4 does not specify a further
limitation of the subject matter of claim 1 or 3, but, in fact, is inconsistent
with those claims. Accordingly, claim 4 fails to comply with 35 U.S.C.
§ 112, fourth paragraph. See Pfizer, Inc. v. Ranbaxy Labs., LTD., 457 F.3d
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1284, 1291-92 (Fed. Cir. 2006) (finding that a dependent claim failed to
“specify a further limitation of the subject matter” of the claim from which it
depended because it covered subject matter outside the scope of that claim).
Accordingly, claim 4 is rejected for failing to comply with 35 U.S.C.
§112, fourth paragraph. This is a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

DECISION
I. The rejection of claims 1 and 3-5 under 35 U.S.C. § 112,
second paragraph, is AFFIRMED and designated as a NEW GROUND OF
REJECTION.
II. The rejection of claims 3-5 under 35 U.S.C. § 101 is
REVERSED.
III. The rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Stern and Ellis is AFFIRMED.
IV. The rejection of claims 3-5 under 35 U.S.C. § 103(a) as
unpatentable over Stern, Ellis, and Levy is AFFIRMED.
V. We enter a NEW GROUND OF REJECTION for claim 4 under
35 U.S.C. § 112, fourth paragraph.
Regarding the affirmed rejections, 37 CFR § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof.
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.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)
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