Ex Parte Phan et al

Patent Trials and Appeals Board

Nov 25, 2014

10402305 - (D) (P.T.A.B. Nov. 25, 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.
10/402,305 03/26/2003 Dan M. Phan SONY-24400 4644
7590 11/25/2014
Jonathan O. Owens
HAVERSTOCK & OWENS LLP
162 North Wolfe Road
Sunnyvale, CA 94086
EXAMINER
LU, CHARLES EDWARD
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
11/25/2014 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 DAN M. PHAN and EDWARD EYTCHISON
____________

Appeal 2011-001807
Application 10/402,305
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 6-14, 17-23, 26-32, 35-40, and 43-51. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

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Application 10/402,305

2
STATEMENT OF THE CASE
Appellants’ claimed invention is directed to “providing a consolidated
content directory within a network structure” (Spec. 1:8).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of providing a master content directory
within a network of devices comprising:
periodically querying for all content on each device
within the network to obtain content listings from each device,
wherein the network comprises a plurality of devices and the
content listings comprise audio and video content listings;
consolidating the content listings received from the
devices within the network into the master content directory;
then periodically re-polling the devices; and
subscribing to receive notification of changes to the
content listings from the devices.

REFERENCES and REJECTIONS
The Examiner rejected claims 1-3, 6-14, 17-23, 26-32, 35-40, and 43-
51 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
The Examiner rejected claims 48 and 51 under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter applicant regards as the invention.
The Examiner rejected claims 1-3, 6-14, 17-23, 26-32, 35-40, and 43-
51 under 35 U.S.C. § 103(a) based upon the teachings of Putterman (US
2004/0088731 A1, May 6, 2004), Thomas (US 7,062,515 B1, June 13,
2006), and Devine (US 2002/0095399 A1, Jul. 18, 2002).

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ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner finds claims 1-3, 6-14, 17-23, 26-32, 35-40, and 43-51
fail to comply with the written description requirement as Appellants’
Specification does not support the claim limitation “querying for all content
on each device” (Ans. 4). The Examiner also finds claim 48 fails to comply
with the written description requirement as the Appellants’ Specification
does not support the claim limitation “wherein the media content listings are
obtained even if unrelated to the apparatus” (Ans. 4).
The test for written description is summarized in Purdue Pharma L.P.
v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (internal quotation
marks and citations omitted):

In order to satisfy the written description requirement,
the disclosure as originally filed does not have to
provide haec verba support for the claimed subject
matter at issue. . . . Nonetheless, the disclosure must . . .
convey with reasonable clarity to those skilled in the art
that . . . [the inventor] was in possession of the
invention. . . . Put another way, one skilled in the art,
reading the original disclosure, must immediately
discern the limitation at issue in the claims. . . . That
inquiry is a factual one and must be assessed on a case-
by-case basis.

Appellants cite to various portions of the Specification for support
(App. Br. 7; Reply Br. 2-3). We agree with Appellants and, upon further
review of Appellants’ Specification, have found page 7, lines 22-24 describe
“Control point applications within the network access the consolidated
master CDS to search content listings from all devices within the network,”
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(emphasis added) in addition to, for example, page 12, lines 26-27, and page
18, lines 19-23.
With respect to claims 48 and 51, Appellants assert page 13, lines 12-
25 and Figures 2 and 3 of the Specification provide support for the “wherein
the media content listing are obtained even if unrelated to the apparatus”
limitation (App. Br. 7-8; Reply Br. 3). We do not agree. Appellants appear
to be providing an enablement and not a written description argument (“One
skilled in the art would understand that video content is unrelated to a CD
jukebox” (emphasis added) (Reply Br. 3)).
1
We agree with the Examiner the
language of the Specification does not support the argued claim limitation to
demonstrate possession. (Claims 48, 51). We further agree the media types
and devices are all related as they are all “applied in a networked multimedia
system” (Ans. 12).
Therefore, we reverse the Examiner’s rejection of claims 1-3, 6-14,
17-23, 26-32, 35-40, and 43-47, 49, and 50 under the written description
requirement, and we sustain the Examiner’s rejection of claims 48 and 51 as
failing to comply with the written description requirement under § 112, first
paragraph.

1
Our reviewing court guides: “it is not a question of whether one skilled in
the art might be able to construct the patentee's device from the teachings of
the disclosure. . . . Rather, it is a question whether the application necessarily
discloses that particular device. . . . A description which renders obvious the
invention for which an earlier filing date is sought is not sufficient.”
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). See
also Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010) (“We have repeatedly stated that actual ‘possession’ or
reduction to practice outside of the specification is not enough. Rather, . . . it
is the specification itself that must demonstrate possession.”).

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Rejection under 35 U.S.C. § 112, second paragraph
The Examiner concludes claims 48 and 51 are indefinite because it is
“unclear what it means to be ‘unrelated to the apparatus’” (Ans. 4).
Appellants again assert page 13, lines 12-25 and Figures 2 and 3 of
the Specification provide support for this limitation (App. Br. 8).
The Examiner construes the plain meaning of “unrelated” as not being
indirectly or directly related (Ans. 13). This response undermines the
Examiner’s own 112, 2
nd
paragraph rejection. An artisan would understand
the plain meaning of “unrelated.” Thus, the lack of a definition in the
Specification has no bearing on the plain meaning of “unrelated” to an
ordinarily skilled artisan. The Examiner appears to imply that any claim
term lacking an explicit definition in the Specification is indefinite. The
“Breadth [of a claim] is not to be equated with indefiniteness.” In re Miller,
441 F.2d 689, 693 (CCPA 1971).
For the above reasons we do not sustain the Examiner’s rejection of
claims 48 and 51 as being indefinite under § 112, second paragraph. .
Rejection under 35 U.S.C. § 103
Appellants state the claims are grouped separately to indicate they do
not stand or fall together (App. Br. 15). However, the arguments presented
for the separate groupings of claims are substantially the same (see App. Br.
15-19, i.e., contesting the “querying for all content on each device
limitation”) as stated by the Examiner (Ans. 18). To the extent Appellants
recite an additional limitation for each group and allege it is not taught by
the combination of cited references, Appellants do not provide any
substantive arguments. (App. Br. 15–19). See 37 C.F.R. § 41.37(c)(1)(vii)
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(“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”).
Therefore, we select independent claim 1 as the representative claim for the
group.
The Examiner finds Putterman teaches or suggests all the limitations
of Appellants’ claim 1 except for expressly disclosing periodically querying
devices to obtain content listings and periodically re-polling the devices
(Ans. 5). The Examiner then finds Putterman queries devices for content
listings but does not do so periodically; however, Thomas teaches polling at
periodic time intervals [to determine if a file has changes] (Ans. 5-6). The
Examiner further finds Putterman and Thomas teach content listings and
devices, but do not expressly teach subscribing to receive notification of
changes to content listings from the devices (Ans. 6), but relies on Devine
for teaching “subscribing to receive notification of changes to content” (Ans.
7).
We agree with and adopt the Examiner’s findings as our own (Ans. 5-
8 and 13-18). Particularly, we agree Appellants are arguing the references
separately (Ans. 18). That is, for example, Appellants contend Thomas
teaches away from aggregating (App. Br. 14). However, Putterman was
cited for teaching aggregating as claimed; Thomas was cited for teaching
polling files to determine if they were changed (Ans. 18). Appellants cite to
paragraph 8 of Putterman stating “it is desirable to generate a home media
system that does not rely on server aggregation to acquire all media items on
a home network” (id.). Appellants do not address the Examiner’s citation to
Putterman’s paragraph 36, which recites “media device 350 aggregates all
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media items stored on media servers 310, 320 and 350” (emphasis added)
and in Figure 3 (Ans. 5, 17-18).
In light of the broad terms recited in the claims and the arguments
presented, Appellants have failed to clearly distinguish their claimed
invention over the prior art relied on by the Examiner. Therefore, on this
record, we are not persuaded the Examiner’s reading of claims 1-3, 6-14, 17-
23, 26-32, 35-40, and 43-51 on the cited combination of references is overly
broad, unreasonable, or inconsistent with the Specification, and we sustain
the rejection of representative claim 1.

DECISION
The Examiner’s decision rejecting claims 1-3, 6-14, 17-23, 26-32, 35-
40, and 43-47, 49, and 50 under 35 U.S.C. § 112, first paragraph is reversed.
The Examiner’s decision rejecting claims 48 and 51 under 35 U.S.C.
§ 112, first paragraph is affirmed.
The Examiner’s decision rejecting claims 48 and 51 under 35 U.S.C.
§ 112, second paragraph is reversed.
The Examiner’s decision rejecting claims 1-3, 6-14, 17-23, 26-32, 35-
40, and 43-51 under 35 U.S.C. § 103 is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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
lv