Ex Parte Quigley

Patent Trial and Appeal Board

Apr 13, 2017

13735930 (P.T.A.B. Apr. 13, 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.
13/735,930 01/07/2013 Thomas J. QUIGLEY 1875.6090002 4358
49579 7590 04/17/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
CHOU, ALBERT T
ART UNIT PAPER NUMBER
2471
NOTIFICATION DATE DELIVERY MODE
04/17/2017 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):
e-office @ skgf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. QUIGLEY
Appeal 2016-008265
Application 13/735,930
Technology Center 2400
Before STEPHEN C. SIU, KRISTEN L. DROESCH, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20, which are all the claims pending and rejected in
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
communication systems. See generally Spec. 1. Claim 1 is exemplary:
1. A method, comprising:
receiving a request to access an item of content using a
communication system;
establishing a relationship between a first channel and a second
channel;
Appeal 2016-008265
Application 13/735,930
sending, at a faster rate than the item of content can be viewed on a
user device of the communication system, a first portion of the item of
content and a second portion of the item of content to a modem using the
communication system via the first channel and the second channel,
respectively, to enable, based on the faster rate, a trick mode for playback of
the item of content.
References and Rejections
Claims 1—20 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claims 1—34 of Quigley
(US 8,351,468 B2; issued Jan. 8, 2013).
Claims 1—18 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that applicant regards as the invention.
Claims 1—20 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Pullen (US 2005/0135419; A1 published June 23, 2005).
ANALYSIS
Non-Statutory Double Patenting
Because Appellant does not contest the merits of the
Examiner’s rejection, we summarily affirm the Examiner’s rejection
of claims 1—20 on the ground of non-statutory double patenting in
light of the claims of Quigley.
Indefmiteness
Each of claims 1—18 recites “a faster rate than the item of content can
be viewed on a user device of the communication system.” Claims 1—18.
The Examiner rejects claims 1—18 as being indefinite. See Ans. 3^4. In
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Application 13/735,930
particular, the Examiner determines the claimed “a faster rate than the item
of content can be viewed on a user device of the communication system” is
meaningless, because one skilled in the art would not understand what “the
item of content can be viewed on a user device” means. See Ans. 3^4; 10-
13.
We disagree. Claims must “particularly point[] out and distinctly
claim[] the subject matter which the applicant regards as his invention.”
35 U.S.C. § 112, second paragraph.
[W]e read § 112, |2 to require that a patent’s claims, viewed in
light of the specification and prosecution history, inform those
skilled in the art about the scope of the invention with
reasonable certainty. The definiteness requirement, so
understood, mandates clarity, while recognizing that absolute
precision is unattainable. The standard we adopt accords with
opinions of this Court stating that “the certainty which the law
requires in patents is not greater than is reasonable, having
regard to their subject-matter.”
Nautilus, Inc. v. Biosig Instruments, Inc, 134 S.Ct. 2120, 2129 (2014)
(citations omitted).
We agree with Appellant that in light of the Specification’s
description, one skilled in the art would understand the claim element “the
item of content can be viewed on a user device” means the playback rate.
See App. Br. 6—7; Reply Br. 4; Spec. 175. Further, we agree with Appellant
that in light of the Specification’s description, one skilled in the art would
understand the scope of the playback rate with reasonable certainty. See
App. Br. 5—7; Reply Br. 4; Spec. 67, 70, 75, 80. Therefore, we agree with
Appellant that, in light of the Specification’s description, one skilled in the
art would understand the scope of the claimed “a faster rate than the item of
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Application 13/735,930
content can be viewed on a user device” with reasonable certainty. See App.
Br. 5-7; Reply Br. 4; Spec. H 67, 70, 75, 80.
Accordingly, we reverse the Examiner’s indefiniteness rejection of
claims 1—18.
Anticipation1
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in finding Pullen discloses “sending ... a
first portion of the item of content and a second portion of the item of
content... to enable ... a trick mode for playback of the item of content,”
as recited in independent claim 1 (emphasis added). See App. Br. 8—12;
Reply Br. 4—8.
Initially, the Examiner cites Pullen’s Figures 1—2, and paragraphs 48—
50, and 53 for disclosing the disputed claim limitation. See Final Act. 4.
However, the Examiner does not specifically map or provide any finding
about the italicized claim limitation. See Final Act. 4. We have reviewed
the cited Pullen excerpts, and they do not discuss “sending ... a first portion
of the item of content and a second portion of the item of content... to
enable ... a trick mode for playback of the item of content,” as required by
the claim (emphasis added). In response to Appellant’s arguments, the
Examiner advances two theories:
1 Appellant raises additional arguments with respect to the anticipation
rejection. Because the identified issue is dispositive of the appeal, we do not
reach the additional arguments.
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Application 13/735,930
First, the Examiner asserts the italicized claim limitation merely states
an intended use or result, and does not constitute a patentable distinction.
See Ans. 13-14.
We disagree. “It is well settled that the recitation of a new intended
use for an old product does not make a claim to that old product patentable.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Claim 1 is a method—not a product—claim, and Schreiber’s intended-use
doctrine is inapplicable here. In any event, the Examiner has not established
why “sending ... a first portion of the item of content and a second portion
of the item of content... to enable ... a trick mode for playback of the item
of content” (emphasis added) merely constitutes intended use or result, and
should not have patentable weight. See Reply Br. 5—6. Further, the
Examiner’s unsupported assertion that “any method or apparatus capable of
‘ sending ... a first portion of [the] item of content and a second portion of
[the] item of the content’ . . . will meet this limitation” (Ans. 14) is
speculative and contradicts the requirement of the anticipation rejection. See
Reply Br. 8.
Second, the Examiner asserts Pullen is inherently capable of
performing trick mode, because a trick mode was known in the art, as
evidenced by U.S. Publication No. 2003/0043260A1. See Ans. 14—17.
It is well established that “[a] claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted). Inherency can only be established when “prior art necessarily
functions in accordance with, or includes, the claimed limitations.” In re
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Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
omitted).
Here, the Examiner cites no evidence for showing Pullen necessarily
discloses the italicized claim limitation. See Reply Br. 7. Further, the
Examiner’s unsupported assertion that Pullen is capable of performing the
trick mode—even if it is true—is insufficient to support the anticipation
rejection. See Reply Br. 8. Similarly, the Examiner’s assertion that the
claimed trick mode was known in the art is insufficient, as the Examiner
fails to show Pullen itself discloses the disputed claim limitation. See Reply
Br. 6.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner’s rejection of claim 1.
Each of independent claims 10 and 19 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 10 and
19. The Examiner states “the foregoing reason of rejection [regarding claim
1] is also applicable to claims 10 and 19.” Ans. 17. Therefore, for similar
reasons, we reverse the Examiner’s rejection of independent claims 10 and
19.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2—9, 11—18, and 20, which are rejected under the same anticipation
rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1—20 on the
ground of nonstatutory obviousness-type double patenting.
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We reverse the Examiner’s decision rejecting claims 1—18 under
35 U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision rejecting claims 1—20 under
35 U.S.C. § 102.
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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