Ex Parte Steele et al

Patent Trial and Appeal Board

Mar 8, 2017

13097867 (P.T.A.B. Mar. 8, 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.
13/097,867 04/29/2011 Jay David STEELE 41026-US-PAT
(RIM.0004US)
7417
11710 7590 03/10/2017
Trnr> Primer Rr Hn P P
EXAMINER
1616 S. Voss Rd., Suite 750
Houston, TX 77057
HASAN, SYED HAROON
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY DAVID STEELE, NIRANJAN MAYYA,
and MOHAN KRISHNA RAO
Appeal 2016-001892
Application 13/097,867
Technology Center 2100
Before BRUCE R. WINSOR, JOSEPH P. LENTIVECH, and
AMBER L. HAGY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 2, 4—18, 20, 22, 23, and 26—31, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 3, 19, 21, 24, and 25 are cancelled. App. Br. i (Claims App’x).
We affirm-in-part.
1 The real party in interest identified by Appellants is Blackberry Limited.
App. Br. 1.
Appeal 2016-001892
Application 13/097,867
STATEMENT OF THE CASE
Appellants’ disclosed invention relates to “Providing Syndicated
Content Associated with a Link in Received Data.” Spec. 1 (title). Claim 1,
which is illustrative, reads as follows:
1. A method of a first device, comprising:
receiving data over a network from a second device,
where the data contains a link identifying a particular web page;
accessing a repository of syndicated content items
associated with respective web pages to locate a particular
syndicated content item associated with the particular web page
identified by the link, the repository mapping the syndicated
content items to the respective web pages, the syndicated
content items being according to a syndicated content format;
and
if the particular syndicated content item associated with
the particular web page is in the repository, retrieving the
particular syndicated content item according to the syndicated
content format from the repository, and sending the retrieved
particular syndicated content item to a third device for display
at the third device, wherein the first, second, and third devices
are separate devices.
The Examiner relies on the following prior art in rejecting the claims:
Diab et al. US 2006/0230021 A1 Oct. 12, 2006
Moore US 2006/0265489 Al Nov. 23, 2006
Ben Asher et al. US 2008/0098010 Al Apr. 24, 2008
Lunatietal. US 2009/0005087 Al Jan. 1,2009
“Pipes” (hereinafter “Yahoo Pipes”), accessed July 9, 2014, available
at:
https://web.archive.Org/web/20090227021344/http://pipes.
yahoo.com/pipes (1 page (1/1)) (numbered 1);
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Appeal 2016-001892
Application 13/097,867
https://web.archive.org/web/2009022717431 l/http://pipes.
yahoo.com/docs?doc=editor (1 page (1/2)) (numbered 2);
https://web.archive.Org/web/20090316153152/http://pipes.
yahoo.com/ docs?doc=overview (1 page (1/1)) (numbered 3);
https://web.archive.Org/web/20090227013622/http://pipes.
yahoo.com/ docs?doc=sources (7 pages (1/1—7/7)) (numbered
4—10); and
https://web.archive.org/web/ 20090227013622/http://pipes.
yahoo.com/ docs?doc=overview (1 page (1/1)) (numbered 11).
Claims 1, 2, 4—18, 20, 22, 23, and 26—31 stand rejected under
35U.S.C. § 112, first paragraph,2 as failing to comply with the written
description requirement. See Final Act. 2—3.
Claims 1, 2, 4, 5, 13, 15, 16, 23, 26, and 313 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Yahoo Pipes and Diab. See
Final Act. 5—10.
Claims 9—11, 17, 27, 28, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Yahoo Pipes, Diab, and Lunati. See
Final Act. 5, 10—13.
Claims 18 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moore, Yahoo Pipes, and Diab. See Final Act. 13—16.
2 Rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011. See, e.g.,
Final Act 2, 3.
3 The Examiner includes claims 9—11, 17, 27, 28, and 30 in the summary
ground of rejection for the rejection over Yahoo Pipes and Diab and in the
summary ground of rejection for the rejection over Yahoo Pipes, Diab, and
Lunati. Compare Final Act. 5, with id. at 10. However, the detailed ground
of rejection articulated by the Examiner rejects claim 9—11, 17, 27, 28, and
30 over Yahoo Pipes, Diab, and Lunati. See Final Act. 10-13; see also App.
Br. 5, n. 1. We treat this inconsistency as a clerical or typographical error.
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Application 13/097,867
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moore, Yahoo Pipes, Diab, and Lunati. See Final Act. 13,
16- 17.
Claims 6—8, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yahoo Pipes, Diab, and Moore. See Final Act. 5,
17- 22.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moore, Yahoo Pipes, Diab, and Ben Asher. See Final
Act. 13,22.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed May 13, 2015; “Reply Br.” filed Nov. 30, 2015) and the
Specification (“Spec.” filed Apr. 29, 2011) for the positions of Appellants
and the Final Office Action (“Final Act.” mailed Dec. 16, 2014) and Answer
(“Ans.” mailed Sept. 29, 2015) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Appeal 2016-001892
Application 13/097,867
ISSUES
The dispositive issues4 presented by Appellants’ arguments are as
follows:
Does the Examiner err in finding the phrase “retrieving the particular
syndicated content item according to the syndicated content format from the
repository,” as recited in claim 1, is unsupported by Appellants’ written
description?
Does the Examiner err in finding Diab, when combined with Yahoo
Pipes, teaches or suggest “a repository of syndicated content items,” as
recited in claim 1 ?
ANALYSIS
Rejection under 35 U.S.C. § 112, 1st paragraph
The Examiner finds the phrase “retrieving the particular syndicated
content item according to the syndicated content format from the
repository,” as recited in claim 1, is not supported by Appellants’
Specification because the Specification “do[es] not describe how syndicated
content items must be retrieved (or sent/received) from the repository (e.g.
according to the syndicated content format).” Final Act. 3 (emphases
omitted). The Examiner explains “[t]he language . . . clearly requires that
the retrieval is in accordance to something. The claimed ‘according to . . .’
modifier clause results in the claimed retrieval step being modified more
narrowly than its description in the rSlpecification.” Ans. 3.
4 Appellants’ arguments present additional issues. However, because the
identified issues are dispositive of the appeal, we do not reach the additional
issues.
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Application 13/097,867
Appellants contend as follows:
As introduced in lines [6—75] of claim 1 [(App. Br. i (Claims
App’x))], the syndicated content items in the repository are
according to a syndicated content format. At lines [9—10] of
claim 1, the particular syndicate content item according to the
syndicated content format is retrieved from the repository. Thus,
the retrieval of the particular syndicated content item in claim 1
is not according to the syndicated content format. Rather, claim
1 recites that the particular syndicated content item according to
the syndicated content format is retrieved from the repository, if
the particular syndicated content item associated with the
particular web page is in the repository.
Ans. 6—7.
We agree with the Examiner. The language at lines 6—7 of claim 1
(App. Br. i (Claims App’x)) recites “the syndicated content items being
according to a syndicated content format” (emphasis added). The verb
“being” making it clear, in plain English, that “according to a syndicated
content format” describes a quality of the “syndicated content item,” i.e., it
is an adjective phrase. We agree with Appellants that the Specification
supports a “syndicated content item” that is “according to a syndicated
content format.” See App. Br. 5—7 (citing Spec. Tfl[ 7, 9—10, 14—15, 31, 34—
37, Fig. 4). In contrast, however, the plain English grammatical reading of
the phrase at lines 9—10 of claim 1 {id.), “retrieving the particular syndicated
content item according to the syndicated content format,” indicates that
“according to the syndicated content format” is a quality of “retrieving the
particular syndicated content item,” i.e., it is an adverb phrase. That the
“according to” phrase at lines 9—10 {id.) does not modify the “content item”
5 In this opinion we refer to the line numbers of the claims as they appear in
the Claims Appendix of the Appeal Brief.
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Application 13/097,867
is reinforced by its absence from the recitations of the “syndicated content
item” at lines 8 and 10 of claim 1 (id.). Appellants do not point to any
passage of the Specification that discloses that the act of retrieving the
syndicated content item is performed in accordance with the syndicated
content format.
Accordingly, Appellants have not persuaded us the Examiner erred in
rejecting claim 1 as unsupported by the written description of Appellants’
Specification. We sustain the rejection for lack of written description
support of claim 1 and claims 2, 4—12, 26, 27, and 31, which depend,
directly or indirectly, from claim 1 and incorporate the unsupported
language of claim 1.
The Examiner finds “all other claims contain analogous subject
matter, or are dependent claims” and rejects them on the same basis as claim
1. Final Act 3. With regard to independent claim 13, the recitations of the
claim are substantially the same as the corresponding recitations of claim 1.
See App. Br. iii (Claims App’x) (Claim 13,11. 7—8, 10-11). Therefore, for
the reasons set forth supra, we agree with the Examiner and sustain the
rejection for lack of written description support of claim 13 and claims 14—
17 and 28, which depend from claim 13 and incorporate the unsupported
language of claim 13.
With regard to independent claims 18 and 23, every reference to a
“syndicated content format” recites “the syndicated content items being
according to a [or the] syndicated content item format” (emphasis added).
See App. Br. v (Claims App’x) (Claim 18,11. 8—9, 12); id. at vi (Claim 23,11.
7—8, 10-11). As discussed supra regarding claim 1, we agree with
Appellants that the Specification supports a “syndicated content item” that is
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Application 13/097,867
“according to a syndicated content format.” Therefore, we do not sustain the
rejection for lack of written description support of independent claims 18
and 23, and claims 20, 22, 29, and 30, which variously depend from claims
18 and 23.
Rejections under 35 U.S.C. § 103(a)
The Examiner finds Diab, when combined with Yahoo Pipes, teaches
“a repository of syndicated content items,” as recited in claim 1. Final Act.
5—6 (citing Diab 10, 38-41, 59). The Examiner maps the “repository of
syndicated content items” to Diab’s “searchable index of syndication feeds”
(Diab 110). Final Act. 6 (“an index (repository) [of] RSS feeds”).
Appellants contend as follows:
According to claim 1, the retrieved particular syndicated
content item as retrieved from the repository of syndicated
content items is sent to a third device for display at the third
device. Thus, the particular syndicated content item retrieved
from the repository and sent to the third device includes the
actual syndicated content. In contrast, the page index of Diab
includes just the identifier of the syndicated content.
App. Br. 10; see also Reply Br. 6—7.
We agree with Appellants for the reasons stated by Appellants. We
find an index of syndicated content items does not teach or suggest a
repository of syndicated content items. We are mindful that Diab does teach
that the index may include “pages.” Diab 1 38. However, as pointed out by
Appellants, “[t]hese pages are web pages, and thus not the syndicated
content items of claim 1.” App. Br. 10. Similarly, Diab discloses “storing]
an identifier for any such RSS[6] feed in association with the URL[7] for the
6 Really Simple Syndication. Spec. 17.
7 Uniform Resource Locator. Spec. 13.
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Appeal 2016-001892
Application 13/097,867
page or site in page index 170 or in a separate index of RSS feeds.” Diab
If 41. We agree with Appellants that “there is no indication that the page
index contains the actual RSS feed itself.” App. Br. 10.
Appellants persuade us of error in the rejection under § 103(a) of
claim 1. Accordingly, we do not sustain the rejections under § 103(a) of
(1) claim 1; (2) independent claims 13, 18, and 23, which recite limitations
substantially similar to the “a repository of syndicated content items;” and
(3) claims 2, 4—12, 14—17, 20, 22, and 26—31, which variously depend,
directly or indirectly, from claims 1, 13, 18, and 23.
DECISION
The decision of the Examiner to reject claims 1, 2, 4—17, 26—28, and
31 under 35 U.S.C. § 112, first paragraph, is affirmed.
The decision of the Examiner to reject claims 18, 20, 22, 23, 29, and
30 under 35 U.S.C. § 112, first paragraph, is reversed.
The decision of the Examiner to reject claims 1, 2, 4—18, 20, 22, 23,
and 26—31 under 35 U.S.C. § 103(a) is reversed.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED-IN-PART
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