Ex Parte Umapathy et al

Patent Trial and Appeal Board

Mar 16, 2018

12420615 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/420,615 04/08/2009
121363 7590 03/20/2018
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
Thangaraj Umapathy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
B956/ ADBS.208580 2815
EXAMINER
HUDA, MOHAMMED NURUL
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
mjjordan@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THANGARAJ UMAP ATHY, RICHARD TEO,
SUDHARASHAN SOMASUNDARAM, KAPIL RAJA DURGA,
AKSHAYAG, RAHURAMCG, SHYAMRAJAGOPALAN,
MIHIR GORE, MANDEEP SINGH, HEMANTHA SHARMA, and
PRIYESH KUMAR
Appeal2017-009321
Application 12/420,615 1
Technology Center 2100
Before BRADLEY W. BAUMEISTER, BETH Z. SHAW, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-9 and 11-39. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Adobe Systems Incorporated as the real party in
interest. App. Br. 4.
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Application 12/420,615
STATEMENT OF THE CASE
THE INVENTION
According to Appellants, the invention relates generally to "[ m ]ethods
and systems to install a player to process content data." Abstract.
Exemplary independent claim 1 is reproduced below with the disputed
limitations emphasized.
1. A method comprising:
receiving a file package, the file package comprzszng
content data, a content access manager, and metadata, the
content data including content for presentation to a user, the
metadata comprising information specifying one or more
compatible players capable of processing the content data for
presentation of the content to the user; and
launching the content access manager to enable processing
of the content data via a machine, the content access manager to:
read the compatible player information from the
metadata,
determine whether a compatible player capable of
processing the content data is currently installed on the
machine based on the compatible player information
specified by the metadata and a look up of player types
currently installed on the machine, and
install the compatible player specified by the
metadata on the machine when the compatible player is
not currently installed on the machine.
REFERENCES AND REJECTIONS
1. Claims 1-3, 7-9, 11-28, and 31-36 stand rejected under
35 U.S.C. § 102(e) as anticpated by Skinner (US 2010/0070533 Al, XX).
Final Act. 5-29.
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2. Claims 4-6 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Skinner, and Perpinaya (US 2009/0186575 Al, July 23,
2009). Final Act. 29-39.
3. Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Skinner and Tunmer (US 2007/0300217 Al, Dec. 27,
2007). Final Act. 39--40.
4. Claim 37 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Skinner and Orleth (US 2004/0215754 Al, Oct. 28,
2004). Final Act. 40--43.
5. Claim 38 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Skinner, Orleth, and Nir (US 2002/0147735 Al, Oct. 10,
2002). Final Act. 43--44.
6. Claim 39 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Skinner, Orleth, and Savoldi et al., Symbian Forensics: An
Overview, Intelligent Information Hiding and Multimedia Signal Processing,
2008. Final Act. 44--48.
ANALYSIS
File Package Comprising a Content Access Manager
Claim 1 recites "receiving a file package, the file package comprising
content data, a content access manager, and metadata." Appellants argue
"Skinner's webpage product does not include a content access manager, but
rather is simply a list or grouping of files or other products." App. Br. 21.
According to Appellants, "the functions ... cited as corresponding to the
operations of the content manager are performed by the server that publishes
or hosts the product-not by a content access manager that is included in the
product." App. Br. 22.
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Application 12/420,615
The Examiner responds that "the claim [ 1] does not require the file
package to comprise: content data, a content access manager, and metadata"
and instead only requires receiving a file package that comprises content
data, receiving a content access manager, and receiving metadata. In other
words, the Examiner interprets the file package as only requiring content
data, but not a content access manager or metadata, which, under the
Examiner's interpretation, may be received separate from the file package.
Under this interpretation, the Examiner finds Skinner discloses
receiving a file package consisting of Skinner's file list. Ans. 54. The
Examiner finds "Skinner's teaching that access to a file is provided upon
access of the product inherently implies that the product comprises a content
access manager." Ans. 54 (citing Skinner Fig. 7).
We agree with Appellants that the Examiner's interpretation is
unreasonably broad in light of the Specification. The Specification makes
clear that "in an example embodiment, a content access manager will be
packaged with the content data." Spec. ,-i 24. Similarly, the Specification
explains that "the content data 128 will be combined with a content access
manager 132 (Figure 1) to form a package 126. In other embodiments, the
generated metadata 130 will also be included in the package 126." Spec.
,-i 30; see also Spec. ,-i 34 ("The package 250 may include content data 252
that is to be processed, metadata 254, and a content access manager 256."),
Figs. 1 and 2B.
Although embodiments are typically not read into the claims, in this
instance every embodiment of the invention is described in the Specification
as including a file package comprising content data and a content access
manager. Hence, we find an interpretation of the phrase "the file package
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comprising content data, a content access manager, and metadata" that does
not require the file package to comprise a content access manager to be
unreasonably broad.
Because the Examiner has not found that Skinner's file package
comprises a content access manager, we do not sustain the Examiner's
rejection of independent claim 1, or of independent claims 9, 23, 28, and 29
and their pending dependent claims, which contain substantially similar
limitations.
Install the Compatible Player
Claim 28 recites a "content access manager configured to: ... install
the compatible player specified by the metadata on the machine when the
compatible player is not currently installed on the machine." The Examiner
finds "if it is determined [in Skinner] that the user or the user's browser
lacks a proper player, the user is instructed to install a compatible player
before accessing the file . . . . Skinner's teaching that the user is instructed
to install a compatible player starts the process of installing a compatible
player and that the process of installing ends after the user installs the
player." Ans. 51.
Appellants argue
Skinner's process of instructing the user to install a player is
different than "install the compatible player specified by the
metadata on the machine when the compatible player is not
currently installed on the machine" as recited in claims 1 and 28.
First, on its face instructing a user to install a player, as disclosed
by Skinner is not equivalent to "install the compatible player."
Second, to the extent Skinner discloses metadata by including
"file type and/or format" information, this metadata does not
"specif[y ]" a "compatible player," as recited in claims 1 and 28.
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Thus, Skinner cannot install a compatible player if a compatible
player is not even specified.
App. Br. 20.
We disagree with the Examiner that instructing the user to install a
compatible player reasonably may be interpreted to mean that a content
access manager is configured to install the compatible player. Claims 1 and
9, however, condition the step of installing a compatible player "when the
compatible player is not currently installed on the machine." App. Br. 2, 4
(emphasis added). We interpret these limitations as conditional limitations
that do not limit the claim. Ex Parte Schulhauser, Appeal 2013-007847,
(PTAB Apr. 28, 2016) (precedential). As such, Appellants' argument
regarding the "install" steps of claims 1 and 9 is not persuasive as to those
claims. Schulahuser, however, does not apply to the other independent
claims because they are recited as either apparatus claims or specify that the
content access manager be configured to perform the step of installing a
compatible player. Thus, Appellants' argument regarding the "install" step
is persuasive as to claims 15, 17, 23, 28, and 29.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 28 or of independent claims 15, 17, 23 and 29, and their
pending dependent claims, which contain substantially similar limitations.
DECISION
The Examiner's rejection of claims 1-9 and 11-39 is reversed.
REVERSED
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