Ex Parte Weber et al

Patent Trial and Appeal Board

Jul 18, 2016

13604512 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/604,512 09/05/2012
24498 7590 07/20/2016
Robert D, Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Barry Jay Weber
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.
PU020502-US-CONT1 3432
EXAMINER
OHBA, MELLISSA M
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY JAY WEBER, JENNIFER LYNN KOLAR,
and RAJEEV MADHUKAR SAHASRABUDHE
Appeal2015-002307
Application 13/604,512 1
Technology Center 2100
Before MAHSHID D. SAADAT, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is THOMSON
Licensing S.A. App. Br. 2.
Appeal2015-002307
Application 13/604,512
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed "invention relates generally to
computer related information search and retrieval, and more specifically to
use of a control device for enabling the search for a media services available
through a communications network." Spec. i-f 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis and labeling added to contested limitations):
1. A method for conducting a search using a
computer comprising the steps of:
formulating a search query in response to the selection of
a rendered media service by a user for a search operation;
[L 1] automatically selecting a first and a second
metadata fields from a plurality of metadata fields for a search
in response to a type of said media service being used for said
search operation;
[L2] automatically using at least one keyword associated
with metadata of said rendered media service to search said
first and second metadata field in a database; and
a search result returned from searching said first
metadata field is assigned a higher ranking than a search result
returned from searching said second metadata field when
searching for a media service.
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Sept. 5, 2014); Examiner's Answer ("Ans.," mailed Sept. 26, 2014); Final
Office Action ("Final Act.," mailed Jan. 6, 2014); and the original
Specification ("Spec.," filed Sept. 5, 2012). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
2
Appeal2015-002307
Application 13/604,512
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Eyal US 6,735,628 B2
Pant et al. ("Pant") US 6,012,053
May 11, 2004
Jan.4,2000
Mei et al. ("Mei") US 2009/0006368 Al Jan. 1, 2009
Rejections on Appeal
RI. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Mei and Pant. Final Act. 2; Ans. 2.
R2. Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Mei, Pant, and Eyal. Final Act. 4; Ans. 2.
CLAIM GROUPING
Based on Appellants' arguments (Br. 3---6), we decide the appeal of
obviousness Rejection RI of claims 1 and 2 on the basis of representative
claim 1.
Remaining claims 3-5 in Rejection R2, not argued separately, stand or
fall with the independent claim 1 from which they ultimately depend. 3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
3
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Application 13/604,512
ISSUE
Appellants argue (Br. 3---6) the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a) as being obvious over the combination of Mei and Pant is
in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, limitations LI and L2, as
recited in claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-5,
and we incorporate herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 1 for
emphasis as follows.
§ 103(a) Rejection RI of Claims 1and2
Appellants state, " [ e ]xamples of the claimed invention are described
with reference to FIG. 4 and Table 3 of Appellants' specification ... [and
a]ccording to these exemplary embodiments ... [non-limiting attributes may
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Appeal2015-002307
Application 13/604,512
be ascribed to our invention]." Br. 4. Further Appellants generally contend
"[n]either Mei nor Pant, whether taken individually or in combination,
discloses or suggests each and every feature of the claimed invention,
including at least [limitations LI and L2] of claim 1." Br. 5. Additionally,
Appellants generalize:
[The] teachings of Mei are very different from the claimed
methodology of selecting first and second metadata fields from
among a plurality of metadata fields in response to a type of
selected media service, and then using at least one keyword
associated with metadata of the selected media service to search
the selected first and second metadata fields in a database.
Id. Therefore, Appellants argue, Mei does not teach or suggest limitations
L 1 and L2 of claim 1. Id.
We find the Examiner has mapped each limitation of claim 1 with
specificity to the cited prior art, particularly contested limitations L 1 and L2.
Final Act. 2--4; and see Ans. 3-7. We find the Examiner has construed each
argued limitation using a broad but reasonable interpretation, and note
Appellants have not cited to a definition of "metadata" or "type ... of media
service" in the Specification that would preclude the Examiner's broader
reading. 4 Ans. 7.
4 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
5
Appeal2015-002307
Application 13/604,512
We agree with the Examiner's finding that the combination of Mei and
Pant teaches or at least suggests Appellants' claimed method. We are not
persuaded by Appellants because, as our reviewing court has held, "the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Appellants'
assertions amount to unsupported attorney argument, and therefore we give
them little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Thus, we do not find Appellants' arguments to be persuasive.
As previously noted, Appellants have not rebutted the Examiner's
factual findings and legal conclusions of obviousness by filing a Reply
Brief.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness Rejection RI of independent claim 1, and grouped
claim 2 which falls therewith. See Claim Grouping, supra.
§ 103(a) Rejection R2 of Claims 3-5
In view of the lack of any substantive or separate arguments directed
to the obviousness Rejection R2 of claims 3-5 under§ 103 (see Br. 6), we
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sustain the Examiner's rejection of these claims. We deem arguments not
made waived. 5
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 1-5 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-5.
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
5 Appellants merely argue, "Eyal is unable to cure the deficiencies of the
proposed combination of Mei and Pant discussed above in connection with
independent claim 1 (from which claims 3-5 ultimately depend)." Br. 6.
7