Roovy, Inc.

Patent Trials and Appeals Board

Mar 30, 2022

2021001549 (P.T.A.B. Mar. 30, 2022)

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. 14/804,320 07/20/2015 Touradj Barman R1899.10004US03 6239 145627 7590 03/30/2022 Sanders IP Law 240 N. East Promontory Suite 200 Farmington, UT 84025 EXAMINER VY, HUNG T ART UNIT PAPER NUMBER 2163 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): docket@sandersiplaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ADAM SCOTT, HENRY GEORGE WEI, and MICHAEL PALMER ____________ Appeal 2021-001549 Application 14/804,320 Technology Center 2100 ____________ Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and BRADLEY W. BAUMEISTER, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3. Claims 4-6, 12, and 14-19 are canceled. Claims 7-11 and 13 are withdrawn from consideration. See Claims App.; see also Final Act. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as Roovy, Inc. Appeal Br. 3. Appeal 2021-001549 Application 14/804,320 2 The present invention relates generally to creating and displaying media resources. See Spec. Abstr. Claim 1, reproduced below, is representative: 1. A method for creating and displaying media items, the method comprising: receiving a first media item from a first client; storing the first media item in a first storage location; receiving a link to a second media item located at a remote location; storing the link to the second media item in a second storage location; organizing the first media item into a mixed media file system including the first media item; organizing the second media item into the mixed media file system including the link to the second media item; creating a visual representation of the mixed media file system that includes a representation of the first media item and a representation of the second media item, wherein the representation of the first media item and the representation of the second media item are not distinguishable based on the difference in the first storage location of the first media item and the second storage location of the second media item; and displaying the visual representation of the file management system on the first client. REFERENCES The references relied upon by the Examiner are: Name Reference Date Karim US 2011/0173214 A1 July 14, 2011 Yamagishi US 2016/0255417 A1 Sept. 1, 2016 Appeal 2021-001549 Application 14/804,320 3 REJECTIONS R1. Claims 1 and 2 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Karim. Final Act. 5-7. R2. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Karim and Yamagishi. Final Act. 7-8. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Rejection under § 102 of Claims 1 and 2 Appellant contends that “the Office Action appears to pick and choose multiple, distinct teachings from different embodiments to frame the anticipation rejection” (Appeal Br. 8) because “[s]ome recitations of claim 1 are disclosed under the ‘User Interface’ embodiment, others are disclosed under the ‘Exemplary Hardware Environment’ embodiment, and yet others are disclosed in the ‘Summary.’” Id. Appellant highlights that “the first paragraph of the User Interface section notes that there are at least seven exemplary embodiments of the user interface” (Reply Br. 2), and the Examiner “fail[s] to point out which of these various embodiments are related to the other portions of the reference relied upon in the anticipation rejection.” Id. In other words, Appellant contends that the Examiner is improperly using multiple embodiments to establish anticipation. We disagree with Appellant. Although Appellant is correct that to establish anticipation, the claimed subject matter must be met by the disclosure of a single embodiment in the disclosure, not by a combination of different Appeal 2021-001549 Application 14/804,320 4 embodiments (see Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)), we are not persuaded by Appellant’s arguments that the Examiner erred. First, the law of anticipation where multiple embodiments are disclosed in a reference is not as constrained as Appellant argues. We agree with Appellant that the general rule is that to anticipate a claimed invention, a prior art reference must “disclose all elements of the claim within the four corners of the document,” and it must “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc., 545 F.3d at 1369 (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Our reviewing court has, however, recognized the following exception to this rule: “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (alteration in original) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” (citing Kennametal, 780 F.3d at 1383)). These standards for proving anticipation were recently cited approvingly in Microsoft Corporation v. Biscotti Inc., 878 F.3d 1052, 1068- 69 (Fed. Cir. 2017). See also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1342-44 (Fed. Cir. 2016) (affirming a finding of anticipation, and Appeal 2021-001549 Application 14/804,320 5 distinguishing NetMoneyIN, where the reference “explicitly contemplate[d]” that disclosed functionalities could be combined in a single embodiment, despite not having “an express discussion of the actual combination”); WM. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir. 2012) (finding that a prior art reference anticipated the claim at issue as the reference envisioned using the claimed components in a single product). In essence, the Examiner finds, and we agree, that Karim envisions using the claimed components in a single product. For example, the Examiner finds that Karim’s “[F]ig. 1 illustrates the ‘various potential actors, dataflow, software and hardware for an exemplary web service embodiment” (Ans. 3) and finds that “the interface is [a] sub-component of the system.” Id. at 3-4. Specifically, in Karim: FIG. 1 illustrates an exemplary use case 100 of the data association and retrieval facility. Use case 100 is comprised of: (1) uses cases for media capture 110, including, but not limited to, storing the captured media to a web site 120, (2) authoring actions on the captured media, including, but not limited to, linking or associating data to the captured media, and editing the captured media and the associated data; (3) distributing and publishing the captured media and associated data; (4) moderating the sites where the captured media and associated data were distributed or published; and (5) consumption of the captured media and associated data by an end user or process. Karim ¶ 39. Karim also discloses “FIGS. 9, 10, 11, 12, 13, 14, and 15 describe some exemplary embodiments. . . . FIG. 15 illustrates an exemplary user interface for browsing and authoring 1500.” Karim ¶ 150; see also ¶¶ 177-179. Appeal 2021-001549 Application 14/804,320 6 In other words, Karim discloses a data association and retrieval facility that includes various components, one of which is a user interface. Although Appellant highlights that “there are at least seven exemplary embodiments of the user interface” (Reply Br. 2), the Final Action only cites to one particular embodiment, i.e., the interface for browsing/authoring shown in Fig. 15. See Final Act. 5-6. As such, we find that Karim teaches that the cited components or specific functionalities may be combined and one of skill in the art would be able to implement the combination, despite not having an express discussion of the actual combination. Accordingly, we sustain the Examiner’s rejection of claims 1 and 2. Rejection under § 103 of claim 3 Because Appellant has not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1 above, claim 3 falls therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2013). CONCLUSION The Examiner’s rejection of claims 1 and 2 as being anticipated under 35 U.S.C. § 102 is affirmed. The Examiner’s rejection of claim 3 as being unpatentable under 35 U.S.C. § 103 is affirmed. Appeal 2021-001549 Application 14/804,320 7 In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 102 Karim 1, 2 3 103 Karim, Yamagishi 3 Overall Outcome 1-3 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2013). AFFIRMED