Texas Instruments Incorporated

Patent Trials and Appeals Board

Sep 3, 2020

2019006553 (P.T.A.B. Sep. 3, 2020)

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.
14/817,020 08/03/2015 Leonardo William Estevez TI-67859A 3680
23494 7590 09/03/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, MS 3999
DALLAS, TX 75265
EXAMINER
LIAO, JASON G
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LEONARDO WILLIAM ESTEVEZ and BENZY GABAY
____________________

Appeal 2019-006553
Application 14/817,020
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
CARL L. SILVERMAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 21, 24 through 33, 37, and 38. Claims 1–20, 22, 23,
and 34–36 are canceled. We have jurisdiction 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(a). According to Appellant, Texas Instruments Incorporated is the
real party-in-interest. Appeal Br. 2.
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Application 14/817,020
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CLAIMED SUBJECT MATTER
The claims are directed to a computer device configured to download
media from an external source through a secure network connection. The
computer device also includes a memory configured to store the downloaded
content, and a media profiling engine which queries the memory for the
downloaded content and generates a media profile log comprising
information relevant to the downloaded content. Specification ¶ 4. Claim 21
is reproduced below.
21. A computing device comprising
a network interface configured to invoke a secure
network connection and to download media content via the
secure network connection;
a memory that stores program instructions, a media
profile log, and the downloaded media content; and
a processor configured to execute the program
instructions stored in the memory to cause the computing
device to:
detect the invocation of the secure network
connection as a download condition to enable
downloading of the media content via the secure network
connection, the downloading of the media content being
enabled as a result of the download condition being
detected;
after downloading the media content, query the
memory to identify the downloaded media content based
on a query condition, the query condition being a
condition upon which the querying is based;
after identifying the downloaded media content,
analyze the downloaded media content to identify at least
one property of the downloaded media content;
update the media profile log to include the at least
one identified property of the downloaded media content,
the at least one identified property including one or more
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of an address of an external source from where the
downloaded media content was downloaded, a file name
of the downloaded media content, a file extension of the
downloaded media content, a file size associated with the
downloaded media content, an access time associated
with the downloaded media content, and metadata of the
downloaded media content;
send the media profile log from the computing
device to an external device as a push request using the
network interface; and
receive information from the external device in
response to the push request, the received information
being based upon the media profile log.
REJECTIONS2
The Examiner rejected claims 27, 32 and 38 under 35 U.S.C. § 112, ¶
4, for failing to further limit the subject matter of the claim upon which it
depends. Final Act. 6–8.
The Examiner rejected claims 21, 27, 29, 30 through 34, 37, and 38
under 35 U.S.C. § 103 as unpatentable over the combined teachings of
Lamkin (US 2006/0159109 A1; July 20, 2006)3 and Issa (US 2010/0015975
A1; Jan. 21, 2010). Final Act. 8–19.
The Examiner rejected claim 24 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Lamkin, Issa, and Starfield
Technologies - Frequently Asked Questions
(https://web.archive.org/web/20040903011104/https://products.secureserver.

2 Throughout this Decision we refer to the Appeal Brief filed April 3, 2019
(“Appeal Br.”); Final Office Action mailed July 6, 2018 (“Final Act.”); and
the Examiner’s Answer mailed May 31, 2019 (“Ans.”).
3 Lamkin (US 2006/0159109 A1; July 20, 2006) is a Continuation In Part
(CIP) of Lamkin (US 2004/0220926 A1; Nov. 4, 2004)
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net/products/faq_secureturbo.htm) (hereinafter Starfield). Final Act. 19–20.
The Examiner rejected claims 25, 26, and 28 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Lamkin, Issa, and Windows
XP. Final Act. 20–22.
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of claims 27, 32, and 38 under 35 U.S.C. § 112.
However, Appellant’s arguments have not persuaded us of error in the
Examiner’s rejections of all the claims under 35 U.S.C. § 103.
Rejection based upon 35 U.S.C. § 112, ¶ 4
The Examiner finds that claim 27, which depends upon claim 21,
“contains a further limitation of ‘the at least one identified property’
followed by a list of properties” and that limitation is entirely directed to
non-functional descriptive material and as such does not further limit the
claim. Final Act. 7. With respect to claims 32 and 38 the Examiner finds
the recitation that the downloaded media content comprises audio content,
video content or executable software, is reciting non-functional descriptive
material and as such does not further limit the independent claims from
which they depend. Final Act. 7–8.
Appellant argues that the Examiner’s 35 U.S.C. § 112, ¶ 4 rejection is
in error. Appeal Br. 8 through 12. Appellant argue:
Claim 21 recites identifying at least one property of the
downloaded media content. Clearly, the scope of the quantity
“at least one” includes all quantities greater than and including
one. Claim 27, depends from claim 21 and further limits the at
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least one property to requiring two or more such properties.
Thus, the scope of claim 27 excludes the identification of only a
single (e.g., one) property of the downloaded media content
and, hence, is indeed further limiting.
Appeal Br. 8. Further, with respect to claims 32 and 38, Appellant asserts
that they recite limitations directed to the downloaded media content being
“one of audio content, video content, or software content” thus limiting “the
scope of the downloaded media content to one of these three recited types.”
Appeal Br. 8.
Appellant’s augments have persuaded us of error in the Examiner’s
rejection under 35 U.S.C. § 112, ¶ 4. As an initial matter, we disagree with
the Examiner’s statement that the Appellant did not argue and waived
arguments directed to the rejection of claims 32 and 38. Ans. 4. As
identified above, the Appellant did address claims 32 and 38. Further, we
disagree with the Examiner that claim 27 does not further limit claim 21.
Regardless of whether the properties recited in claim 27 are non-functional
descriptive material (NFDM), as argued by Appellant, the broadest
reasonable interpretation of claim 21 is that there is only one property of the
downloaded media content that is discovered and included in the updated
log. Claim 27 modifies claim 21 to recite that there are “two or more
identified properties”, and thus claim 27 is narrower than claim 21.
Accordingly, we do not sustain the Examiner’s rejection of claim 27 under
35 U.S.C. § 112, ¶ 4
With respect to claims 32 and 38 each of these claims recite “wherein
the downloaded media content comprises audio content, video content, or
executable software.” We consider this claim language to further limit the
claimed “downloaded media content” to include at least one of these three
types. The claim recitation of “comprises audio content, video content, or
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executable software” merely means that the media content may also include
other types of content. To the extent that audio and video content intended
for human perception is NFDM, we conclude at least “executable software”
is intended to be functional descriptive material, i.e., consisting of code
intended to be executed by a processor.4 Accordingly, we consider claims
32 and 38 to further limit the independent claims from which they depend
for at least this reason (i.e., executable code that is intended to be functional
descriptive material). As such we do not sustain the Examiner’s rejection of
claims 32 and 38 under 35 U.S.C. § 112, ¶ 4.
Rejection of independent claim 21 under 35 U.S.C. § 103
Appellant argues that the combination of Lamkin, and Issa do not
teach the claim 21 limitation directed to querying the memory of the
electronic device to identify the downloaded media content. Appeal Br. 14–
16. Specifically, Appellant argues that Lamkin, which the Examiner relies
upon to teach this feature, teaches that “the query is not of memory of the
computing device, but rather of memory of an external device (e.g., the
server on which the files are located).” Appeal Br. 15–16. Further,
Appellant’s argue that
Lamkin does indicate that in some instances, the client

4 See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential)
(“[T]he nature of the information being manipulated does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.”). Further guidance regarding NFDM is found in the MPEP:
“[W]here the claim as a whole is directed to conveying a message or
meaning to a human reader independent of the intended computer system,
and/or the computer-readable medium merely serves as a support for
information or data, no functional relationship exists.” MPEP § 2111.05
(III.).

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device could download the listing contained in the CDS from
the server, and then perform the query locally. However, in
such a case, even if this is a query of memory of the computing
device, the query is not for media content that was downloaded
to the computing device prior to the query, as the media content
was downloaded to an external device (e.g., the server).
Appeal Br. 16 (emphasis omitted).
The Examiner responds to Appellant’s arguments by stating that while
one embodiment of Lamkin teaches the client (equated to the claimed
computing device) and the server are separate devices, Lamkin also teaches
that one device may be both the server and client. Ans. 13 (citing Lamkin ¶
49). Further, regarding the query the Examiner cites to Lamkin ¶ ¶ 103–104
as teaching a query when new content is added to a device and ¶ 95 as
teaching that information can be added by downloading. Ans. 15.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. Appellant’s augments in the Appeal Brief are
premised upon Lamkin not teaching the claimed query in memory as the
client and server are different devices, and not that they are on the same
device as found by the Examiner. Appellant’s arguments have not addressed
the Examiner’s specific findings, which rely upon Lamkin ¶ ¶ 49, 95, 103,
014, to show that when the client and server are on the same device the
query is of the devices memory, and that content is downloaded to the
device before the query, as claimed. Accordingly, Appellant’s arguments
have not persuaded us of error in the Examiner’s obviousness rejection of
claim 21.
Rejection of independent claim 33 under 35 U.S.C. § 103
With respect to independent claim 33 Appellant argues the
Examiner’s rejection is in error for the reasons discussed with respect to
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claim 21. Appeal Br. 16. Further, Appellant argues that the Examiner has
not addressed the claim 33 limitation that the profile log is sent to an
external source “to inform the external source whether the downloaded
media content was purchased by a user of the computing device or illegally
redistributed.” Appeal Br. 16–17 (emphasis omitted).
The Examiner, in response to Appellant’s argument, states that
disputed limitation is directed to an intended function of the log once it is
sent to the external device which the Examiner considers to be an intended
use as it does not further limit the structure of the apparatus claim. Ans. 18–
19 (citing In re Gardiner, 171 F.2d 313, 315–16 (CCPA 1948) and Catalina
Mktg. v. Coolsavings.com, 289 F.2d 801, 804 (Fed. Cir. 2002)).5
As discussed above, Appellant’s arguments have not persuaded us of
error regarding the rejection of claim 21. Additionally, Appellant’s
arguments have not addressed the Examiner’s interpretation that the disputed
limitation is reciting an intended use which is not afforded patentable
weight. We concur with the Examiner’s analysis on page 18 and 19 of the
Answer, that claim 33 is directed to a computing device which sends a
media profile log to an external source and that the structure of the

5 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.”' Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although “[s]uch
statements often . . . appear in the claim's preamble,” In re Stencel, 828 F.2d
751, 754 (Fed.Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id. ). The patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing, 289 F.3d at 809.

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computing device is not changed based upon whether the external source is
informed of purchase or illegal distribution by the log. Thus, in the absence
of an argument to the contrary, we concur with the Examiner that this
disputed limitation is reciting an intended use6 and we sustain the
Examiner’s rejection of claim 33.
Rejection of dependent claim 27 under 35 U.S.C. § 103
With respect to dependent claim 27 Appellant argues:
[The claim] recites that at least one property of the downloaded
media content is two or more properties. The Examiner’s only
rationale in the Final Office Action for rejecting claim 27 is that
he chose not to give these limitations patentable weight under
the misguided notion that they are non-functional descriptive
material. See Final Office Action, pages 16-17.
Appeal Br. 17.
These arguments have not persuaded us of error in the Examiner’s
rejection. As discussed above we reverse the Examiner’s rejection under 35
U.S.C. § 112, ¶ 4, because dependent claim 27 further limits independent
claim 21 such that to recite to two or more properties are identified and
included in the log. Claim 27 recites the properties as including: the file
name of the downloaded content, the file extension of the downloaded media
content, and the metadata of the downloaded media content. The Examiner
cites Lamkin, ¶ 77, as teaching querying the media file and updating a log.
In this paragraph Lamkin identifies that the log file, is updated identifying
the content (file name), where the content is stored (file extension) and
metadata, thus Lamkin teaches two or more of the claimed properties.

6 We note this could also be interpreted as non-functional descriptive
material as it is reciting the information communicated and is not
functionally related to any medium or operation claimed.
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Lamkin, ¶ 77. As such, we find that the Examiner has cited sufficient
evidence to demonstrate the disputed limitation of claim 27 is taught by
Lamkin and we sustain the Examiner’s obviousness rejection of claim 27.
Remainder of claims rejected under 35 U.S.C. § 103
Appellant has not presented separate arguments with respect to the
Examiner’s obviousness rejections of claims 24 through 26, 28 through 32,
37 and 38. Accordingly, we sustain the Examiner’s rejections of these
claims for the same reasons as independent claims 21 and 33 from which
they depend.
CONCLUSION
We reverse the Examiner’s rejection of claims 27, 32 and 38, under 35 U.S.C.
§ 112, fourth paragraph, and we affirm the Examiner’s rejections of claims 21,
24 through 34, 37 and 38 under 35 U.S.C. § 103.
In summary:
Claim
Rejected
35
U.S.C.
§
Basis/References Affirmed Reversed
27, 32, 38 112,
fourth
para.
Not Further
Limiting
27, 32, 38
21, 27, 29, 30–34,
37, 38
103 Lamkin, Issa 21, 27, 29, 30–34,
37, 38

24 103 Lamkin, Issa,
Starfield
24
25, 26, 28 103 Lamkin, Issa,
Windows XP
25, 26, 28
Overall
Outcome
21, 24–33, 37, 38
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED