Ex Parte AlexanderDownload PDFPatent Trial and Appeal BoardDec 30, 201613071179 (P.T.A.B. Dec. 30, 2016) Copy Citation 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. 13/071,179 03/24/2011 Michael Alexander 066.0312 (P2011-01-19) 3484 70560 7590 01/04/2017 T Kfrlnhal fRrhn.Starl EXAMINER 7010 E. COCHISE ROAD SCOTTSDALE, AZ 85253 GORTAYO, DANGELINO N ART UNIT PAPER NUMBER 2168 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): IPDEPT @ echostar.com docketing @LKGlobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL ALEXANDER Appeal 2016-000958 Application 13/071,179 Technology Center 2100 Before: MICHAEL J. STRAUSS, AMBER L. HAGY, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from rejections of claims 1—4, 7—16, 18—20, and 22—24, which constitute all pending claims. Final Act. 1; App. Br. 41; Ans. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, but designate part of our affirmance as a NEW GROUND OF REJECTION. Appeal 2016-000958 Application 13/071,179 CLAIMED INVENTION Appellant’s disclosure relates to reducing the time to search bookmark files. Spec. 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for reducing search time of bookmark files that are utilized to process received content, the method comprising: providing, utilizing at least one content player device, at least one bookmark file wherein the bookmark file comprises a sequential series of bookmarks that each include information utilizable by the at least one content player device to process at least one received content and wherein the bookmark file is generated from metadata corresponding to the at least one received content; generating, utilizing the at least one content player device, at least one index file for the at least one bookmark file that includes entries that each correspond to at least one bookmark of the sequential series of bookmarks wherein each of the entries includes a type of the at least one bookmark and a location of the at least one bookmark in the at least one bookmark file, the at least one index file containing less information than does the at least one bookmark file such that the at least one index file can be searched in a reduced time as compared to the at least one bookmark file; and searching, utilizing the at least one content player device, for an entry corresponding to a specific bookmark using the at least one index file instead of the at least one bookmark file. REFERENCES Ratliff Sull Watanabe US 2007/0244903 A1 Oct. 18, 2007 US 2011/0093492 A1 Apr. 21,2011 US 8,009,961 B2 Aug. 30, 2011 2 Appeal 2016-000958 Application 13/071,179 REJECTIONS Claims 1,3,4, 15—19, and 22—24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sull and Watanabe. Final Act. 3-10. Claims 2 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sull, Watanabe, and Ratliff. Final Act. 17-19. Claims 7—14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sull and Ratliff. Final Act. 11—17. ANALYSIS Claims 1, 3, 4, 15—19, and 22—24 The Examiner finds that the combination of Sull and Watanabe teaches or suggests all limitations of independent claims 1 and 15. Final Act. 3—8. Appellant argues, however, that those references do not teach or suggest generating: [A]t least one index file for the at least one bookmark file that includes entries that each correspond to at least one bookmark of the sequential series of bookmarks wherein each of the entries includes a type of the at least one bookmark and a location of the at least one bookmark in the at least one bookmark file, as recited in claim 1 and as correspondingly recited in claim 15. App. Br. 27-34; Reply Br. 4~10. The Examiner finds that Sull teaches or suggests this disputed generating limitation, citing the disclosures regarding Figures 2 and 7 in Sull. Final Act. 3^4; Ans. 2—12. For Figure 2, the Examiner finds that 3 Appeal 2016-000958 Application 13/071,179 bookmark list 208 corresponds to the recited index file for the at least one bookmark file, and bookmark 210 corresponds to the recited at least one bookmark file. Ans. 4—5. Appellant argues bookmark 210 is not equivalent to the recited bookmark file because bookmark 210 is just one bookmark and the recited bookmark file comprises “a sequential series of bookmarks.” Reply Br. 5—6. We agree with Appellant that Sull discloses bookmark 210 as a single bookmark, and the Examiner has not explained why Sulks single bookmark would teach or suggest the use of a series of bookmarks in place of bookmark 210. The Examiner notes that the Abstract of Sull discloses that each bookmark can itself be indexed. Ans. 4, citing Sull Abstract. That disclosure, however, is directed to generating the list of multimedia bookmarks 208, rather than indexing the contents inside bookmark 210 and, therefore, fails to remedy the disputed deficiency. For Figure 7, the Examiner finds the displayed bookmarks are a list of just a user’s bookmarks, which constitute only part of the bookmarks present on the system. Ans. 8, citing Sull Fig. 7, Tflf 162, 168, 183—184. Appellant does not dispute this finding, but instead argues that Sull does not disclose generating an index file from a separate bookmark file. Reply Br. 4—9. Although we agree Sull does not disclose generating the list of user’s bookmarks in haec verba, we find the reference at least would have suggested such generation to one of ordinary skill in the art.1 For instance, Sull discloses that its system bookmarks can be searched. Ans. 8—9, citing Sull 1162. Searching those system bookmarks for an individual user would be an easy way for an ordinarily skilled artisan to have Sull generate the individual user’s list of bookmarks. The user’s list of bookmarks contain 1 The teaching in the prior reference need not be ipsissimis verbis. Structural Rubber Products v. Park Rubber, 749 F.2d 707, 716 (Fed. Cir. 1984). 4 Appeal 2016-000958 Application 13/071,179 only the bookmarks of the user resulting from the search, most commonly, not all of the system bookmarks. Therefore, the user’s list of bookmarks would have been expected to contain less information and would have taken less time to search than the complete list of the system’s bookmarks. Accordingly, we sustain the rejection of claims 1 and 15, and of claims 3—4, 16—19, and 22—24, not separately argued. App. Br. 26—34. We, however, designate our affirmance as a new ground of rejection to provide Appellant a full opportunity to respond in light of our change in the thrust of this rejection. Except as noted above, we adopt the Examiner’s findings and rationale set forth in the Final Action and the Answer for the rejections of all pending claims. Claims 2 and 20 Appellant presents the same arguments for claims 2 and 20 as for claims 1 and 15, respectively. App. Br. 40. Accordingly, we sustain the rejection of claims 2 and 20 and designate our affirmance of the rejection of these claims as a new ground of rejection. Claims 7—10 The Examiner finds that the combination of Sull and Ratliff teaches or suggests all limitations of claim 7. Final Act. 11—13. Appellant argues neither reference teaches or suggests the limitations of claim 7 of (i) wherein bookmark entries are marked as searchable or non-searchable and (ii) when a search is performed, omitting from the search at least one bookmark identified as non-searchable. App. Br. 34—38; Reply Br. 11—14. In finding the prior art teaches or suggests the argued limitation, the Examiner combines the bookmark disclosure in Sull with the disclosure in Ratliff of access restrictions for bookmarks. Final Act. 11—13; Ans. 12—15. Appellant argues the prior art is deficient because the access restrictions in Ratliff do 5 Appeal 2016-000958 Application 13/071,179 not teach or suggest tagging bookmark entries as searchable or non- searchable and omitting non-searchable bookmarks from a search. App. Br. 34—38; Reply Br. 11—14. We disagree. As the Examiner sets forth, Ratliff discloses adding access restrictions to bookmarks and only allowing a user to access bookmarks for which the user has the requisite security clearance. Ans. 12—15, citing Ratliff H 64, 68. Ratliff only downloads to the user the bookmarks for which the user has security clearance, omitting the others. Id., citing Ratliff 168. Therefore, when the user searches the downloaded bookmarks, the user can only search the bookmarks that Ratliff permits the user to search. Appellant argues the disputed limitations are, nevertheless, not disclosed because Ratliff searches all bookmarks before downloading only those that the user is permitted to access. Reply Br. 12. We are not persuaded by this argument because claim 7 does not require the bookmarks tagged as non-searchable be non-searchable by every possible search. Claim 7 can encompass non-searchable bookmarks that are non-searchable in the search for which they are intended to be non-searchable. In fact, the Specification discloses generating a list of searchable bookmark files, shown in Figure 5B by searching a list of searchable and non-searchable bookmark files, shown in Figure 5A. Spec. Figs. 5A, 5B, H 45^47; App. Br. 10. Accordingly, we agree with the Examiner in finding the combination of Sull and Ratliff teaches or suggests the disputed limitations. Ans. 12—15, citing Ratliff 11 64, 68. Therefore, we sustain the rejection of claim 7 and of claims 8—10, not separately argued. App. Br. 38. 6 Appeal 2016-000958 Application 13/071,179 Claims 11—14 Claim 11 recites corresponding limitations to the disputed limitations in claim 7, and Appellant repeats the arguments presented for claim 7 for claim 11. App. Br. 38—39; Reply Br. 15. As set forth above, we disagree with those arguments. In addition, Appellant argues that the passages from the prior art cited by the Examiner for claim 11 regarding the recited storage medium, bookmark files, and content player devices fail to teach or suggest various limitations involving those elements. App. Br. 38—39; Reply Br. 15. In making these arguments, Appellant does not address the Examiner’s citations or provide reasons why those citations do not disclosed the involved limitations. Final Act. 14—16; App. Br. 38—39; Reply Br. 15. We note 37 C.F.R. § 41.37(c)(l)(iv) requires 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. See also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, we sustain the rejection of claim 11 and of claims 12—14, not separately argued. App. Br. 40. DECISION We affirm the rejections of claims 1—4, 7—16, 18—20, and 22—24. We designate our affirmance of the rejections of claims 1—4, 15—20, and 22—24 as a new ground of rejection. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: 7 Appeal 2016-000958 Application 13/071,179 When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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: 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation