Ex Parte Branam et al

Patent Trial and Appeal Board

Dec 31, 2013

11744970 (P.T.A.B. Dec. 31, 2013)

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.
11/744,970 05/07/2007 Michael Branam 060133 (BLL0386US) 9942
36192 7590 01/02/2014
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
JAROENCHONWANIT, BUNJOB
ART UNIT PAPER NUMBER
2466
MAIL DATE DELIVERY MODE
01/02/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL BRANAM and AKBAR PIRANI
____________

Appeal 2011-007324
Application 11/744,970
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007324
Application 11/744,970
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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-20. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse and set forth new grounds of rejection under 35 U.S.C.
§ 112, second paragraph using our authority under 37 C.F.R. § 41.50(b).

INVENTION
This invention relates to managing and delivering media content.
Claim 1, reproduced below with disputed limitations emphasized and
elements lettered and indented, is illustrative of the claimed subject matter:
1. A media recording device for managing and delivering media
content, comprising:
a media recording structure for capturing the media content;
an input component;
a transmitter;
a processor in communication with the media recording
structure, the input component,
and the transmitter; and
a media management application executing on the processor,
[a] the media management application performing a method,
comprising:
[b] receiving a destination address for a media file comprising
the media content captured by the media recording structure,
[b1] the destination address entered via the input component;
and
[c] transmitting the media file to a receiving device associated
with the destination address via the transmitter;
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[c1] wherein the media file is transmitted to the receiving
device over a network in response to a request for the media
file received at the media recording device from the receiving
device.
REJECTIONS1
R1. Claims 1, 5-8, 12-14, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over US 2008/02195658 A1 (Sep. 11, 2008)
(“Keane”).
R2. Claims 2, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keane and US 7,133,687 B1 (Nov. 7, 2006)
(“Fishawy”).
R3. Claims 3, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keane, Fishawy, and US 2003/0222819 A1 (Dec. 4,
2003) (“Karr”).
R4. Claims 4, 11, and 17 stand rejected under 35 U.S.C. §103(a) as
being patentable over Keane and US 2008/0120306 A1 (May 22, 2008)
(“Panabaker”).

ANALYSIS
CLAIM 1
Regarding the claim 1 limitation [c1]: “wherein the media file is
transmitted to the receiving device over a network in response to a request
for the media file received at the media recording device from the receiving
device,” the Examiner concludes:

1 See Notice dated Nov. 17, 2011
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Reading Keane [it] would have been obvious to an [artisan of]
ordinary skill in the art that if a user determined that there is no
request for an image from a remote device, the user would not
enter the remote device's address into the address module, and
the image could be saved locally at the cell phone. Thus, this is
a clear case of obvious variation of choice that an ordinary user
in the art [could have] applied Keane’s teaching to perform the
same without any significant and unobvious inventive steps.
(Ans. 12) (emphasis added).
Appellants contend, “There is no reference anywhere in Keane that
the content or media file is transmitted by the media recording device in
response to a request from the receiving device, as recited in Appellant’s
claims.” (App. Br. 7).
We are persuaded by Appellants’ contentions. We agree with
Appellants that the Examiner’s articulated reasons do not possess a
sufficient rational underpinning to support the legal conclusion of
obviousness.2 (Ans. 4-5, 12). Specifically, the Examiner’s reasoning does
not explain why it would have been obvious to modify Keane’s method so
that Keane’s user of the receiving device would request file transmission
([c1] “a request . . . received . . . from the receiving device.”).

2 [T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness
. . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted).
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For essentially the same reasons advanced by Appellants, on this
record, we are persuaded the Examiner erred. Accordingly, we reverse the
rejection of claim 1 and of claims 8 and 14, which recite commensurate
limitations. We also reverse the rejections of claims 2-7, 9-13, and 15-20,
which depend from claims 1, 8, and 14, respectively.

NEW GROUND OF REJECTION
Claim 1 recites:
1. A media recording device . . . , comprising:
. . .
a media management application executing on the processor,
[a] the media management application performing a method,
comprising:
[b] receiving a destination address for a media file comprising
the media content captured by the media recording structure,
[b1] the destination address entered via the input component;
and
[c] transmitting the media file to a receiving device associated
with the destination address via the transmitter;
[c1] wherein the media file is transmitted to the receiving
device over a network in response to a request for the media file
received at the media recording device from the receiving
device.
(Emphasis added). We conclude hybrid claim 1 is indefinite under 35
U.S.C. § 112, second paragraph because device (apparatus) claim 1 recites
both a device and a method of using the device.3 Specifically, the preamble

3 See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005) (“[R]eciting both an apparatus and a method of using that
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Application 11/744,970
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states that claim 1 is a device. Claim 1, limitations [b] – [c1] recite method
steps for using the device. We also conclude dependent claims 2-7 are
indefinite because claims 2-7 depend from indefinite independent claim 1.

DECISION
We reverse the Examiner’s rejections R1-R4 of claims 1-20 under
§ 103.
We enter a new ground of rejection against claims 1-7 under
35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, 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.

apparatus [in a single claim] renders [such] claim indefinite under section
112, paragraph 2.” (citing Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990))).
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(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.

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.
§ 41.50(f).

REVERSED
37 C.F.R. § 41.50(b)

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