Ex Parte Foster et alDownload PDFPatent Trial and Appeal BoardOct 15, 201311251231 (P.T.A.B. Oct. 15, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD FOSTER, ISABEL DELACOUR, and PAUL MAURICE OTTO GUGENHEIM ____________ Appeal 2011-007379 Application 11/251,2311 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and JUSTIN BUSCH, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Sony United Kingdom Limited. Appeal 2011-007379 Application 11/251,231 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1, 3-13, and 15-28, which are all the claims remaining in the application. Claims 2 and 14 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on October 8, 2013. We AFFIRM. The present invention relates generally to the storage of content data on a peer-to-peer network. See Spec., 1:4-5. Claim 1 is illustrative: 1. A peer-to-peer network of computers, which are interconnected so as to allow sharing of content data, comprising: a plurality of computers configured to pass through the network messages which originate from respective requesting computers; respective computers in the network are configured to store in a memory content files of content data in a file structure comprising a plurality of content folders, each content folder containing, any number of content files, one or more of the content folders containing plural content files of related content data, and a description file containing descriptive information describing the content file or files stored in the same content folder; said respective requesting computers are configured to transmit a search query message which specifies search criteria for passage through the network; and said respective computers configured to store content files are further configured to, after receipt of a search query message Appeal 2011-007379 Application 11/251,231 3 which specifies search criteria, compare the search criteria with the descriptive information contained in the description files in each of said plurality of content folders, and in an the [sic] event of there being a matching content folder, to transmit a hit message identifying the matching content folder for passage back through the network to the respective requesting computer. Appellants appeal the following rejections: Claims 1, 3-13, and 15-28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rising (US Patent Pub. 2003/0187950 A1, Oct. 2, 2003), Okuda (US 6,789,095 B2, Sept. 7, 2004), and Abdelaziz (US 7,263,560 B2, Aug. 28, 2007). Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims as set forth below. See 37 C.F.R. 41.37(c)(1)(vii). ANALYSIS Claims 1, 3-13, and 15-28 Issue: Did the Examiner err in finding that the combined cited art teaches and/or suggests a description file, as set forth in the claimed invention? Appellants contend that “[i]n Rising, the ‘MPEG-7 content descriptions’ are part of the MPEG-7 file, and not a separate file in the same content folder” (App. Br. 10)(emphasis omitted). Appellants further contend that “[t]here is no disclosure in Rising and/or Okuda of a description file Appeal 2011-007379 Application 11/251,231 4 containing descriptive information describing the content of plural content files” (id. at 10-11)(emphasis omitted). The Examiner found that “the limitation of the claim does not limit the folders to a single description file that describes multiple files, but merely requires a description file that describes the ‘file or files’” (Ans. 22- 23). We agree with the Examiner. Here, Appellants’ first contention that the description file is not a separate file (see App. Br. 10) is unavailing and, in any event, not commensurate with the scope of the claim. Representative claim 1 does not require that the description file be a separate file (see claim 1). Instead, claim 1 merely recites, inter alia, a description file containing descriptive information describing the content file or files stored in the same content folder. As such, as suggested by the Examiner, the claimed “description file” could reasonably be a META data file appended to the content file as shown in Rising (i.e., “the MPEG-7 descriptions upon which the searches are based preferably contain MPEG-7 META data within the header of the digital material” (Ans. 23)(Rising, ¶ [0010])), as this is consistent with Appellants’ Specification which states that “[e]ach description file contains metadata, in particular identification information and descriptive information describing the content file or files” (Spec., 9:3-4). “In the patentability context, claims are to be given their broadest reasonable interpretations. . . . [L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Here, we decline to read “separate” into the claims as it pertains to the description file. Appeal 2011-007379 Application 11/251,231 5 Although Appellants further argue that neither Rising nor Okuda disclose a description file containing descriptive information describing the content of plural content files (see App. Br. 10-11), Appellants have chosen to draft the claims, claim 1 in particular, far more broadly than what is being argued. During patent prosecution, claims are construed as broadly as is reasonable. Hence, the claimed “describing the content file or files stored in the same content folder” reads on describing a single file, not merely describing all files in the same folder. Stated differently, claim 1 does not necessarily require that the descriptive information describe the content of plural files, as alternative language is claimed therein, i.e., file or files. As a result, Appellants’ argument is again not commensurate with the scope of the claim. As noted supra, Rising discloses MPEG-7 META tag embedding describing the various forms of multimedia content (see ¶ [0010]), e.g., a META data description file. Therefore, we agree with the Examiner that Rising discloses the claimed “description file.” Appellants also contend that “[t]he Office Action fails to provide substantial evidence that a person of ordinary skill in the art would understand this purported reason [to combine] to be correct” (App. Br. 11). We disagree. “[A]nalysis [of whether the subject matter of a claim would have been obvious] 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, 1740-41 (2007) (quoting In re Kahn, 441 F.3d at 988); see also DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006)(“The motivation need not be found in the references sought to be combined, but may be Appeal 2011-007379 Application 11/251,231 6 found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.”’); In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom”) (internal citation omitted). Here, the Examiner has found actual teachings in the prior art and has provided a reasonable rationale for the combination (see Ans. 6). Thus, based on the record before us, we find no error in the Examiner’s obviousness rejection of representative claim 1, and claims 3-13 and 15-28, not separately argued. Accordingly, we affirm the rejection of claims 1, 3- 13, and 15-28. DECISION We affirm the Examiner’s § 103 rejection. 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 Appeal 2011-007379 Application 11/251,231 7 tj Copy with citationCopy as parenthetical citation