Ex Parte Freiberger et alDownload PDFPatent Trial and Appeal BoardMay 29, 201595001577 (P.T.A.B. May. 29, 2015) Copy Citation MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 95/001,577 03/16/2011 6,778,314 EXAMINER EDELL, SHAPIRO & FINNAN, LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg MD 20878 Hughes, Deandra ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/29/2015 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ APPLE, INC. Requester and Appellant v. INTERVAL LICENSING LLC Patent Owner and Respondent ________________ Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 Technology Center 3900 ________________ Before HOWARD B. BLANKENSHIP, THU ANN DANG, and STANLEY M. WEINBERG, Administrative Patent Judges. WEINBERG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In a paper filed on May 1, 2014, Patent Owner Interval Licensing LLC (“Interval”) requests rehearing (“Req. Reh’g”) under 37 C.F.R. § 41.79 in the above-entitled inter partes reexamination of US 6,788,314 B1 (“the ‘314 Patent”) with respect to the conclusion of the Patent Trial and Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 2 Appeal Board (“Board”) that the Examiner erred in withdrawing the Examiner-Initiated rejections, erred in refusing to adopt all of the Requester’s proposed rejections, and in entering a number of new grounds of rejection. Decision on Appeal mailed on April 1, 2014 (“Decision” or “Dec.”). Requester Apple, Inc. (“Apple”) opposes the Request for Rehearing in Comments filed on June 2, 2014 (“Opp. Comments”). We grant rehearing and modify our Decision in part. I. RELATED PROCEEDINGS Our Decision indicated the parties had informed us that the ‘314 Patent is the subject of four judicial proceedings in the U.S. District Court for the Western District of Washington, the lead case styled as Interval Licensing LLC v. AOL, 2:10-cv-01385 (“the ‘01385 proceedings”) which had been stayed as of the filing dates of the briefs before the Board. Dec. 2. Our review of the docket entries in the ‘01385 proceedings indicates that the stay was lifted on June 25, 2012; that on or about December 28, 2012 the District Court found the terms “unobtrusive manner” and “does not distract a user” are indefinite, and that the claims containing those terms are invalid under 35 U.S.C. § 112, paragraph 2; that the U.S. Court of Appeals for the Federal Circuit issued a mandate on December 29, 2014 in related Case No. C13-263MJP (which we discuss below); and that the District Court entered a Minute Order on March 2, 2015 directing the parties “to file an updated status report 30 days after the Supreme Court has ruled, or if no petition for writ of certiorari is filed, 30 days after the time to file the petition has expired.” Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 3 We became aware of Case No. 13-263 as the result of a decision by the Court of Appeals in Interval Licensing, LLC v. AOL, et al., 766 F.3d 1364 (Fed. Cir. 2014), an appeal “from four stipulated final judgment orders of the United States District Court for the Western District of Washington.” 766 F.3d at 1366. The Court of Appeals’ decision involved U.S. Patent No. 6,034,652 (not pertinent to the present reexamination proceedings) and U.S. Patent No. 6,788,314 (“the ‘314 Patent”), the patent involved in the present reexamination proceedings. As to the ‘314 Patent, the Court of Appeals held “that the claim phrase ‘in an unobtrusive manner that does not distract a user’ is indefinite under 35 U.S.C. § 112, ¶ 2. Therefore, the district court correctly granted judgments of invalidity as to . . . claims 1-4 and 7-15 of the ‘314 patent.” 766 F.3d at 1377. Interval’s Petition for Rehearing en banc was denied on December 18, 2014 (766 F.3d at 1364) and Interval filed a Petition for Writ of Certiorari with the United States Supreme Court on May 15, 2015 at No. 14-1362. II. ISSUES RAISED IN THE REQUEST FOR REHEARING A. The Board’s Entry Of New Grounds Of Rejection A-D Based On Kjorsvik Our Decision entered new grounds of rejection A (rejecting claims 1, 3, 7, 9, 10, 12, 13, and 15 as anticipated by Kjorsvik); B (rejecting claims 1, 3, 7, 9, 10 1 , 12, 13, and 15 as obvious over Kjorsvik); C (rejecting claims 2, 4, 8, 11, and 14 as obvious over Kjorsvik and Salm); and D (rejecting claims 1 Category B in our Decision inadvertently referred to claim 10 as claim 19. Dec. 30. Interval does not raise this typographical error as a basis for us to change our disposition of this case. Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 4 16-31 as obvious over Kjorsvik and Interval’s Admitted Prior Art.) Dec. 30; Req. Reh’g 11. Interval contends we misapprehended or overlooked a number of points regarding these new rejections. Req. Reh’g 6. 1. Contentions Regarding Grounds A, C, and D The content display system Regarding Grounds A (anticipation), C (obviousness), and D (obviousness), Interval contends we “erred in entering these grounds of rejection by adopting Requester’s incorrect position that Kjorsvik’s administration module corresponds to the claimed content display system.” Req. Reh’g 11-12, 14 (“Requester’s proposed grounds of rejection adopted by the Board . . . falsely equate the claimed content display system with Kjorsvik’s centralized administration module.”) See also Req. Reh’g 12-15. We disagree. First, Interval does not identify where our Decision equated Kjorsvik’s administration module to the claimed content display system and we have not found where we did so. Second, Apple’s Request did not assert that Kjorsvik’s administration module corresponds to the claimed content display system. Instead, the Request stated The network PC of Kjorsvik having both the administration module and a messenger module is a “content display system” as recited in claims 1, 3, 5, 7, 10, and 13. The screen associated with the network PC in Kjorsvik is the “display device” recited in the claims. Because the messenger module, the administration module and the screen are part of the same network PC, the network PC having both the messenger module and administration module meets the limitation “a content display system associated with the display device and located Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 5 entirely in the same physical location as the display device recited in claims 1 and 3. Request 26-27. That is, the Request correlated the network PC, which includes the administration module and a messenger module, as the content display system. Third, none of Interval’s citations to the Request (see Req. Reh’g 12:7-8) support its assertion regarding the Request’s purported correlation of the administration module to the content display system. For example, although Request 59:40-60:12 refers to the administration module, it does not assert that the administration module corresponds to the content display system. In fact, as we have demonstrated above, Interval’s citation to Request 26:14-27:5 states exactly the opposite of Interval’s contention. Fourth, we expressly recognized that Apple “equate[d] the claimed ‘content display system’ to a network PC having both the administration module and a messenger module.” Dec. 15, citing Request 26-27. Accordingly, we did not find that Kjorsvik’s administration module corresponds to the claimed content display system. Without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system Interval contends “[t]he Board overlooked that remote aggregation of display data from multiple sources prior to providing the display data to local display devices is not merely present in Kjorsvik . . . but is at the very essence of how [its] system[] work[s]” and ignored “that display data from multiple sources is remotely aggregated before being provided to the portion Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 6 of the system responsible for rendering the display.” Req. Reh’g 4. Relying on Kjorsvik’s Figure 1 and column 2, lines 27-42, Interval asserts that Kjorsvik’s server 18 is remote from network PCs 12, 14, and 16 and that “[e]ach of Kjorsvik’s PCs 2 are at a ‘different location’.” Req. Reh’g 13. We assume, without deciding, that Kjorvik’s server 18 is remote from PCs 12, 14, and 16. In Kjorsvik, Interval contends, “screensavers from all sources are aggregated remotely in a system database on [the] network server before the screensavers are supplied to ‘messenger modules’ responsible for displaying the screensavers on remote PCs. . . . Only after being aggregated in a system database at a remote network server are screensaver presentations provided to Kjorsvik’s messenger modules that are responsible for rendering the screensavers on the network PCs.” Req. Reh’g 4. Consequently, Interval concludes “it is fundamental to the architecture of Kjorsvik’s network-level, centralized management of screensavers that screensaver presentations are remotely aggregated in a system database on a network server before being provided to messenger modules of individual PCs for display.” Req. Reh’g 13. Interval also contends we “pretend[ed] that screensaver presentations are not being aggregated at the network server before being provided to the user PCs for display.” Req. Reh’g 15. We disagree. Our Decision recognizes, and does not dispute, the Examiner’s finding that “Kjorsvik discloses content data (presentations) are aggregated at a common physical location (the system database on the network server 18) prior to being 2 Presumably including network server PC 18. Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 7 provided to the content display system (such as an individual network PC 12, 14, or 16).” Dec. 16. We also expressly found that “[i]n Kjorsvik, . . . the data may be aggregated at network server 18.” Id. But, we also found that [i]n Kjorsvik, even though the data may be aggregated at network server 18, the data provided by the external sources are not aggregated before they reach network server 18. Claim 1 does not require that the data must never be aggregated within the system. Instead, claim 1 requires only that, at some point that is remote from the content display system, the content data is not aggregated. . . . [T]he claims do not prevent aggregation (either local or remote) after the content data is provided to the content display system. . . . Owner agrees that “[n]othing in the claims (or the specification) . . . forbids local aggregation of data at the content display system.” Dec. 16 (internal quotations and citations omitted). Interval’s Request for Rehearing does not address these findings. We also found that “this limitation is met because the content data provided by the external sources is not aggregated by, or at, the external sources and that aggregation at the network server 18 does not preclude this limitation from being met by the external sources.” Dec. 17. Interval’s Request for Rehearing does not address these findings either. Finally, Interval presents two alternative contentions regarding the location of Kjorsvik’s administration module and message module. Req. Reh’g 15-16. The purpose of these contentions is to persuade us that “all screensaver presentations must be provided to Kjorsvik’s network server before being provided to the display systems in each of Kjorsvik’s network PCs” and that therefore Kjorsvik does not disclose “without first being Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 8 aggregated at the network server.” Req. Reh’g 16. As we have discussed above, however, we agree that presentations in Kjorsvik are aggregated at the network server; but that fact does not preclude Kjorsvik from disclosing the “without aggregation” limitation. For all of the above reasons, we are therefore not persuaded that we erred in concluding Kjorsvik discloses this limitation and we disagree with Interval’s contention that “Kjorsvik does not anticipate or render obvious” the “aggregation” limitation. Req. Reh’g 16. 2. Contentions regarding Grounds C and D Interval contends that secondary references Salm (Ground C, rejection of dependent claims 2, 4, 8, 11, and 14) and Interval’s Admitted Prior Art (Ground D, rejection of dependent claims 16-31) “do not compensate for the deficiencies of Kjorsvik.” Req. Reh’g 16 (emphasis omitted). This argument is not persuasive because it is arguing the references individually, rather than arguing the combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Alternatively, Interval contends that these claims are neither anticipated nor obvious because “Kjorsvik does not anticipate or render obvious” the “aggregation” limitation. “Consequently, independent claims 1, 3, 7, 10, and 13 and their dependent claims would not have been obvious from any combination of Kjorsvik, Salm, and ‘Owner’s Admitted Prior Art.’” Req. Reh’g 16. We disagree for the reasons we have discussed above. 3. Contentions regarding Grounds A and B In an unobtrusive manner that does not distract a user from a primary interaction Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 9 Interval contends we “unduly” focused on the single term “unobtrusive” instead of the entire limitation, which it recites differently in different parts of the Rehearing Request and which it recited differently in different parts of its Respondent Brief. Req. Reh’g 17. More specifically, Interval contends we failed to consider “the entire claim limitation,” “enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data.” Req. Reh’g 17 (emphasis omitted). We disagree. Although Interval’s Respondent Brief did recite this limitation substantially in its entirety (Resp. Br. 5), its arguments emphasized the word “unobtrusive” (e.g., “the ‘unobtrusive’ (“wallpaper”) embodiment” at Resp. Br. 5, 6; “an unobtrusive display” at Resp. Br. 7) and used other shorthand phrases to explain the Specification’s purported support for its interpretation of the claim limitation. See, Resp. Br. 6 (“each time the term ‘in an unobtrusive manner…’ is used”); 7 (“The specification never describes the screensaver embodiment as an example of an unobtrusive display.”); 8 (“the specification’s teachings that the ‘in an unobtrusive manner …’ phrase is only associated with the ‘unobtrusive’ (‘wallpaper’) embodiment.”). Following Interval’s concept of using various shorthand characterizations of the claim, we also used shorthand versions of the claim for convenience; but, importantly, we also expressly quoted, and relied upon, a part of the Specification that closely tracked the claim language upon which Interval now relies: Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 10 Claim Specification (col. 3, lines 24-27) enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data. Dec. 10. Interval agrees that “the ‘unobtrusive’ passage in the claims is very similar to the ‘unobtrusive’ passages in the specification.” Req. Reh’g 18. Accordingly, we conclude that we did not unduly focus on a single claim term or phrase. Relying in part on column 3, lines 20-40, we concluded that “the Specification suggests that the term ‘unobtrusive’ applies to both the screensaver and wallpaper embodiments.” Dec. 11. Relying on In re Abbott Diabetes Care Inc., 696 F.3d 1141 (Fed. Cir. 2012) and Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295 (Fed. Cir. 2004), Interval contends that “[w]here the specification uses the ‘unobtrusive’ passage in connection with a specific embodiment, it is repeatedly, consistently, and exclusively used with the ‘wallpaper’ embodiment, and the specification never uses the ‘unobtrusive’ passage in connection with the ‘screensaver’ embodiment.” Req. Reh’g 18, citing Resp. Br. 6:10-7:6. We disagree. Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 11 One of Interval’s quotations on the above-referenced page 6 of its Respondent Brief was to column 3, lines 28-40 of its Specification, a citation that begins in the middle of a paragraph in the Specification. The citation, however, omitted reference to, and quotation of, the beginning of the paragraph at Specification column 3, lines 20-27. Our Decision included, and relied upon, the beginning of the paragraph. As quoted in our Decision, column 3, lines 20-40 states: According to one aspect of the invention, an attention manager engages the peripheral attention of a person in the vicinity of a display device of an apparatus by acquiring one or more sets of content data from a content providing system and selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data. According to a further aspect of the invention, the selective display of the image or images begins automatically after detection of an idle period of predetermined duration (the "screen saver embodiment"). This aspect can be implemented, for example, using the screen saver API (application program interface) that is part of many operating systems. According to another further aspect of the invention, the selective display of an image or images occurs while the user is engaged in a primary interaction with the apparatus, which primary interaction can result in the display of an image or images in addition to the image or images generated from the set of content data (the "wallpaper embodiment"). Emphasis added. Our Decision concluded, and we reiterate, that this part of the Specification discusses both the screen saver embodiment and the wallpaper embodiment in the context of “the invention” that performs selective Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 12 displaying in an unobtrusive manner that does not district a user from a primary interaction. That is, the selective displaying is performed in an unobtrusive manner; and the selective display is used for the screen saver embodiment and for the wallpaper embodiment. Accordingly, we are not persuaded that the Specification uses the “unobtrusive” passage consistently and exclusively with the wallpaper embodiment or that the Specification never uses the “unobtrusive” passage in connection with the screensaver embodiment. At the oral hearing, Interval stated that the contested part of the Specification was “at best . . . ambiguous.” Dec. 11, citing Tr. 36:15. Based upon the wording of the column 3 citation, combined with Interval’s statement that this part of the Specification was ambiguous, “we conclude[d] that this part of the Specification suggests that the term ‘unobtrusive’ applies to both the screensaver and wallpaper embodiments.” Dec. 11. Interval states that “[i]t has always been and remains Owner’s position that the specification very clearly supports a broadest reasonable interpretation of the ‘unobtrusive’ claim language that excludes screensavers” (Req. Reh’g 19) and contends we took its statement at the oral hearing out of context and mischaracterized its position on appeal. Req. Reh’g 19-20. We disagree. The contested column 3 statements are located in the patent’s Summary Of The Invention. As our Decision noted, Interval also stated that the Summary is “a little bit less precise, a little bit sloppy here” and “that it might seem less precise or even possibly contradictory.” Dec. 11. We are constrained, nevertheless, by the Specification as it is written. We cannot ignore what is plainly written in the Summary Of The Invention or interpret Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 13 it in a way that might be more consistent with what Interval now contends was intended. We conclude the Summary is not ambiguous for the reasons explained above. But, even if it is ambiguous, we resolve the ambiguity in favor of the broadest reasonable interpretation, which means that the Specification and the claims must be interpreted to include, and not exclude, the screensaver embodiment. Interval also contends we erroneously accorded evidentiary value to canceled claims 19 and 20 on the question of whether the Specification and the remaining claims can be construed to include the screensaver embodiment, even though they were originally filed claims and therefore are part of the Specification. Req. Reh’g 21-22. Claim 19 recited “selectively displaying on the display device, in an unobtrusive manner” and dependent claim 20 recited “detecting an idle period of predetermined duration.” See Dec. 11; Opp. Comments 9. Interval agrees that claims 19 and 20 “may have erroneously mixed an ‘unobtrusive’ claim limitation with an ‘idle period’ claim limitation” (Req. Reh’g 21); but contends that because “the specification otherwise uses ‘unobtrusive’ language only with the wallpaper embodiment and never with the screensaver embodiment” (Req. Reh’g 21-22), claims 19 and 20 do not support our conclusion that “unobtrusive” covers the screensaver embodiment. Id. We disagree. As noted above, the Summary of the patent does, in fact, use “unobtrusive” with the screensaver embodiment and therefore provides support for claims 19 and 20. In addition, claims 19 and 20 provide Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 14 evidence that the Summary was written in a sufficiently broad manner as to support claims to a screensaver embodiment. Finally, we adhere to our conclusion that because originally filed claims 19 and 20 were part of the original disclosure, they “add to the evidence that the Specification does not exclude the screensaver embodiment from the claimed ‘unobtrusive’ limitation.” Dec. 12. We did not conclude that claims 19 and 20, standing alone, constituted a sufficient screensaver disclosure under 35 U.S.C. § 112, first paragraph. We concluded, instead, that they added to the evidence supporting our interpretation of the claims and the Specification. We adhere to that conclusion. Interval also contends [t]he claim language requires the content data image to be displayed in a manner that would not district a user from some activity (the primary interaction) that may be occurring while the image is displayed. This requirement is inherently incompatible with a screensaver, which by its very nature takes over an entire display screen and effectively prevents interaction with the device until the screensaver is terminated. Req. Reh’g 22. We concluded the Specification “explains that the screensaver is not distracting because it displays information using the temporally unused capacity of the system.” Dec. 13 (emphasis and internal quotation omitted.). Interval agrees that “a screensaver can make use of temporally ‘unused capacity.’” Req. Reh’g 23. But, Interval contends, this characteristic of a screensaver does not mean that “a screensaver is displayed ‘in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 15 the display device or apparatus.’” Req. Reh’g 23. Interval seeks to support this contention by explaining [a] screensaver takes up the entire display and not only distracts a user from engaging in a primary interaction with the display device, but entirely precludes the user from engaging in a primary interaction unless the user takes some affirmative action to deactivate the screensaver. . . . The fact that a screensaver can make use of unused temporal capacity does not mean that a screensaver is displayed in an unobtrusive manner. Req. Reh’g 23. See also Resp. Br. 6 (a screensaver “takes over an entire display screen and effectively prevents interaction with the device until the screensaver is terminated.”); 7 (a screensaver display “obtrusively occupies the display screen and obscures the display of the user’s primary interaction”). Interval’s explanation of how a screensaver purportedly functions is not persuasive because it is not supported by evidence. Because we disagree with all of Interval’s contentions, we adhere to the conclusion in our Decision that the broadest reasonable interpretation of claim 1 includes a screensaver embodiment. Accordingly, we are not persuaded, based upon Interval’s screensaver contentions, that we erroneously entered new grounds of rejection A (anticipation rejection of claims 1, 3, 7, 9, 10, 12, 13, and 15 based on Kjorsvik) and B (obviousness rejection of claims 1, 3, 7, 9. 10, 12, 13, and 15 based on Kjorsvik). 4. Contentions regarding Ground B For Ground B, we found that the Examiner had initiated obviousness rejections of claims 1, 3, 7, 9, 10, 12, 13, and 15 as obvious over Kjorsvik in the NFOA (Non Final Office Action); but withdrew them in the ACP. Dec. Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 16 7. The NFOA provided detailed analyses of the claims, providing specific findings for all of the limitations. See NFOA 3-33. On the other hand, we found that the Examiner withdrew these rejections in the ACP “based [solely] on the conclusion that Kjorsvik’s screensaver content data is outside the scope of the claims.” Dec. 8. Because the ACP did not address any of the other claim limitations and based its conclusion solely on the screensaver issue, we limited our Decision to a consideration of whether the Examiner had correctly determined that claim 1 does not include a screensaver embodiment and did not consider any of the Examiner’s findings regarding the other claim limitations. Interval now contends the Examiner’s findings regarding a different limitation, the “without aggregation” limitation, in the obviousness rejection of Ground B was incorrect and that our decision to reinstate the obviousness rejection of Ground B irreconcilably conflicts with our decision to adopt Requester’s anticipation rejection in Ground A. Req. Reh’g 5-11. It is not clear that Interval’s Respondent Brief raised the same argument it now raises regarding the inaccuracy of the Examiner’s proposed modification of Kjorsvik in support of her obviousness rejection. Nevertheless, it is clear that pages 14-17 of Interval’s July 26, 2011 filing entitled Patent Owner’s Response to First Office Action Under 37 C.F.R. § 1.956 (“Patent Owner’s July 26, 2011 Response”) did raise the same argument it now raises. We will therefore reconsider our entry of Ground B. See Rexnord Industries, LLC v. Kappos, 705 F.3d 1347, 1355-56 (Fed. Cir. 2013) (on rehearing before the Board, the appellee can defend the Examiner’s decision on any ground that was fully raised before the Examiner). Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 17 Apple correctly observes that the Examiner’s sole reason for withdrawing the Examiner-initiated obviousness rejection stated in Ground B was the Examiner’s conclusion that Kjorsvik is limited to screensavers. Opp. Comments 11. Apple also correctly observes we reversed the Examiner for this limited reason. Id. Apple’s Opposition Comments do not, however, respond to Interval’s Rehearing arguments regarding the Examiner’s findings and conclusions in the NFOA regarding the “without aggregation” limitation in support of her obviousness rejection stated in Ground B. In Comments filed on August 25, 2011, Apple contested Interval’s analysis in Interval’s July 26, 2011 Response. We do not consider Apple’s August 25, 2011 Comments because Apple is the appellant in this proceeding and has not presented those arguments to us on appeal. See 37 C.F.R. §§ 41.67(c)(vii), 41.79(b). We agree with Interval. In the NFOA, the Examiner found that “Kjorsvik teaches obtaining presentations directly from external systems eliminates the need to compose the presentation within the system.” NFOA 6-7, citing Kjorsvik col. 4, ll. 20-25. We agree with this finding because the cited portion of Kjorsvik states: [P]resentations may be obtained or provided to external systems and/or other outside sources over external communication lines. This enables the one administration module for the system to obtain or provide presentations directly from or to external sources, so as to eliminate the need for composing them within the system. Id. Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 18 Consequently, the Examiner correctly concluded “it would have been obvious . . . to modify the system of Kjorsvik to select presentations directly from external sources, such as other network servers, for the advantage of eliminating the need to compose the presentation within the system.” NFOA 7. The Examiner also concluded that “selecting the presentation directly from an external network server database eliminates the need to aggregate the presentation at the network server prior to being provided to the individual PC because the presentation would be coming directly from the external network server.” Id. We disagree with this latter conclusion. As Interval points out, the ability to import presentations from an external source into the system database is an established feature of Kjorsvik’s system. Interval July 26, 2011 Response 16. Kjorsvik has a system database 24 on its network server 18. Col. 2, l. 46. The administration module 26 “has the basic responsibility of composing, adding to, or deleting information from the database 24 on server 18.” Col. 2, ll. 54-57. “Administration module 26 also has the capability of communicating with external sources . . . having presentation information.” Col. 2, ll. 58-61. When presentations are obtained from external systems or sources, “all . . . compositions . . . which are made by the administration module are ultimately stored in the system database 24.” Col. 4, ll. 46-49 (emphasis added). Because system database 24 is on server 18, it necessarily follows that, contrary to the Examiner’s finding, server 18 cannot be eliminated. Instead, compositions of presentations are stored (aggregated) on server 18 Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 19 via system database 24. We therefore agree with Interval that changing the source of the presentations (i.e., whether the administration module creates or imports the presentations) does not change the function of the system database on server 18, which is to aggregate presentations so that the administration module can perform its presentation management functions. Interval July 26, 2011 Response 17. We therefore conclude it would not have been obvious to modify Kjorsvik by eliminating network server 18. Our disagreement with the Examiner regarding Ground B does not contradict our conclusion above in our Ground A anticipation analysis that Kjorsvik does disclose the “without aggregation” limitation. For these reasons, we modify our Decision by withdrawing the Ground B rejection. This withdrawal does not affect our Decision regarding Ground C because Ground C was also based on the proposal in Apple’s Request (see Dec. 7) and, as we noted above, Interval does not separately argue with particularity Ground C, instead relying on its arguments regarding Ground A. B. The Board’s Entry Of New Grounds Of Rejection E-G Based On Rakavy In the Request for Rehearing, Interval continues to assert that Rakavy fails to disclose the “without aggregation” limitation. Req. Reh’g 24-30. We found that Advertising System Server 600 transfers advertisements to Local Computer 500. Dec. 23. We also found that because Rakavy discloses multiple Advertising System Servers 600 (Dec. 25) and other sources of advertisements (id.), Rakavy acquires content from multiple independent content providers which the content being first remotely aggregated. Id. Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 20 Interval contends Rakavy “requires the advertisements of multiple advertisers to be aggregated at a common physical location (advertising system server) that is remote from the local computer.” Req. Reh’g 25, 27 (“advertising system server 600 remotely aggregates advertisements from multiple advertisers before proving the advertisements to local computer 500”); 28 (“the presence of multiple, remote advertising system servers would simply mean that Rakavy’s system involves more that [sic] one remote aggregator.”) Interval also contends that we “improperly assumed that the ‘other sources’ are not also aggregating advertisements” and that “[a] more reasonable assumption in the absence of an express disclosure of how these ‘other sources’ work is that they” are remote aggregators. Req. Reh’g 25. Interval also contends we did not demonstrate that Rakavy’s “other sources” are inherently not aggregating. Req. Reh’g 30. Even if the “other sources” do not aggregate advertisements, Interval contends that the “other sources” do not remove the advertising system servers from Rakavy’s system and those advertising system servers are still aggregating. Req. Reh’g 29-30. Interval has not persuaded us that we interpreted Rakavy incorrectly. We assume, without deciding, that data is aggregated at each of the advertising system servers and at each of the other sources. Rakavy still discloses the “without aggregation” limitation. The contested limitation recites: “without the content data being aggregated at a common physical location.” As Apple points out, “the claims restrict all of the content from being aggregated at a common physical location prior to being provided to the content display system.” Opp. Comments 15. See also Opp. Comments Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 21 14 (“The claims restrict all of the content from multiple content providers from being aggregated at a common physical location.”). Stated differently, the claims do not limit where the content data cannot be aggregated. The claim can be satisfied if, at some point, the content data is not aggregated at a common physical location. In Rakavy, even assuming content data is aggregated at the advertising system servers and/or at the “other sources,” the content data is not aggregated at a common physical location between the advertising system servers and the local computer or between the “other sources” and the local computer. Accordingly, we adhere to our conclusion that because local computer 500 can either access content from other sources or from multiple servers, it acquires the content without it being first remotely aggregated. Dec. 25. Accordingly, we adhere to our Decision adopting the rejections stated in Ground E. For Ground F, Interval contends Salm does not compensate for the deficiencies of Rakavy. For Ground G, Interval adopts its previous arguments regarding the purported failure of Kjorsvik to anticipate or render obvious with the “without aggregation” limitation. For the reasons we have discussed above, we disagree that there are any deficiencies in Rakavy or Kjorsvik. Accordingly, we adhere to our entry of Grounds F and G. III. CONCLUSION We maintain new Grounds A and C to G; but withdraw Ground B. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice Appeal 2013-005424 Reexamination Control 95/001,577 Patent 6,788,314 B1 22 on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. REHEARING GRANTED alw PATENT OWNER: EDELL, SHAPIRO & FINNAN, LLC 9801 WASHINGTONIAN BLVD. SUITE 750 GAITHERSBURG, MD 20878 THIRD PARTY REQUESTER: STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, D.C. 20005-3934 Copy with citationCopy as parenthetical citation