Ex Parte Fukushima et al

Patent Trials and Appeals Board

Apr 18, 2016

12272709 - (D) (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/272,709 11/17/2008 Osamu Fukushima
22850 7590 04/20/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
452374US8DIV PPMPH 6809
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSAMU FUKUSHIMA,
HAJIME FUJII,
and HIROSHI OZAKI
Appeal2013---005464
Application 12/272,709
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Osanm Fukushima, Hajime Fujii, and Hiroshi Ozaki (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 39, 41--44, 46-
49, and 51-53, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed August 29, 2012) and Reply Brief ("Reply Br.," filed March 18,
2013), and the Examiner's Answer ("Ans.," mailed January 17, 2013), and
Final Action ("Final Act.," mailed November 18, 2011).
Appeal2013-005464
Application 12/272,709
The Appellants invented a content providing/obtaining system.
Specification 1: Technical Field.
An understanding of the invention can be derived from a reading of
exemplary claim 49, which is reproduced below (bracketed matter and some
paragraphing added).
49. A non-transitory computer-readable storage medium
encoded with instructions, which, when executed by a content
obtaining apparatus, cause the content obtaining apparatus to
execute a content obtaining program for obtaining content data
provided by a content providing apparatus and reserved by a
customer for purchase or rental, the computer program
comprising instructions for executing the following steps:
[ 1] generating an image request;
[2] sending the image request to the content providing
apparatus;
[3] receiving a plurality of response images created in
accordance with the image request;
[ 4 J displaying the plurality of response images to the customer;
[5] receiving from the customer a selection of one or more
images of the plurality of response images;
[ 6] sending to the content providing apparatus a preview
request corresponding to the one or more images of the
plurality of response images selected by the customer;
[7] receiving from the content providing apparatus preview data
corresponding to the preview request;
[8] displaying to the customer the preview data;
[9] receiving from the customer a preview data selection in
accordance with a selection made by the customer of the
preview data indicating customer desired content data to be
reserved for the customer;
[ 10] sending to the content providing apparatus customer
request data corresponding to the preview data selection;
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Application 12/272,709
[11] receiving from the content providing apparatus, via
interface means configured to access said content providing
apparatus only, the customer desired content data;
[12] recording said customer desired content data on a storage
medium;
and
[ 13] reproducing and outputting said customer desired content
data.
The Examiner relies upon the following prior art:
Beattie US 5,659,742
Ginter US 5,892,900
Aug. 19, 1997
Apr. 6, 1999
Claims 39, 41--44, 46--49, and 51-53 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Beattie and Ginter.
ISSUES
The issues of obviousness tum primarily on whether the art applied
describes getting a preview request from a search results list and creating a
preview from it.
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Application 12/272,709
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Ginter
01. Ginter is directed to ensuring that information is accessed
and/or otherwise used only in authorized ways, and maintaining
the integrity, availability, and/or confidentiality of such
information and processes related to such use. Ginter also relates
to protecting rights of various participants in electronic commerce
and other electronic or electronically-facilitated transactions and
to secure chains of handling and control for both information
content and information employed to regulate the use of such
content and consequences of such use. It also relates to systems
and techniques that manage, including meter and/or limit and/or
otherwise monitor use of electronically stored and/or disseminated
information, and particularly relates to transactions, conduct and
arrangements that make use of, including consequences of use of,
such systems and/or techniques. Ginter 1:9-36.
02. Ginter describes dialog boxes which enable flexible browsing.
This may be provided by activating an electronic connection to a
remote source after a choice is selected. A browsing interface can
allow this electronic connection to be made automatically upon a
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Application 12/272,709
user selection of an item, or the connection itself can be explicitly
activated by the user. Ginter 264:28--42.
Beattie
03. Beattie is directed to identifying documents corresponding to a
search topic or query, and more particularly, to identifying and
retrieving text and multi-media files related to a search topic from
a database library composed of information from many various
publisher sources. Beattie 1:6-12.
04. Beattie stores document records representative of multi-media
records representative of multi-media files. The multi-media
records have multi-media information fields for representing
digital video, digital audio or graphics information, and associated
text fields, each of the associated text fields representing text
associated with one of the multi-media information fields. A
single search query corresponding to the search topic is received.
An index database is searched in accordance with the single
search query to simultaneously identify document records and
multi-media records related to the single search query. A search
result list having entries representative of both textual documents
and multi-media files related to the single search query is
generated. Digital video, audio or graphics information
corresponding to the search topic is retrieved by selecting entries
from the search result list representing selected multi-media
records to be retrieved, and then retrieving digital video, audio or
graphics information represented by multi-media information
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Application 12/272,709
fields associated with the selected multi-media records. Beattie
3:59--4:16.
05. Beattie describes generating and sending a search using natural
language or key word searching. Beattie 12: 15-34.
06. Beattie describes responding to the search by generating and
sending a search results list which contains entries representing
the document identification number of each textual document and
multi-media file identified in the search. Beattie 12:15-34.
07. Beattie Fig. 4A shows an exemplary search results list
displayed in an open window 341 on PC 104. The image
displayed in window 341 includes relevance scores 342,
bibliographical information 343, readability information 343a,
size information 343b, and a file type indicator 344. Beattie
14:41--47
08. If the user wishes to retrieve a document file for display, the
user selects one of the documents in the search list and the session
server retrieves the text, image bitmap, sequence of video frames,
or sequence of digital audio frames associated with the selected
document file. This is displayed in a window. The user may
repeat this process. This information may be displayed
simultaneously with the search results list. The user can also
simultaneously open a document composition window to
cut/copy/paste both text and video information from windows
which represent other selected document files into the document
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Application 12/272,709
composition window to form a composite document that pertains
to the search query. Beattie 14:66-15:48.
ANALYSIS
We are persuaded by the Appellants' argument that
Ginter does not, and the Final Office Action failed to
specifically point out where it does, teach or suggest obtaining
content data provided by a content providing apparatus and
reserved by a customer for purchase or rental, or sending
preview request to the content providing apparatus, wherein the
preview request corresponds to images selected by the
customer, or receiving from the customer a preview data
selection indicating customer desired content data to be
reserved for the customer, or sending to the content providing
apparatus customer request data corresponding to the preview
data selection, or receiving from the content providing
apparatus the customer desired content data.
App. Br. 20, emphasis omitted. All of the independent claims recite a search
for images that returns some list of images to select from and recite
eventually selecting and outputting such an image. The Examiner found that
Beattie described this. All of the independent claims also recite getting a
preview request from the list and creating a preview from it. Beattie does
not describe this, so the Examiner found that Ginter did so in a pop up
window that listed plural entries, one of which has the word "Preview."
Final Act. 5, referring to Ginter Fig. 72D. As Appellants contend, however,
Ginter does not explain how any of the data in its Fig. 72D is used and so the
Examiner's findings regarding such are speculation rather than fact. None
of the applied art describes claim 49 steps [6]-[9] or the equivalent in the
other independent claims.
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Application 12/272,709
CONCLUSIONS OF LAW
The rejection of claims 39, 41--44, 46--49, and 51-53 under 35 U.S.C. §
103(a) as unpatentable over Beattie and Ginter is improper.
DECISION
The rejection of claims 39, 41--44, 46--49, and 51-53 is reversed.
REVERSED
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