Ex Parte Gargi

Board of Patent Appeals and Interferences

Sep 11, 2009

11049925 (B.P.A.I. Sep. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ULLAS GARGI
____________

Appeal 2008-002784
Application 11/049,925
Technology Center 3600
____________

Decided: September 11, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Ullas Gargi (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1-54. The final rejection of claim 55 is not being
appealed. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE but add a new ground of rejection under 35 U.S.C. §
112, second paragraph.1

THE INVENTION
The invention relates “to data access methods, media repository
systems, media systems and articles of manufacture.” Specification [0001].
The claimed invention is presented via “method” claims (independent
claim 1 and dependent claims 2-17, 39, 40, and 44-49), “system” claims
(independent claims 18 and 28 and dependent claims 19-27, 41, 50-52 and
dependent claims 29-34, 42, 53, respectively), and “article” claims
(independent claim 35 and dependent claims 36-38, 43, and 54).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A data access method comprising:
storing media content using a media repository system and
wherein a plurality of different usage rights are provided for
controlling the consumption of the media content;

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Dec. 13, 2006) and the Examiner’s Answer (“Answer,” mailed Apr. 6,
2007).
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using the media repository system, accessing location
information regarding a location of a client configured to consume the
media content;
using the location information, selecting one of the usage
rights; and
communicating the media content to the client using the media
repository system to be consumed in accordance with the one of the
usage rights.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Emery
Sorvari
Vogler
US 5,727,057
US 2004/0043758 A1
US 2004/0193902 A1
Mar. 10, 1998
Mar. 4, 2004
Sep. 30, 2004
The following rejections are before us for review:
1. Claims 1-3, 6-10, 15-19, 21-24, and 26-55 are rejected under 35
U.S.C. §102(a) as being anticipated by Vogler.
2. Claims 4, 5, and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Vogler and Emery.
3. Claims 11-14 and 25 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Vogler and Sorvari.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

Means-plus-function
Means-plus-function claim language must be construed in accordance
with 35 U.S.C. § 112, paragraph 6, by “look[ing] to the specification and
interpret[ing] that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., 16 F.3d 1189,
1193 (Fed. Cir. 1994) (en banc).
When no structure is described in the Specification to support a
means-plus-function limitation in a claim, the disclosure is inadequate to
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explain to one of ordinary skill in the art what is meant by the claim
language. In such a situation, a means-plus-function claim would not be
amenable to construction and thus would fail to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112.
‘[I]f one employs means-plus-function language in a
claim, one must set forth in the specification an adequate
disclosure showing what is meant by that language. If an
applicant fails to set forth an adequate disclosure, the
applicant has in effect failed to particularly point out and
distinctly claim the invention as required by the second
paragraph of section 112.’ In re Donaldson Co., 16 F.3d
1189, 1195 (Fed.Cir.1994) (en banc). […] This duty to
link or associate structure to function is the quid pro quo
for the convenience of employing § 112, ¶ 6. See O.I.
Corp. v. Tekmar Co., 115 F.3d 1576, 1583
(Fed.Cir.1997). ‘Fulfillment of the § 112, ¶ 6 trade-off
cannot be satisfied when there is a total omission of
structure.’ Atmel, 198 F.3d at 1382. While corresponding
structure need not include all things necessary to enable
the claimed invention to work, it must include all
structure that actually performs the recited function. See
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296
F.3d 1106, 1119 (Fed.Cir.2002).

Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d
1291, 1298 (Fed. Cir. 2005).
When the means-plus-function limitation in a claim is a computer-
enabled means-plus-function limitation, one must set forth in the
specification sufficient description of an algorithm associated with the
function recited in the claim in order to avoid a finding that an applicant has
failed to particularly point out and distinctly claim the invention as required
by the second paragraph of section 112.
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It is certainly true that the sufficiency of the disclosure of
algorithmic structure must be judged in light of what one of
ordinary skill in the art would understand the disclosure to
impart. See, e.g., Intel Corp. v. VIA Techs., 319 F.3d 1357,
1367 (Fed. Cir. 2003) (knowledge of a person of ordinary skill
in the art can be used to make clear how to implement a
disclosed algorithm); Atmel Corp., 198 F.3d at 1379 (“[T]he
‘one skilled in the art’ analysis should apply in determining
whether sufficient structure has been disclosed to support a
means-plus-function limitation.”). That principle, however, has
no application here, because in this case there was no algorithm
at all disclosed in the specification. The question thus is not
whether the algorithm that was disclosed was described with
sufficient specificity, but whether an algorithm was disclosed at
all.
Aristocrat Techs. Australia Party. Ltd. vs. Int’l Game Tech., 521 F.3d 1328,
1337 (Fed. Cir. 2008).
When there is insufficient description of an algorithm in the
Specification to support a computer-enabled means-plus-function limitation
in a claim, the disclosure will be considered inadequate to explain to one of
ordinary skill in the art what is meant by the claim language.
For computer-implemented means-plus-function claims where
the disclosed structure is a computer programmed to implement
an algorithm, “the disclosed structure is not the general purpose
computer, but rather the special purpose computer programmed
to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int'l
Game Tech., 184 F.3d 1339, 1349 (Fed.Cir.1999). Thus the
patent must disclose, at least to the satisfaction of one of
ordinary skill in the art, enough of an algorithm to provide the
necessary structure under § 112, ¶ 6. This court permits a
patentee to express that algorithm in any understandable terms
including as a mathematical formula, in prose, see In re
Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a flow
chart, or in any other manner that provides sufficient structure.
[new ¶] The district court correctly determined that the structure
recited in the ′505 specification does not even meet the minimal
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disclosure necessary to make the claims definite. Simply
reciting “software” without providing some detail about the
means to accomplish the function is not enough. See Aristocrat
Techs. Austl. Pty v. Int'l Game Tech., 521 F.3d 1328, ---- (Fed.
Cir. 2008) (“For a patentee to claim a means for performing a
particular function and then to disclose only a general purpose
computer as the structure designed to perform that function
amounts to pure functional claiming. Because general purpose
computers can be programmed to perform very different tasks
in very different ways, simply disclosing a computer as the
structure designated to perform a particular function does not
limit the scope of the claim to ‘the corresponding structure,
material, or acts' that perform the function, as required by
section 112 paragraph 6.”). This court does not impose a lofty
standard in its indefiniteness cases. See, e.g., Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1214 (Fed. Cir. 2003). But in this case, the claims are
already quite vague. Without any corresponding structure, one
of skill simply cannot perceive the bounds of the invention.

Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
2008).
When a Specification discloses no algorithm corresponding to a
computer enabled means-plus-function limitation in a claim, an applicant
has necessarily failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112. See also
Aristocrat, 521 F.3d 1328, 1331 (quoting Harris Corp. v. Ericsson Inc., 417
F.3d 1241, 1249 (Fed. Cir. 2005) (“[t]he corresponding structure for a § 112
¶ 6 claim for a computer-implemented function is the algorithm disclosed in
the specification.”) Net MoneyIN, Inc. v. Verisign, Inc. 545 F.3d 1359 (Fed.
Cir. 2008) (“[A] means-plus-function claim element for which the only
disclosed structure is a general purpose computer is invalid if the
specification fails to disclose an algorithm for performing the claimed
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function.”). See also Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371,
1383 (Fed. Cir. 2009) (finding Blackboard’s means-plus-function claims
indefinite because the patent describes an undefined component, i.e., a black
box, that performs the recited function but does not disclose how the
component performs the function). See further Ex parte Catlin, 90 USPQ2d
1603 (BPAI 2009) (precedential) (during prosecution, computer-enabled
means-plus-function claims will be held unpatentable under 35 U.S.C. §
112, second paragraph, as being indefinite if a Specification fails to disclose
any algorithm corresponding to the recited function in the claims).

ANALYSIS
The rejection of claims 1-3, 6-10, 15-19, 21-24, and 26-55 under 35 U.S.C.
§102(a) as being anticipated by Vogler.
The Notice of Appeal indicates that the rejection of all the claims 1-55
is appealed (Notice of Appeal, filed Oct. 13, 2006) and claim 55 has not
since been cancelled. The Brief now indicates that Appellant has withdrawn
the appeal as to claim 55. Br. 1. Claim 55 is an article claim which, as
currently drafted, depends on itself (i.e., depends on claim 55). See
Amendment filed Jan. 27, 2006. While the rejection of claim 55 remains
pending and uncontested, claim 55 is improper in any event. The
withdrawal of the appeal as to claim 55 will operate as an authorization for
the Examiner to cancel claim 55. Upon return of the application to the
Examiner, appropriate action should be taken consistent therewith. See
Manual of Patent Examining Procedure (MPEP) § 1215.03 (8th ed., Rev. 7,
Jul. 2008).

Method claims 1-3, 6-10, 15-17, 39, 40, and 44-49
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The Appellant characterizes the 102 rejection as applying against
claims 1-17 when in fact claims 4, 5, and 11-14 are not subject to the
rejection. Br. 6, Answer 3.
The method of independent claim 1 involves the use of a media
repository system and a client. Relying on the disclosure in Vogler of a
content acquisition area 101 (See Fig. 1) and a content rendering device 100
(See Fig. 1), the Examiner argues that Vogler describes the media repository
system and client as claimed, respectively. Answer 3-4 and 26-27.
Even if the Examiner’s characterization of Vogel’s disclosure as
describing these elements is taken as being accurate, the method as claimed
nevertheless further requires using the media repository system to
“communicat[e] the media content [stored in the media repository system] to
the client ... to be consumed in accordance with the one of the usage rights
[also provided in the media repository system].”(claim 1). We do not find
that Vogel’s content acquisition area 101 performs this step, expressly or
inherently.
The Examiner points to step 345 as shown in Fig. 3. Answer 15. But
that step is performed by the content rendering device 100 as a whole and
not necessarily by the content acquisition area 101 of which it is but a part.
See Fig. 1. In fact, according to Vogler, the content acquisition area 101
merely stores protected digital content. Answer 9. See Vogler [0011]. As
the Appellant (Br. 7) has argued, it is the DRM module 150, and not the
content acquisition area 101, which communicates the media content. See
Vogler [0012]. It is the DRM module which communicates the media
content to the rendering module 115, which is part of the content rendering
device 100. See Fig. 1. The Examiner has not explained how Vogler’s
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content acquisition area 101 alone expressly or inherently functions to
communicate the media content to the content rendering device 100.
The Examiner responded to the Appellant’s argument (Br. 7) that
Vogler does not teach the content acquisition area 101 communicating
media content by showing that Vogler discloses the content rendering device
100 “acquires” the media content. Answer 27. According to the Examiner,
“’acquires’ is interpreted to be, the media content and so on, is
communicated ... to the content rendering device 100.” Answer 42 Appendix
A. However, the question is not whether Vogler describes communicating
media content to the rendering device, which it clearly does, but whether
Vogler describes a “media repository system” (claim 1) communicating
media content. In that regard, the Examiner has construed the “media
repository system” described in claim 1 as reading on Vogler’s content
acquisition area 101. However, there is no express indication in Vogler that
the content acquisition area 101 “communicates” media content. Nor has
the Examiner explained that content acquisition area 101 inherently
“communicates” media content. While it is possible that the content
acquisition area 101 can function to “communicate” media content, “The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient [to establish inherency.]” In re Rijckaert, 9 F 3d. 1531, 1534.
(CAFC 1993); quoting In re Oelrich, 666 F.2d 578, 581-82, (CCPA 1981)
(citations omitted) (emphasis added). At best, one of ordinary skill would
understand Vogler’s content acquisition area 101 to be an area from which
the DRM module 150 can acquire content that the module can then in turn
transfer to the content rendering device 100. While the content rendering
device 100 indirectly “acquires” the media content from the content
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acquisition area 101, it is the DRM module 150 rather than the “media
repository system” (i.e., Vogler’s content acquisition area 101) which
actually performs the claim step of “communicating the media content to the
client” (claim 1).
The Examiner has not taken the position that the “media repository
system” of the claimed method comprises both the content acquisition area
101 and the DRM module 150 but rather that the content acquisition area
101 alone is the “media repository system” of the claimed method. In
narrowly construing the “media repository system” of the claimed method
this way, the prima facie case of anticipation necessarily rests on showing
that Vogler’s content acquisition area 101 performs the claim step of
“communicating the media content to the client” (claim 1). Since Vogler
does not show the content acquisition area 101 performing this step
expressly or inherently, a prima facie case of anticipation of the claimed
subject matter over Vogler has not been established.

Apparatus claims 18-27, 41, and 50-52
Independent claim 18 is drawn to a “media repository system”
comprising “processing circuitry configured to access location information
regarding a location of the client.” The Examiner interprets this circuitry as
“the processing circuitry {i.e., built-in circuitry on motherboard of a
computer, particularly, of the [Vogler] content rendering devices 405, 410}
by means {i.e., execution} of a set of computer program instructions that are
stored in non-volatile memory, is caused to perform certain task(s) or
function(s), particularly, to determine, receive, acquire, access a sensed
location of the content rendering device {i.e., client} using the location
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sensor 165/ ‘GPS sensor’ - See [Vogler] figure 3, step 330; para. [0013,
0014, 0018, 0019]).” Answer 19 (discussing claim 50).
It is proper to first construe a claim before determining whether a
reference anticipates the claimed subject matter. Anticipation is determined
by first construing the claims and then comparing the properly construed
claims to the prior art. In re Cruciferous Sprout Litigation, 301 F.3d 1343,
1346 (Fed. Cir. 2002). But the Examiner’s construction of the claim is
difficult to understand.
If we understand the Examiner correctly, the Examiner is taking the
position that the “processing circuitry” of the “media repository system” of
the claimed system is reasonably broadly construed to encompass Vogler’s
location sensor 165. But this is at odds with the Examiner’s earlier position
in rejecting method claims 1-3, 6-10, 15-17, 39, 40, and 44-49 where the
Examiner construed the “media repository system” as equating with
Vogler’s content acquisition area 101. As can be seen in Fig. 1 of Vogler,
location sensor 165 is not a part of content acquisition area 101.
Accordingly, the location sensor cannot be a part of the “media repository
system” as the Examiner has construed it. Thus, given the Examiner’s
construction of the claim, the Examiner has in fact shown that Vogler does
not expressly or inherently describe the “processing circuitry” of the “media
repository system” as claimed.

Apparatus claims 28-34, 42, and 53
We reverse the rejection of claims 28-34, 42 and 53 under 35 U.S.C.
§102(a) as being anticipated by Vogler.
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As further explained below, we will enter a new ground of rejection of
claims 28-34, 42 and 53 under 35 U.S.C. § 112, second paragraph, because
they are indefinite. Therefore, their rejection over prior art must fall, pro
forma, as being necessarily based on speculative assumptions as to the scope
of these claims. See In re Steele, 305 F.2d 859, 826-63 (CCPA 1962). Our
decision in this regard is based solely on the indefiniteness of the subject
matter and does not reflect on the adequacy of the prior art evidence applied
in support of the rejections
All the claims on appeal are apparatus claims and all include means-
plus-function language. This language must first be construed, in
accordance with 35 U.S.C. § 112, paragraph 6, if invoked, before a
determination can be made as to whether the prior art anticipates the claimed
subject matter. The burden of doing this falls initially on the Examiner. The
record in that regard is deficient. The construction to be given the means-
plus-function limitations will determine their scope and meaning, as well as
that of the claims as a whole. If the claim scope and meaning is determined,
the claims will be reasonably broadly construed before the claimed subject
matter is compared with the prior art disclosure in determining whether the
prior art anticipates the claimed subject matter.

Article claims 35-38, 43, and 54
Independent claim 35 is drawn to an article of manufacture
comprising, in part, of “media comprising programming configured to cause
processing circuitry of a media repository system to” perform certain
functions as claimed. We reverse the rejection of these claims for essentially
the reasons stated with respect to the rejection of apparatus claims 18-27, 41,
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and 50-52. The Examiner has not shown that Vogler (i.e., Vogler’s content
acquisition area 101) describes expressly or inherently the “processing
circuitry” of the “media repository system.” Accordingly, the Examiner can
not have further shown “media comprising programming configured to
cause processing circuitry of a media repository system to” (Claim 35)
perform the functions as claimed.

The rejection of claims 4, 5, and 20 under 35 U.S.C. §103(a) as being
unpatentable over Vogler and Emery.
We reverse the rejection of method claims 4 and 5, and apparatus
claim 20 for the reasons stated above with respect to the rejection of
independent method claims 1 and 18 on which they depend, respectively.
Although the rejection here is under §103 rather than §102, the reasoning in
support of a prima facie case of obviousness does not address, and therefore
does not overcome, Vogler’s deficiency in describing all the limitations of
the independent claims that these claims include.

The rejection of claims 11-14 and 25 under 35 U.S.C. §103(a) as being
unpatentable over Vogler and Sorvari.
We reverse the rejection of method claims 11-14, and apparatus claim
25 for the reasons stated above with respect to the rejection of independent
method claims 1 and 18 on which they depend, respectively. Although the
rejection here is under §103 rather than §102, the reasoning in support of a
prima facie case of obviousness does not address, and therefore does not
overcome, Vogler’s deficiency in describing all the limitations of the
independent claims that these claims include.

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NEW GROUND
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
We reject claims 28-34, 42 and 53 under 35 U.S.C. § 112, second
paragraph as being indefinite. We take claim 28, the independent claim, as
representative.
We count three limitations in claim 28 which are in means-plus-
function format (i.e., “media storage means;” client means;” and, “user right
means”). We will focus on the “client means” limitation. But the analysis
to follow applies equally as well to the other two means-plus-function
limitations in claim 28.
The limitation “client means for providing a content request for one of
the media data items and for consuming media content of the one of the
media data items” includes the term “means.” A claim limitation that
includes the term “means” is presumed to be intended to invoke means-plus-
function treatment, i.e., treatment under 35 U.S.C. §112, 6th paragraph.
Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999).
Construing means-plus-function claim language in accordance with
35 U.S.C. § 112, paragraph 6, is a two step process.
The first step in construing a means-plus-function claim
limitation is to define the particular function of the claim
limitation. Budde v. Harley-Davidson, Inc., 250 F.3d 1369,
1376 (Fed.Cir.2001). “The court must construe the function of a
means-plus-function limitation to include the limitations
contained in the claim language, and only those limitations.”
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106,
1113 (Fed.Cir.2002). Thus, according to the language of claim
11, the function of the “horizontal drive means” is “rotating
said lamp unit in a horizontal direction.” Ordinary principles of
claim construction govern interpretation of this claim language,
see id., and, for all the reasons discussed in the preceding two
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sections, we construe this function according to its ordinary
meaning as not requiring rotation through 360°.
[new ¶] The next step in construing a means-plus-function
claim limitation is to look to the specification and identify the
corresponding structure for that function. “Under this second
step, ‘structure disclosed in the specification is “corresponding”
structure only if the specification or prosecution history clearly
links or associates that structure to the function recited in the
claim.’” Med. Instrumentation & Diagnostics Corp. v. Elekta
AB, 344 F.3d 1205, 1210 (Fed.Cir.2003) (quoting B. Braun
Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997)).
Golight Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir.
2004).
Step 1.The first step in construing a means-plus-function claim
limitation is to define the particular function in the means-plus-function
limitation.
The particular function of the means-plus-function claim limitation at
issue is “providing a content request for one of the media data items and for
consuming media content of the one of the media data items.”
Further, given the claim as a whole, one of ordinary skill in the art
would construe the claim limitation “client means for providing a content
request for one of the media data items and for consuming media content of
the one of the media data items” to encompass a computer-enabled means-
plus-function limitation. This is supported by the Specification, which
describes “clients” as devices covering “various electronic device
configurations and may include personal computers, notebook computers…”
Specification [0019].
Step 2. The next step in construing a means-plus-function claim
limitation is to look to the Specification and identify the corresponding
structure for that function. Given that the claim limitation “client means for
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providing a content request for one of the media data items and for
consuming media content of the one of the media data items” encompasses a
computer-enabled means-plus-function limitation, this requires looking to
the Specification and identifying the algorithm corresponding to the function
“providing a content request for one of the media data items and for
consuming media content of the one of the media data items.” See also
Blackboard, Net MoneyIN, Finisar, Aristocrat, and Catlin, supra.
In that regard, we note that in the Summary of Claimed Subject
Matter (App. Br. 1) the Appellant does not appear to have shown where in
the Specification, by page and line number, there is disclosed structure,
material, or acts corresponding to each claimed function as required by 37
C.F.R. § 41.37(c)(1)(v) (2007). Rather, with respect to the means-plus-
function limitation at issue, the Brief directs us to Fig. 2 and disclosure “at
page 4, line 21+ of the Specification”. See Br. 1.
We have reviewed the disclosure at Fig. 2 and at page 4, line 21+ of
the Specification but have not been able to discern the algorithm
corresponding to the function “providing a content request for one of the
media data items and for consuming media content of the one of the media
data items.” We see nothing in this disclosure which describes an algorithm
corresponding to the function “providing a content request for one of the
media data items and for consuming media content of the one of the media
data items.” The Specification there appears to repeat in different wording
the function recited in the means-plus-function limitation. The Specification
does not adequately describe an algorithm corresponding to the function
“providing a content request for one of the media data items and for
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consuming media content of the one of the media data items.” such that one
of ordinary skill in the art could determine the scope of claim 28.
For the foregoing reasons, we find that the Specification does not
adequately describe an algorithm corresponding to the function “providing a
content request for one of the media data items and for consuming media
content of the one of the media data items.” The Specification fails to
disclose an algorithm corresponding to the recited function at issue in claim
28 such that one of ordinary skill in the art could determine the scope of
claim 28. Accordingly, we reject claim 28 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
The analysis above applies equally as well to claims 29-34, 42, and 53
which depend from claim 28 and therefore include the same deficiency.
Thus, claims 29-34, 42, and 53 are also rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.

CONCLUSIONS
We conclude that the Examiner erred in rejecting claims 1-3, 6-10,
15-19, 21-24, and 26-54 under 35 U.S.C. §102(a) as being anticipated by
Vogler; claims 4, 5, and 20 under 35 U.S.C. §103(a) as being unpatentable
over Vogler and Emery; and, claims 11-14 and 25 under 35 U.S.C. §103(a)
as being unpatentable over Vogler and Sorvari.

DECISION
The decision of the Examiner to reject claims 1-54 is reversed and we
enter a new ground of rejection of claims 28-34, 42 and 53 under 35 U.S.C.
§ 112, second paragraph.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 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
proceeding will be remanded to the examiner . . . .

• (2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record
. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

mev

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