Ex Parte Griffin

Patent Trial and Appeal Board

Jan 23, 2013

11474205 (P.T.A.B. Jan. 23, 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.
11/474,205 06/23/2006 Jeffrey Jason Griffin 2002-309 / PU06 0129US1 8906
54472 7590 01/23/2013
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
MESA, JOEL
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
01/23/2013 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 JEFFREY JASON GRIFFIN
____________

Appeal 2010-010600
Application 11/474,205
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

Appeal 2010-010600
Application 11/474,205

2
STATEMENT OF THE CASE
Appellant’s claimed invention “relates generally to wireless
communications devices, and particularly to systems and methods of
transferring multimedia content across wireless communications devices.”
(Spec. 1, ¶0001]). Independent claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A wireless communications device comprising:

a communications interface to communicatively connect
the wireless communications device to a remote device;

a memory to store multimedia content;

application logic stored in the memory; and

a controller communicatively connected to the memory
and the communications interface, and configured to execute
the application logic to:
generate an encapsulated data structure comprising
the multimedia content and one or more pointers, each
pointer identifying a user-selected start position for the
multimedia content; and
transmit the encapsulated data structure to the
remote device.
(disputed limitation emphasized).

REJECTION
The Examiner rejected claims 1-13 under 35 U.S.C. § 102(b) as
anticipated by Bodic (GWENAËL LE BODIC, MULTIMEDIA MESSAGING
SERVICE AN ENGINEERING APPROACH TO MMS 35-205 John Wiley & Sons
Ltd, (2003)). (Ans. 5-9).

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Application 11/474,205

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GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of the rejection
of claims 1-13 on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Issue: Under §102, did the Examiner err in finding that Bodic
discloses “generat[ing] an encapsulated data structure comprising the
multimedia content and one or more pointers, each pointer identifying a
user-selected start position for the multimedia content,” within the meaning
of independent claim 1 (emphasis added)?

ANALYSIS
Appellant contends “while Bodic discloses that MMS Multimedia
Messaging Service] messages may carry encapsulated multimedia content,
Bodic does not disclose that the MMS messages include one or more
pointers that identify a corresponding number of user-selected start positions
within the encapsulated multimedia content as claimed in claim 1.” (App.
Br. 5, emphasis added). Appellant restates essentially the same argument in
the Reply Brief:
Bodic and the claimed invention are simply not the same.
Defining a delay between the start of two or more audio files
that will always begin rendering at time 0, as is done in Bodic,
does not teach defining a start time within a file as claimed.
Therefore, Bodic does not anticipate claims 1 or 7, or any of
their respective dependent claims.
(Reply Br. 4, emphasis added).
Appellant’s arguments are not persuasive because we accord no
patentable weight to the content of claimed “encapsulated data structure”
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Application 11/474,205

4
and the “one or more pointers.” As presently claimed, these elements are
non-functional descriptive material because the “encapsulated data
structure” and “one or more pointers” are not positively recited as actually
being employed to affect or change any machine or computer function.1
Instead, Appellant claims an arrangement of data, i.e., an “encapsulated data
structure” (claim 1) that is generated and transmitted, but not positively
recited as actually being used to impart machine or computer functionality.
As such, the informational content of the recited “encapsulated data
structure” and “one or more pointers” is not entitled to weight in the
patentability analysis.2
Even assuming arguendo that the recited “encapsulated data
structure” and “one or more pointers” may be accorded patentable weight,
Appellant’s arguments are not persuasive because Appellant is arguing
limitations that are not claimed.3 The claim language does not require

1 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. The Manual of
Patent Examining Procedure (MPEP) includes substantively the same
guidance. See MPEP, 8th edition (Rev. 9, Aug. 2012), §2111.05.

2 The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No.
2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).

3 “In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
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“[i]dentify[ing] a corresponding number of user-selected start positions
within the encapsulated multimedia content” as Appellant repeatedly urges
regarding claim 1. (App. Br. 5 (emphasis added); See also Reply Br. 4).
Instead, claim 1 more broadly recites “one or more pointers, each pointer
identifying a user-selected start position for the multimedia content”
(emphasis added). Therefore, we agree with the Examiner’s responsive
arguments and finding of anticipation over Bodic’s Fig. 5.5 (p. 96):
The applicant claims a user selected start position for
multimedia content and not a user selected start position within
the multimedia content, therefore the claim is broad enough to
include the user selecting time equal to zero thus this reference
still meets the claimed subject matter;
(Ans. 10).
The applicant argues on pages 4-6, that Bodic does not disclose
one or more pointers. The examiner respectfully traverses
because Bodic discloses one or more pointers, (i.e., Each media
object is encapsulated in a containers known as body parts,
section 5.1.2, paragraph 1; and this container identified by the
seq tag enables the sequencing of an ordered list of objects,
section 5.4.4, paragraph 2, these tags teach pointers; further
sections 0021 and 0027 on pages 6 and 8 of the instance
application disclosure clearly defines pointers as tags).
(Ans. 11).
As noted by the Examiner (id.), we observe that Appellant’s
Specification describes pointers as tags, and even more broadly as time
markers: “The tag section 54 includes one or more pointers P1 . . . Pn that
identify a corresponding number of user-selected start positions for the
payload 58. The pointers may comprise, for example, one or more time

from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted).
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markers for an audio file such as those generated in co-pending U.S. Patent
Application Serial No. 11/252,152.” (Spec. 6, ¶[0021], emphasis added).
Therefore, on this record, we are not persuaded that the Examiner’s
claim interpretation is overly broad, unreasonable, or inconsistent with
Appellant’s Specification. Accordingly, we sustain the anticipation rejection
of claim 1. Claims 2-13 (not argued separately) fall therewith. See 37
C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s rejection under §102 of claims 1-13.
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) (2009).

ORDER
AFFIRMED

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