Ex Parte HamptonDownload PDFPatent Trial and Appeal BoardJul 31, 201311172733 (P.T.A.B. Jul. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AUTHUR D. HAMPTON ____________________ Appeal 2011-001367 Application 11/172,733 Technology Center 2100 ____________________ Before THU A. DANG, JAMES R. HUGHES, and JEFFREY S. SMITH, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001367 Application 11/172,733 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-19 and 21 (App. Br. 2). Claim 20 have been cancelled (id.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION Appellant’s invention is directed to a method for selectively delivering content to a user using devices that are capable of rendering the content to be delivered and are available; wherein, the context awareness and rendering characteristics of the client’s device are sensed to determine which available device should be selected, based at least in part upon comparison of the rendering characteristics (Abstract). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A method for selectively delivering content to a user having one or more accessible devices, the method to be performed by one or more devices comprising: scanning a proximate area by a device having content to be delivered to a user and being capable of rendering the content, for other devices capable of delivering content to the user using a same type of rendering including one or more other devices; comparing the rendering characteristics of the devices within the proximate area, which are capable of delivering the content to the user; detecting the type of rendering of the content to be delivered to the user; and Appeal 2011-001367 Application 11/172,733 3 assigning the content for delivery to the user to at least one of the device having content to be delivered and the one or more other devices, based at least in part upon the comparison of the rendering characteristics of the device having content to be delivered and the one or more other devices; and wherein the content for delivery to the user includes multiple types of rendering of content, and the portion of the content corresponding to each type of rendering of content is assigned separately. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Abbott US 2001/0040591 A1 Nov. 15, 2011 Agassi US 2003/0217328 A1 Nov. 20, 2003 Ellis US 2004/0027375 A1 Feb. 12, 2004 Strittmatter US 2004/0176117 A1 Sept. 9, 2004 Elsey US 2005/0002510 A1 Jan. 6, 2005 Claims 1 and 12 stands rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 6-15, 18, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Strittmatter in view of Ellis and Agassi. Claims 2-5 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Strittmatter in view of Ellis, Agassi, and Elsey. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Strittmatter in view of Ellis, Agassi, and Abbott. Appeal 2011-001367 Application 11/172,733 4 II. ISSUES The dispositive issues before us are whether the Examiner has erred in determining that: 1. the claim contains subject matter that fails to comply with the written description requirement. In particular, the issue turns upon whether the Specification discloses how “the portion of the content corresponding to each type of rendering of content is assigned separately” (claim 1, emphasis added); and 2. the combination of Strittmatter, Ellis, and Agassi teaches or would have suggested a method comprising assigning the content for delivery “wherein the content for delivery to the user includes multiple types of rendering of content, and the portion of the content corresponding to each type of rendering of content is assigned separately” (claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Strittmatter 1. Strittmatter discloses a process for transferring data from a server device to a client; wherein, depending on a match or a likely match, the fast filtering logic 1315 can filter or influence the arrangement and display of device representations, such as icons, text listings, and graphical tokens (¶ [0092]). Appeal 2011-001367 Application 11/172,733 5 Ellis 2. Ellis discloses a system 10 that detects whether a client 12.2 has entered a designated area 18 in proximity to a device 12.3 having better display capabilities and, as a result, automatically transfer the content displayed on the client device 12.2 to be displayed on device 12.3 (¶ [0111]). Thus, for example, if a user is browsing the Internet on a mobile device and arrives at the office where a workstation having a superior screen display is located, the mobile session will be automatically transferred to this workstation (¶ [0114]). Agassi 3. Agassi discloses a system for delivering content to a user at a client system; wherein, an article reader accesses articles (such as, text, video, audio, Hypertext Mark-up Language (“HTML”), or another available rendering medium) to provide personalized information in a variety of formats based upon users’ preferences (Abstract; ¶¶ [0027] and [0060]). Each article may contain a plurality of content segments that are labeled as being renderable using one or more rendering media, such as audio, video, image, or text; thereby, a user can receive customized presentations about particular articles of interest through a variety of mediums including radio, cell phone, voicemail, television, Motion Picture Expert Group (“MPEG”) player, web browser, or virtually any other type of media player (Abstract). 4. The system includes a sorting engine operable to select a subset of the plurality of media assets (articles) based on user preference and characteristic of the client’s system (¶ [0027]). Appeal 2011-001367 Application 11/172,733 6 IV. ANALYSIS 35 U.S.C. § 112, first paragraph Claims 1 and 12 Appellant contends that “subject matter present in claims 13 and 14” from the Specification as originally filed and Figure 2 “illustrates groupings of devices capable of delivering content to the user, which are grouped in a manner which supports the multiple types of rendering of rendering of content” (App. Br. 5). However, the Examiner finds that the Specification “merely discloses a device or devices capable of these respective rendering outputs, display, audio, vibrational,” but it does not “disclose[] the claimed invention of ‘portion of the content corresponding to each type of rendering of content is assigned separately,’” since “[t]he specification offers no analysis and support as to how ‘portion of the content’ is analyzed to extract sub-contents or text within the content that are to be rendered differently[,] [n]or does the specification offer[] details in [assigning] ‘portion of the content,’ based on any sort of analysis” (Ans. 18-19). In the Reply Brief, Appellant contends that “a control circuit coupled to the communication circuit and the user interface, includes a comparator and a selector for controlling the selective activation of the one or more output producing elements, and that the selective activation is based upon a comparison of the rendering characteristics of the available output producing elements” (Reply Br. 2). In order to comply with the written description requirement, it must be demonstrated that the patentee was in possession of the invention that is claimed. Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). The Appeal 2011-001367 Application 11/172,733 7 Specification as originally filed describes that “[t]he controller circuit 32 includes a comparator 34 which is capable of evaluating the different rendering characteristics, and a selector 36 for controlling the selective activation of the one or more output producing elements” (Specification 6:20-23). We note further that there is no disclosure as to the separate assignment of a portion of the content in the originally filed Figure 2 and claims 13 and 14 as Appellant contends (App. Br. 5). Thus, we conclude that there is no description as to how the controller assigns the content for delivery “wherein . . . the portion of the content corresponding to each type of rendering of content is assigned separately” (claim 1) as recited in independent claims 1 and 12. As such, a person with ordinary skill in the art would not have understood that the Appellant was in possession of the claimed invention. Rather, we find this limitation to be new matter because it is not described by the Specification as originally filed. Accordingly, we conclude that independent claims 1 and 12 do not reasonably apprise those skilled in the art that Appellant was in possession of the claimed invention. Accordingly, we find no error in the Examiner’s rejection of claims 1 and 12 under 35 U.S.C. § 112, first paragraph. 35 U.S.C. § 103 Claims 1, 6-15, 18, 19, and 21 Appellant contends that Strittmatter “does not support the rendering than the device was never intended to render the content in the first place” (App. Br. 7). Appellant argues that the “[r]endering characteristics [disclosed in Ellis], which are different for a particular type of rendering[,] [are] not the same as teaching or making known different types of rendering of content, as provided by the present application” (App. Br. 8). Appeal 2011-001367 Application 11/172,733 8 However, the Examiner finds that Agassi “discloses render[ing] content and content segments based on data contained within the first and second articles indicating a first and second rendering medium for rendering the first and second contents” wherein “determination and selection of type of rendering is based on the content type” (Ans. 21)(citations omitted). We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claim 1 does not define what “the portion of the content” means, includes, or presents other than it must correspond to the type of rendering of content. Thus, we give “the portion of the content corresponding to each type of rendering of content is assigned separately” (claim 1) its broadest reasonable interpretation as the separate assignment of any data related to the type of content rendering, as consistent with the Specification and claim 1. Strittmatter discloses a process for transferring data from a server device to a client and displaying representations of the data based upon a match of the fast filtering logic (FF1). We find that the process for transferring data comprises the step of assigning content for delivery to the user. Further, Ellis is directed to a system that detects whether a client device has entered a designated area and transfers the content displayed on the device to another device that is within the designated area (FF 2). We find that method of delivering content to the user comprises assigning the content for multiple types of rendering of the content. In addition, Agassi discloses a system for delivering content to a user at a client system; wherein, content such as, text, video, audio, HTML, or Appeal 2011-001367 Application 11/172,733 9 another available rendering medium are provided to the user in a variety of formats based upon users’ preferences (FF 3). Content segments are labeled based upon rendering type and are delivered based upon this labeling through a variety of mediums including radio, cell phone, voicemail, television, MPEG player, web browser, or virtually any other type of media player (id.). In particular, a sorting engine selects a subset of the plurality of media assets (content) based on user preference and characteristic of the client’s system (FF 4). We find that the assignment of content segments comprises the separate assignment of a portion of the content relating to its rendering type. In view of our claim construction above, we find that the combination of Strittmatter, Ellis, and Agassi at least suggests providing assigning the content for delivery to the user, “wherein the content for delivery to the user includes multiple types of rendering of content, and the portion of the content corresponding to each type of rendering of content is assigned separately” (claim 1). Accordingly, we find no error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) over Strittmatter in view of Ellis and Agassi. Further, independent claims 12 having similar claim language and claims 6-11, 13-15, 18, 19, and 21 (depending from claims 1 and 12) which have not been argued separately, fall with claim 1. Claims 2-5, 16, and 17 Appellant argues that claim 2-5, 16, and 17 are patentable over the cited prior art for the same reasons asserted with respect to claim 1 (App. Br. 9 and 10). Appeal 2011-001367 Application 11/172,733 10 As noted supra, however, we find that the combined teachings of Strittmatter, Ellis, and Agassi at least suggest all the features of claim 1. We therefore affirm the Examiner’s rejection of claim 2-5 and 17 under 35 U.S.C. § 103 over Strittmatter in view of Ellis, Agassi, and Elsey and of claim 16 under 35 U.S.C. § 103 over Strittmatter in view of Ellis, Agassi, and Abbott. V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1and 12 under 35 U.S.C. § 112, first paragraph and claims 1-19 and 21 under 35 U.S.C. § 103(a) is affirmed. 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). AFFIRMED llw Copy with citationCopy as parenthetical citation