Ex Parte Hampton

Patent Trial and Appeal Board

Jul 31, 2013

11172733 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AUTHUR D. HAMPTON
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Appeal 2011-001367
Application 11/172,733
Technology Center 2100
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Before THU A. DANG, JAMES R. HUGHES, and JEFFREY S. SMITH,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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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
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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.

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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]).
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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]).
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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
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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).
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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
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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).
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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

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