Ex Parte Ho

Patent Trial and Appeal Board

Feb 7, 2013

11490721 (P.T.A.B. Feb. 7, 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.
11/490,721 07/21/2006 Edwin Ho 357314-991110 4102
97001 7590 02/07/2013
Sherman & Zarrabian LLP
(Samsung R&D Center)
1411 5th Street, Suite 306
Santa Monica, CA 90401
EXAMINER
ALLEN, WILLIAM J
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
02/07/2013 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 EDWIN HO
____________________

Appeal 2011-006820
Application 11/490,721
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006820
Application 11/490,721

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-10, 21-30, and 42-50. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellant’s invention relates to a method and apparatus for
conducting e-commerce on a mobile handset (Spec. 1, ll. 2-3).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for performing commercial activity on a mobile
handset, comprising the steps of:
streaming content and associated metadata from a mobile
handset service unit to a mobile handset, the metadata including
data associated with a product related to said content;
running an application on the mobile handset to render
said content;
processing the metadata to create a user-selectable option
to purchase said product;
initiating the purchase of said product when a user selects
said option.

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed November 4, 2010) and the Examiner’s Answer (“Ans.,” mailed
December 8, 2010).
Appeal 2011-006820
Application 11/490,721

3
THE REJECTIONS
The following rejections are before us for review:
Claims 1-9, 21-29, and 42-50 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Bilange (US 2007/0232223 A1, pub. Oct. 4, 2007).
Claims 10, 30, and 51 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bilange in view of Short (US 2006/0269057 A1,
pub. Nov. 30, 2006).
ANALYSIS
Independent claim 1 and dependent claims 2-9
We are persuaded of error on the part of the Examiner by Appellant’s
argument that Bilange fails to disclose “streaming content and associated
metadata from a mobile handset service unit to a mobile handset, the
metadata including data associated with a product related to said content,” as
recited in claim 1 (Br. 8-10).
The Examiner maintains that the rejection is proper, and cites
paragraphs [0054], [0105], [0110], [0112-0113], [0119], [0124], and
Figures 1 and 14 of Bilange as disclosing this feature (Ans. 4, 8, 9, and 11).
However, we agree with Appellant that none of the cited portions of Bilange
discloses streaming both content and associated metadata from a mobile
handset service unit to a mobile handset, as recited in claim 1.
Bilange discloses a system and method for communicating
information, e.g., music items, between a mobile device and an application
provisioning server (see, e.g., Bilange, para. [0054] and fig. 1). An
exemplary mobile device 12 is shown in Figure 3 of Bilange, and includes,
inter alia, a music module 380 that enables communication between a music
Appeal 2011-006820
Application 11/490,721

4
catalog stored on the application provisioning server and the mobile device
(Bilange, para. [0105] and fig. 4A).
The music module includes a plurality of modules, as shown in Figure
4B, including a music store/preview page 1402. Bilange describes that a
user may preview and/or purchase selected music items, e.g., ringtones or
full track songs, on music store page 1402, and further describes that in
some embodiments, the selected music item is played on the mobile device
“through standard mobile streaming technology” (see Bilange, paras. [0110]
and [0112]).
Bilange describes in paragraph [0124], with reference to Figure 14,
that when a music item is selected from a ranked list (Figure 8B), a link is
provided to music store/preview page 1402. Metadata, e.g., the title of the
selected music item, performing artist(s) and record year (reference numeral
1404 in Figure 14) and a photo of the artist(s) (reference numeral 1414 in
Figure 14), is presented on the preview page (Bilange, para. [0124] and
fig. 14). However, Bilange is silent regarding how the metadata is delivered
to the page (Br. 8-10).
Bilange describes in paragraph [0124] that a user has the option, i.e.,
option 1412 in Figure 14, of previewing the selected music item, which
according to paragraph [0112] can be played on the mobile device through
standard mobile streaming technology. However, neither paragraphs [0112]
and [0124] nor any of the other cited paragraphs of Bilange relied on by the
Examiner, expressly discloses “streaming content and associated metadata
from a mobile handset service unit to a mobile handset,” as recited in
claim 1. The Examiner also has neither asserted nor offered any evidence or
technical explanation to establish that this feature is inherently disclosed.
Appeal 2011-006820
Application 11/490,721

5
In the “Response to the Argument” section of the Answer, the
Examiner compares the disclosure in Appellant’s Specification to Bilange
(Ans. 9-11). The Examiner concludes that “the operation of Bilange is
analogous to what Applicant describes in the specification (in conjunction
with the claims) with regards to streaming content and metadata” (Ans. 9).
However, that, even if true, is not controlling. Patentability is properly
determined by comparing the prior art to Appellant’s claims, not to the
Specification.
In view of the foregoing, we will not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(e). We also will not sustain
the Examiner’s rejection of dependent claims 2-9
Independents claim 21 and 42 and dependent claims 22-29 and 43-50
Independents claim 21 and 42 include language substantially similar
to claim 1. Therefore, we will not sustain the Examiner’s rejection of claims
21 and 42 for the same reasons as set forth above with respect to claim 1.
We also will not sustain the Examiner’s rejection of dependent claims 22-29
and 43-50, which ultimately depend from claims 21 and 42, respectively.
Dependent claims 10, 30, and 51
Claims 10, 30, and 51 depend from independent claims 1, 21, and 42,
respectively. The Examiner has not established on this record that the Short
reference, relied on in rejecting these claims, cures the deficiency of
Bilange, as set forth above. Therefore, we will not sustain the Examiner’s
rejection of claims 10, 30, and 51 under 35 U.S.C. § 103(a).

Appeal 2011-006820
Application 11/490,721

6
DECISION
The Examiner’s rejection of claims 1-9, 21-29, and 42-50 under
35 U.S.C. § 102(e) is reversed.
The Examiner’s rejection of claims 10, 30 and 51 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

mls