Ex Parte Hyde et al

Patent Trial and Appeal Board

Nov 30, 2017

13867313 (P.T.A.B. Nov. 30, 2017)

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.
13/867,313 04/22/2013 Roderick A. Hyde SE2-1265-US 1038
80118 7590 12/04/2017
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
SILVERMAN, SETH ADAM
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
12/04/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
admin@constellationlaw.com
T yler @ constellationlaw. com
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
EX PARTE ROYCE A. LEVIEN, RICHARD T. LORD,
ROBERT W. LORD, MARK A. MALAMUD, TONY S. PAN, and
LOWELL L. WOOD JR.
Appeal 2017-007914
Application 13/867,313
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 76, 79, 84, 86—96, 99-112, 118, 121, 124, 131, 136,
140-143, and 151. Claims 2-75, 77, 78, 80-83, 85,97,98, 113-117, 119,
120, 122, 123, 125-130, 132-135, 137-139, and 14^U150 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-007914
Application 13/867,313
The Invention
The claimed invention relates to “Transmitting Content In Accordance
With A Particular Level of Requested Access Associated With A Particular
Amount of Content Access Latency.” (Title).
Illustrative Claim
Claim 76 is illustrative of the subject matter on appeal:
1. A computationally-implemented method, comprising:
transmitting a bidding tag that is designed to elicit one or
more bids for accessing a content that is being offered for
consumption at different levels of access for accessing the
content, the different levels of access for accessing the content
being associated with different amounts of content access
latencies and different amounts of associated fees, and the
bidding tag to be transmitted at least partially identifying the
content to be offered for consumption, a content access latency
being amount of time delay that occurs prior to the content
becoming available for access;
receiving a bid as a result, at least in part, to transmitting
of the bidding tag, the bid to be received being a request for
accessing the content at a particular level of access, the
particular level of access being for accessing the content with a
particular amount of content access latency and for a particular
amount of associated fee, the particular level of access having
been selected from the different levels of access for accessing the
content; and
transmitting the content in accordance with the particular
level of access that was requested through the received bid.
(contested limitations emphasized).
2
Appeal 2017-007914
Application 13/867,313
Rejections1
A. Claims 76, 79, 84, 86-96, 99-112, 118, 121, 124, 131, 136, and
140-143 stand rejected under pre-AIA 35U.S.C. § 112, first paragraph,
written description.
B. Claims 1, 76, 84, 86, 87, 93-95, 102, 103, 105-108, 118, 124, 136,
143, and 151 stand rejected under 35 U.S.C. pre-AIA § 103(a) as being
unpatentable over the combined teachings of Bantz et al. (US 2007/0180061
Al, publ. Aug. 2, 2007) (“Bantz”) and Wiser at al. (US 2010/0031162 Al,
publ. Feb. 4, 2010) (“Wiser”).
C. Claims 79 and 131 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings of Bantz, Wiser,
and Wolton et al. (US 2004/0030741 Al; publ. Feb. 12, 2004).
D. Claims 88—92, 96, and 104 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over the combined teachings of Bantz,
Wiser, and Nelson et al. (US 7,080,324 Bl, publ. July 18, 2006) (“Nelson”).
E. Claims 99-101, 109-112, and 121 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over the combined teachings of
Bantz, Wiser, and Wolton et al. (US 2004/0030741 Al; publ. Feb. 12, 2004).
F. Claims 140-142 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings of Bantz, Wiser, and He
et al. (US 2004/0267952 Al; publ. Dec. 30, 2004) (“He”).
1 Based upon our review of the Specification and claims, in the event of
further prosecution, we leave it to the Examiner to consider a rejection under
35 U.S.C. § 101 for all claims on appeal. Although the Board is authorized
to reject claims under 37 C.F.R. §41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) §1213.02.
3
Appeal 2017-007914
Application 13/867,313
Grouping of Claims
Based upon Appellants’ arguments (App. Br. 28—39), we decide the
appeal of all claims rejected under rejection B, except dependent claim 143,
on the basis of representative claim 76. We decide the appeal of separately
argued dependent claim 143 (App. Br. 53—57) rejected under rejection B,
separately, infra. We decide the appeal of all claims rejected under rejection
E on the basis of representative claim 99. We decide the appeal of all claims
rejected under rejection F on the basis of representative claim 140. We
decide the appeal of all claims rejected under rejections C and D, but not
separately argued, infra. To the extent Appellants have not advanced
separate, substantive arguments for particular rejected claims or issues, such
arguments are waived. 37 C.F.R. § 41.37(c)(l)(iv).
ANAFYSIS
In reaching this decision, we consider all the evidence presented and
all arguments actually made by Appellants. We find Appellants' arguments
unpersuasive for the reasons discussed infra. We adopt as our own: (1) the
findings and legal conclusions set forth by the Examiner in the Final Office
Action from which this appeal is taken (Final Act. 8—54), and (2) the
findings, legal conclusions, and explanations set forth in the Answer in
response to Appellants’ arguments. (Ans. 48—54). We highlight and address
specific findings and arguments for emphasis in our analysis below.
4
Appeal 2017-007914
Application 13/867,313
Rejection A under 35 U.S.C. § 112, first paragraph, written description
With respect to claim 76, the Examiner finds the Specification does
not adequately describe the corresponding means structure to an artisan
having ordinary skill in the art. (Final Act. 8—10).
We pro forma reverse the Examiner’s written description Rejection A,
because the Examiner has not made the appropriate rejection for the
Examiner’s stated reasoning in rejection A. (Final Act. 9). Our reviewing
court guides: “If there is no structure in the specification corresponding to
the means-plus-fimction limitation in the claims, the claim will be found
invalid as indefinite.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d
946, 950 (Fed. Cir. 2007). Thus, as a matter of law, we conclude the
Examiner should have considered a rejection under pre-AIA 35 U.S.C.
§112, second paragraph, and not under §112, first paragraph (written
description). 2
Furthermore, MPEP § 2181(11) explains:
35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph
states that a claim limitation expressed in means- (or step-) plus-
function language “shall be construed to cover the corresponding
structure...described in the specification and equivalents
thereof.” “If 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 35 U.S.C. 112(b) [or the second
2 Although the Board is authorized to reject claims under 37 C.F.R. §
41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
5
Appeal 2017-007914
Application 13/867,313
paragraph of pre-AIA section 112 ].” In re Donaldson Co., 16
F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) (emphasis added).
Accordingly we reverse Rejection A of claims 76, 79, 84, 86—96, 99-
112, 118, 121, 124, 131, 136, and 140-143 under 35 U.S.C. § 112, first
paragraph, written description.
Rejection B of Claims 1, 76, 84, 86, 87, 93-95, 102, 103, 105-108, 118, 124,
136, 143, and 151 under 35 U.S.C. § 103(a)
Rejection of Representative Claim 76
Issue'. Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Bantz and Wiser would have taught or suggested the
contested limitations,
means for transmitting a bidding tag that is designed to elicit one
or more bids for accessing a content that is being offered for
consumption at different levels of access for accessing the
content, the different levels of access for accessing the content
being associated with different amounts of content access
latencies and different amounts of associated fees, and means for
receiving a bid as a result, at least in part, to transmitting of the
bidding tag, the bid to be received being a request for accessing
the content at a particular level of access, the particular level of
access being for accessing the content with a particular amount
of content access latency and for a particular amount of
associated fee,
within the meaning of representative claim 76?3
Appellants contest the recited “means for transmitting a bidding tag”
and “means for receiving a bid,” by first reciting the claim language and
reproducing the record. (App. Br. 28—37). Appellants further argue:
3 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
6
Appeal 2017-007914
Application 13/867,313
[T]he portion of Bantz and He cited by the Examiner does not
recite or even suggest the recitations of because Bantz relate only
to and SLA for a single computer user and that user's choices
INDEPENDENT of bids FROM OTHER USERS. Importantly,
the perspective of Applicant's claims is from the PROVIDER OF
THE CONTENT.
(App. Br. 100).
We are not persuaded by Appellants’ arguments because Appellants’
arguments are not commensurate with the scope of the claim. Claim 76 does
not recite user’s choices as independent from bids from other users nor does
it recite a provider of content. Furthermore, although Appellants argue the
He reference, He is not cited for rejection B.
Appellants further argue “None of the references speaks to any
comparison of latencies for ’one or more bids for accessing a content4 (Id.).
We are not persuaded by this argument because Appellants’ arguments are
not commensurate with the scope of the claim. Claim 76 does not recite
comparing latencies.
Appellants also argue Bantz’s evaluating costs and exploring tradeoffs
teach away from bids for content. (Id.) Our reviewing court guides that a
prior art reference does not teach away from the claimed subject matter
unless the prior art reference criticizes, discredits, or otherwise discourages
the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004); DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) (“A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed”) (citing Fulton).
7
Appeal 2017-007914
Application 13/867,313
Accordingly, we are not persuaded by Appellants’ teaching away
argument because Appellants have not shown that Bantz criticizes, discredits
or otherwise discourages the claimed solution of Appellants. (Id.).
Appellants further argue the Examiner does not provide any
motivation to combine the art to reach the recitations of claim 76. (Id.).
However, the Examiner provides a rationale to combine the references
in the final rejection:
Therefore, it would have been obvious to a person of ordinary
skill in the art at the time of filing to modify the invention of
Bantz to include the feature of Wiser. One would have been
motivated to make this modification because a bidding tag must
be associated with the content that is being bid on to avoid
bidding on the wrong content.
(Final Act. 14).
We are not persuaded by Appellants’ unsupported arguments because
Appellants fail to persuasively traverse the Examiner’s detailed findings
regarding the motivation for combining Bantz and Wiser.
Appellants further contend neither Bantz nor Wiser recites or suggests
“bids” as claimed. Appellants disagree with the Examiner broadly
interpreting a “bid” as a request. (App. Br. 38.) Appellants contend, based
on referencing the Oxford Dictionary, a “bid” is an offer rather than a
request. (Id.).
However, we are not persuaded by Appellants’ arguments because
Appellants admit their own Specification describes a bid as a request for
accessing content:
Applicant's specification, paragraph 0059 clearly states "the bid
40 to be received being a request for accessing the content 20 at
a particular level of access, the particular level of access being
8
Appeal 2017-007914
Application 13/867,313
for accessing the content 20 with a particular amount of content
access latency and for a particular amount of associated fee, the
particular level of access having been selected from the different
levels of access for accessing the content 20" A simple "request"
is therefore NOT "a bid" when read in light of Applicant's
specification.
(Id. (emphasis added)).
The Examiner clarifies his broad but reasonable interpretation in the
Answer:
The word bidding as claimed merely resembles a request for a
service. Bidding is usually in reference to competing for goods
or services in an auction. In an auction, bidding is usually done
by plural people offering to pay more for the same product than
other people. In this auction analogy, first bids are offered for a
product or service. Then, a decision is made to award the product
or service to the person who has made the highest bid. This is
essentially a decision process that decides a winner based on the
bidder with the highest offer. Finally, once the highest bidder is
determined, that product or service is awarded to said highest
bidder. Contrary to the claimed language which teaches a bid and
then a receipt of a product or service. There is no claimed
teaching of such a process. Instead, a "bid" is made to constitute
a selection, and then a product is awarded without concern of a
highest bid.
(Ans. 51—52).
We note Appellants have not filed a Reply Brief to rebut the
Examiner's responsive clarifications and findings in the Answer.
Appellants lastly argue “Wiser fails to teach a combination with
Bantz” (App. Br. 38—39) because “no fee is associated with a tag for
‘bidding tag that is designed to elicit one or more bids for accessing a
content.’” (App. Br. 39).
9
Appeal 2017-007914
Application 13/867,313
However, we are not persuaded by Appellants’ argument because
Wiser’s cable subscriber is offered a pay-per-view, or on-demand service,
for a fee. (Wiser 163). Movies or special features, such as certain live
events, can be transmitted to the user for viewing at the one-time fee. (Id.).
Thus, we find Wiser teaches or at least suggests the contested “fee”
limitation.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the corresponding features found in the cited
prior art. Therefore, we sustain the Examiner's §103 rejection B of
independent representative claim 76. We likewise sustain the remaining
claims also rejected by the Examiner under rejection B. These claims fall
with claim 76. See supra Section, Grouping of Claims.
Rejection C of Claims 79 and 131 and Rejection D of Claims 88—92, 961
and 104 under 35 U.S.C. § 103(a)
Appellants do not advance separate, substantive arguments regarding
the claims which stand rejected under §103 rejections C and D. Arguments
not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we
sustain the Examiner’s rejections of these claims.
Rejection E of Representative Claim 99, Rejection F of Representative Claim
140 and Rejection B of Claim 143 all under 35 U.S.C. § 103(a)
Given the evidence cited by the Examiner, on this record, and for
essentially the same reasons articulated by the Examiner in the Answer, we
find a preponderance of the evidence supports the Examiner’s legal
conclusion of obviousness regarding each of dependent claims 99, 140, and
143. Therefore, we agree with and adopt the Examiner's underlying factual
10
Appeal 2017-007914
Application 13/867,313
findings and we sustain the obviousness rejections of these remaining
dependent claims.
CONCLUSIONS
(1) The Examiner erred with respect to Rejection A of claims 76,
79, 84, 86-96, 99-112, 118, 121, 124, 131, 136, and 140-143 under 35
U.S.C. § 112, first paragraph, written description, and we do not sustain the
rejection.
(2) The Examiner did not err with respect to obviousness
Rejections B—F of claims 1, 76, 79, 84, 86—96, 99-112, 118, 121, 124, 131,
136, 140-143, and 151, under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
11
Appeal 2017-007914
Application 13/867,313
DECISION
We reverse the Examiner decision rejecting claims 76, 79, 84, 86—96,
99-112, 118, 121, 124, 131, 136, and 140-143 under pre-AIA 35 U.S.C.
§112, first paragraph, (written description).
We affirm the Examiner's decision rejecting claims 1, 76, 79, 84,
86-96, 99-112, 118, 121, 124, 131, 136, 140-143, and 151 under 35 U.S.C.
§ 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
12