Ex Parte Kunigita et al

Patent Trial and Appeal Board

May 18, 2016

13060369 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/060,369 04/27/2011
27538 7590
Gibson & Dernier LLP
89 Headquarters Plaza North
PMB 1469
Morristown, NJ 07960
05/20/2016
FIRST NAMED INVENTOR
Hisayuki Kunigita
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
545-234 8291
EXAMINER
KING, MONICA C
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
05/20/2016 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):
info@gdiplaw.com
cmburgos@gdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RISA YUKI KUNIGITA, SEUNG-HYUN LEE, TAEK-JOO LEE,
and m-YEONG JI
Appeal2015-000509
Application 13/060,369
Technology Center 2800
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 6-11, and 13-17. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2-5 and 12 are canceled. See Response to Non-Final Action 2, 6
(filed Apr. 4, 2013); Preliminary Amendment 6 (filed Feb. 23, 2011).
We affirm-in-part.
1 According to Appellants, the real party in interest is Sony Computer
Entertainment Inc. App. Br. 2.
Appeal2015-000509
Application 13/060,369
STATEMENT OF THE CASE
The Invention
Appellants' invention "relates to a technology used in information
processing devices adapted to process content data and, more particularly, to
a technology of allowing a plurality of information processing devices
connected to a network to play back content data in synchronization." Spec.
i-f 1. Claims 1, 10, 11, 13, and 17 are independent. Claim 1 is illustrative of
the subject matter on appeal (bracketed letters added for ease of reference):
1. [a] An information processing system in which a content
distribution server and a plurality of information processing
devices are connected via a network,
[b] wherein a first of the information processing devices
comprises:
[ c] a first communication unit configured to download
content data from the content distribution server over the
network;
[ d] a first storage unit configured to store the content data
downloaded from the content distribution server;
[ e] a first processing unit configured to play back the
content data stored in the first storage unit;
[ f] a first detection unit configured to detect a status of
downloading the content data, where the status of downloading
is an indication of a fraction of the content data that has been
downloaded by the first information processing device from the
content distribution server; and
[g] a first notification unit configured to communicate the
detected status of downloading to a second of the information
processing devices over the network via the first
communication unit,
[h] wherein the second information processing device
operates as a host device, which comprises:
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Application 13/060,369
[i] a second communication unit configured to download
the content data from the content distribution server over the
network;
Li] a second storage unit configured to store the content
data downloaded from the content distribution server;
[k] a second processing unit configured to play back the
content data stored in the second storage unit;
[l] a second detection unit configured to detect a status of
downloading the content data, where the status of downloading
is an indication of a fraction of the content data that has been
downloaded by the second information processing device from
the content distribution server;
[ m] an acquisition unit configured to acquire the status of
downloading communicated from the first information
processing device; and
[ n] a control unit configured to synchronize the play back
of the content data in the first information processing device
with the play back of the content data in the second information
processing device based upon a comparison of the status of
downloading of the first information processing device and the
status of downloading of the second information processing
device, which is the host device.
See App. Br. 16-17 (Claims App'x).
Rejections on Appeal
Claims 1, 6, 10, 11, 13, 14, and 17 stand rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the written description requirement. See Final Act. 2-3.
Claims 1, 6, 8, 9, 13, and 15-17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sloo et al. (US 8,190,683 B2; issued May 29,
2012) ("Sloo") and Flick et al. (US 7,797,633 B2; issued Sept. 14, 2010)
("Flick"). See Final Act. 4--16.
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Application 13/060,369
Claims 7, 10, 11, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sloo, Flick, and Hanyu (US 8,020, 159 B2; issued Sept.
13, 2011). See Final Act. 16-20.
ISSUES
The issues presented by Appellants' contentions are as follows:
I. Does Appellants' Specification establish that Appellants had
possession of the following limitations as of Appellants'
filing date:
a. limitations [ fJ, [l], and [ n] of claim 1;
b. (1) "the first detection unit selects a frame in the
downloaded content data and sets the selected frame
as the status of downloading of the first information
processing device"; and (2) "synchronization by
referring to the status of downloading of the first
information processing device and the status of
downloading of the second information processing
device," as recited in claim 6; and
c. "in order to synchronize the playback of the content
data on the first information processing device with a
playback of the content data on the host device," as
recited in claim 14?
II. Does the Examiner err in concluding that the combination of
Sloo and Flick would have taught or suggested limitation [ n]
of claim 1?
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Application 13/060,369
ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Principles of Law
The written description requirement requires us to determine "whether
the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language." In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983) (citations omitted). Thus, "the description must 'clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.'" Ariad Pharmaceuticals v. Eli Lilly and Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (quoting Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir. 1991)). "In other words, the
test for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Id.
[T]he [written description] test requires an objective inquiry
into the four comers of the specification from the perspective of
a person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the
invention claimed.
Id. at 1351.
[I]t is the specification itself that must demonstrate possession
[of the claimed invention]. And while the description
requirement does not demand any particular form of disclosure,
Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008), or that the specification recite the
claimed invention in haec verba, a description that merely
renders the invention obvious does not satisfy the requirement,
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Application 13/060,369
Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir.
1997).
Id. at 1352.
Claims 1, 10, 11, 13, and 17
The Examiner finds Appellants' Specification does not demonstrate
Appellants had possession of limitations [ fJ and [l] of claim 1, each of which
detect "a fraction" of the content data that has been downloaded. See Ans. 3.
Appellants contend the Examiner is improperly imposing an in haec verba
requirement and that Figures 4---6, 7 A-7B, and paragraphs 33-35 and 70-71
provide support for limitations [ fJ and [l]. See App. Br. 11; Reply Br. 3.
Appellants explain as follows:
FIG. 7 A provides an illustration of such a fraction in the
context of progressive downloading. Indeed, as clearly
disclosed in paragraph [0070], the status of downloading may
be characterized as the content downloaded a start offset b 1 to a
present offset b2, which is clearly a fraction of the overall offset
from bl to b_end.
Reply Br. 3.
We agree with Appellants. The absence of the word "fraction" from
Appellants' Specification is not dispositive of whether the written
description requirement has been met. See, e.g., Vas-Cath, 935 F.2d. at
1564 ("[D]rawings alone may be sufficient to provide the 'written
description of the invention' required by§ 112, first paragraph."). As
explained by Appellants, Figures 7 A-Band paragraphs 70-71 of the
Specification, which disclose a certain portion or "a fraction" of content data
that has been downloaded in the information processing devices, provide
sufficient support for limitations [fJ and [l]. See App. Br. 11; Spec., Fig.
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7 A-B (see, e.g., the diagonal pattern between b 1 and b2 represents a fraction
of the content data that has been downloaded), i-fi-1 70-71.
The Examiner further finds Appellants' Specification does not
demonstrate Appellants had possession of limitation [ n] of claim 1, where
playback is synchronized based on "a comparison" between the download
statuses of the first and second information processing devices. See Ans. 3.
Appellants again contend the Examiner is improperly imposing an in haec
verba requirement and that Figures 5 and 6 and paragraphs 34, 35, 37, 39,
44--46, 54, 56, 63, 77, and 78 of the Specification provide sufficient support
for limitation [ n]. See App. Br. 11; Reply Br. 3--4.
We agree with Appellants. The absence of the phrase "a comparison"
from Appellants' Specification is not dispositive of whether the written
description requirement has been met. See, e.g., Vas-Cath, 935 F.2d. at
1564. As cited by Appellants, Figure 6 and paragraphs 35, 39, and 54 of the
Specification provide sufficient support for limitation [n]. See App. Br. 11;
Spec. Fig. 6 (item S50 (wherein the last frame is derived from monitoring
the detected download statuses of the host device and client device)), i-fi-135,
39 (determining whether host and client devices have downloaded the
content in the size sufficient for playback), 54 ("The last frame information
derivation unit 132 derives the last frame that can be played back in
synchronization by referring to the communicated download status and the
download status detected by the download status detection unit 100 (S50).").
In view of the foregoing, we find that "the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of ... [limitations [fJ, [l], and [n] of claim 1] as of
the filing date." Ariad, 598 F.3d at 1351. Accordingly, we do not sustain
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the Examiner's rejection of claim 1 under 35 U.S.C. § 112, first paragraph.
Similarly, we do not sustain the Examiner's rejection under 35 U.S.C. § 112,
first paragraph, of claims 10, 11, 13, and 17, which the Examiner finds
"have similar issues as in claim 1." See Ans. 3; Final Act. 3.
Claim 6
The Examiner finds Appellants' Specification does not demonstrate
Appellants had possession of ( 1) "the first detection unit selects a frame in
the downloaded content data and sets the selected frame as the status of
downloading of the first information processing device"; and (2)
"synchronization by referring to the status of downloading of the first
information processing device and the status of downloading of the second
information processing device," as recited in claim 6. See Ans. 3.
Appellants contend paragraphs 34, 39, and 73 et seq. of the Specification
provide sufficient support for limitation (1 ), and that Figures 5 and 6 and
paragraphs 35, 37, 44, 54--56, 62, 63, and 70 of the Specification provide
sufficient support for limitation (2). See App. Br. 11; Reply Br. 3--4.
With respect to limitation (2), we agree with Appellants that
paragraphs 35, 37, 44, 54, and 70 of the Specification "reasonably convey[]
to those skilled in the art that the inventor had possession ... as of the filing
date," Ariad, 598 F.3d at 1351. See App. Br. 11; Spec. i-fi-135 ("The last
frame information derivation unit 132 monitors the download status
communicated from the client devices 18 and the download status detected
by the download status detection unit 100 so as to derive the last frame that
can be played back in synchronization."), 37, 44, 54, 70.
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With respect to limitation (1 ), however, we find Appellants' original
disclosure does not "reasonably convey[] to those skilled in the art that the
inventor had possession of," Ariad, 598 F.3d at 1351, a first detection unit
that "selects a frame in the downloaded content data and sets the selected
frame as the status of downloading." The cited portions of Appellants'
Specification describe detecting information related to frames in the
downloaded data as the download status but do not describe a first detection
unit that "selects a frame ... and sets the selected frame as the status of
downloading" (emphasis added), as recited in limitation (1 ). See Spec i-f f 73
("the download status detection unit 60 of the client device 18 and the
download status detection unit 100 of the host device 10 detect information
related to frames in the downloaded data as the download status."), 7 4
("acquir[ing] offsets included in TS packets so as to detect offset
information on the downloaded content data. The download status detection
unit 60 and the download status detection unit 100 detect the downloaded
offset information as the status of downloading the content data"). In other
words, although Appellants' original disclosure supports that the status of
downloading is based on a frame, it does not support that "the first detection
unit selects a frame in the downloaded content data and sets the selected
frame as the status of downloading of the first information processing
device" (emphases added).
Accordingly, we sustain the Examiner's rejection of claim 6 under
35 U.S.C. § 112, first paragraph.2
2 We leave to the Examiner to consider whether dependent claims 7 and 8
should be rejected under 35 U.S.C. § 112, first paragraph, in light of our
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Claim 14
The Examiner finds Appellants' Specification does not demonstrate
Appellants had possession of "in order to synchronize the playback of the
content data on the first information processing device with a playback of
the content data on the host device," as recited in claim 14. See Final Act. 3.
Appellants contend Figure 6 and paragraphs 45--47, 56, 58, 63, and 88
provide sufficient support for this limitation. See App. Br. 11-12; Reply Br.
4.
We agree with Appellants that Figure 6 and paragraphs 46 and 56 of
the Specification "reasonably convey[] to those skilled in the art that the
inventor had possession of ... [claim 14] as of the filing date," Ariad, 598
F.3d at 1351. See App. Br. 11-12; Spec., Fig. 6 (items S72, S74, S76, S78),
i-fi-1 46, 56. As disclosed by the Specification,
[i]f the playback processing unit 104 and the playback
processing unit 64 have played back the last frame (Yin S72, Y
in S74), the respective playback processes are suspended (S76,
S78). This avoids a situation where only one of the information
processing devices completes the playback while the other
information processing devices continue the playback, thereby
ensuring that the playback processes in the host device 10 and
the client devices 18 are synchronized.
Spec. i156. Accordingly, we do not sustain the Examiner's rejection of
claim 14 under 35 U.S.C. § 112, first paragraph.
findings and conclusions supra regarding claim 6. The fact that we did not
enter a new ground of rejection for claims 7 and 8 should not be construed to
mean that we consider these claims to be directed to patentable subject
matter.
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REJECTIONS UNDER35 U.S.C. § 103(a)
Claims 1, 6--9, and 13-17
Limitation [ n] of claim 1 recites
a control unit configured to synchronize the play
back of the content data in the first information
processing device with the play back of the content
data in the second information processing device
based upon a comparison of the status of
downloading of the first information processing
device and the status of downloading of the second
information processing device, which is the host
device.
App. Br. 17 (Claims App 'x) (emphasis added).
With respect to limitation [n], the Examiner finds Sloo teaches "a
control unit configured to synchronize the play back of the content data in
the first information processing the first information processing device and
the detected download status of the second information processing device,
which is the host device." Ans. 7 (citing Sloo, col. 7, 11. 1-22; col. 8, 11. 50-
58; col. 9, 11. 8-18; col. 10, 11. 3-10). The Examiner then finds Flick teaches
"a first detection unit configured to detect a status of downloading the
content data; and a second detection unit configured to detect a download
status of downloading the content data." Ans. 7 (citing Flick, Fig. 5; col. 2,
11. 53-56; col. 3, 1. 61---col. 4, 1. 16; col. 8, 11. 35--43). Based on those
findings, the Examiner concludes "it would have been obvious ... to modify
Sloo to comprise [the teaching of] Flick" and that"[ o ]ne of ordinary skilled
in the art would have been motivated because it would have enabled an
accurate mechanism to synchronize the playback of the two devices based
on realizing download statuses." See Ans. 8.
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Appellants contend there is no reason for Sloo to detect the status of
downloading the content because ( 1) Sloo' s client devices require the
entirety of content to be downloaded prior to synchronization; and (2) Sloo's
synchronization relies on playback position, not the download status. See
App. Br. 14. Appellants further contend neither Sloo nor Flick teach or
suggest a nexus between synchronizing playback and a download status at
the host and client devices. See App. Br. 15.
We agree with Appellants. First, although Sloo teaches synchronizing
playback in first and second information processing devices, Sloo' s
synchronization occurs after the entirety of the content has been downloaded
and is not "based upon a comparison of the status of downloading of the first
[and second] information processing device[s]." See App. Br. 13-14; Sloo,
col. 7, 11. 1-22; col. 8, 11. 50-58; col. 9, 11. 8-18; col. 10, 11. 3-10. In other
words, although Sloo may implicitly determine that both downloads are
complete, no comparison of download status is required or performed. See
Sloo, Fig. 8 (items 860, 870), col. 3, 11. 3-10. Second, although Flick
teaches two detection units that each detect a download status of content
data, Flick does not teach or suggest synchronizing playback. See Flick, Fig.
5; col. 2, 11. 53-56; col. 3, 1. 61---col. 4, 1. 16; col. 8, 11. 35--43. Accordingly,
the Examiner's findings do not address how the combination of Sloo and
Flick teaches or suggests "synchroniz[ing] the play back ... based on a
comparison of . .. the status of downloading of the first ... and ... second
information processing device[ s ]" (emphasis added) as recited in limitation
[ n]. In other words, as Appellants contend, neither Sloo nor Flick teach or
suggest a nexus between synchronizing playback and download status at the
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host and client devices. See App. Br. 15. Nor does the Examiner's rationale
to combine Sloo and Flick (see Ans. 8) fill the gaps in the cited prior art.
Appellants have persuaded us of error. Accordingly, we do not
sustain the Examiner's rejection of independent claim 1 under 35 U.S.C.
§ 103(a). For the same reason, we do not sustain the rejections of
independent claims 13 and 17, and dependent claims 6-9 and 14--16, each of
which include the same deficiency discussed above with respect to the
rejection of claim 1. See App. Br. 4--22; Reply Br. 2-5; Ans. 3---6; Final Act.
4--13.
Claims 10 and 11
Appellants argue claims 10 and 11 together with claims 1, 6, 8, 9, and
13-17. See Reply Br. 4--5; App. Br. 12-16. However, claims 10 and 11
differ in scope from claims 1, 6, 8, 9, and 13-17, and do not recite a
limitation similar to limitation [n] of claim 1. Compare App. Br. 18-19
(Claims App'x) (claims 10 and 11), with App. Br. 16-17 (claim 1), 20 (claim
13), 21 (claim 17). Therefore, the arguments presented with respect to claim
1 are not commensurate with the scope of claims 10 or 11, and Appellants
have not identified with particularity why the arguments made with regard to
claim 1 apply to the recitations of claims 10 or 11. See In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court
[or this board] to examine the claims in greater detail than argued by an
appellant, looking for [patentable] distinctions over the prior art.").
Accordingly, we sustain the rejection of claims 10 and 11.
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DECISION
The decision of the Examiner to reject claim 6 under 35 U.S.C. § 112
is affirmed.
The decision of the Examiner to reject claims 10 and 11 under
35 U.S.C. § 103 is affirmed.
The decision of the Examiner to reject claims 1, 10, 11, 13, 14, and 17
under 35 U.S.C. § 112 is reversed.
The decision of the Examiner to reject claims 1, 6-9, and 13-17 under
35 U.S.C. § 103 is reversed.
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) (2013).
See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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