Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardDec 14, 201512388474 (P.T.A.B. Dec. 14, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/388,474 02/18/2009 28003 7590 12/14/2015 SPRINT 6391 SPRINT PARKWAY KSOPHT0101-Z2100 OVERLAND PARK, KS 66251-2100 FIRST NAMED INVENTOR WoojaeLee 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. IDF 6270 (4000-86600) 1534 EXAMINER PACK, CONRAD R ART UNIT PAPER NUMBER 2174 MAILDATE DELIVERY MODE 12/14/2015 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 WOOJAE LEE and SANJA Y K. SHARMA Appeal2013-009403 Application 12/388,474 Technology Center 2100 Before CARL W. WHITEHEAD JR., NABEEL U. KHAN, and KAMRAN JIVANI, Administrative Patent Judges. JIVANI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejections of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The present patent application relates to presenting media instances on communication devices. Abstract. 1 Appellants identify Sprint Communications Company L.P. as the real party in interest. App. Br. 4. Appeal2013-009403 Application 12/388,474 Claim 1 is illustrative (emphasis added): 1. A system for presenting media instances on communication devices, comprising: a processor on a communication device; a source component that, when executed by the processor, parses a selected media container to identify a set of media instances of a first type, constructs a media instance list that comprises the identified set of media instances from the selected media container, selects a media presenter from a plurality of media presenters, and activates the media presenter, wherein the activated media presenter is configured to present, from the media instance list, a media instance of the first type, and wherein the selected media container is inaccessible by the activated media presenter; and a target component that, when executed by the processor, enables the activated media presenter to present at least two of the set of media instances from the media instance list to a user interface without deactivating between presentations, and enables the activated media presenter to present a media instance from a previously constn.1cted media instance list. Claims 1-3 and 5-7 stand rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Eyal (U.S. 6,735,628 B2; May 11, 2004) and Lennon (U.S. 2003/0208473 Al; Nov. 06, 2003). Claim 4 stands rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Eyal, Lennon, and Omoigui (U.S. 2007/0038610 Al; Feb. 15, 2007). Claim 8 stands rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Eyal, Lennon, and Battocchi, Pageplaylist, Mozdev.org, available at 2 Appeal2013-009403 Application 12/388,474 http://replay.waybackmachine.org120051218091140/http://Pageplaylist.moz dev.org/ (archived Dec. 18, 2005). Claims 9--14 stand rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Eyal and Johnson (U.S. 2003/0132953; July 17, 2003). Claims 15-18 stand rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Eyal, Lennon, and Pageplaylist. Claim 19 stands rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Eyal, Lennon, Pageplaylist, and Heller (U.S. 7,797,446; Sept. 14, 2010). Claim 20 stands rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Eyal, Lennon, andBill (U.S. 2006/0170945; Aug 03, 2006). ISSUE Appellants' arguments present, inter alia, the following dispositive issue: whether the applied references teach or suggest "wherein the selected media container is inaccessible by the activated media presenter," as recited in claims 1 and 15 and similarly recited in claim 9. ANALYSIS Appellants contend the Examiner errs in construing the term "inaccessible" and in finding that Eyal teaches or suggests the limitation at issue, namely, "wherein the selected media container is inaccessible by the activated media presenter." App. Br. 20-24; Reply Br. 11-14. 3 Appeal2013-009403 Application 12/388,474 Claim Construction We are persuaded by Appellants' arguments of Examiner error regarding the construction of the term inaccessible. The Examiner correctly seeks to construe the term in light of the remaining claim language and the Specification, stating: With this as a frame of reference, concepts such as the media container not able to be accessed by the activated media presenter, the media container not accessed by the activated media presenter, or the activated media presenter not capable of accessing the media container would fall with a broadest reasonable interpretation of 'inaccessible by the activated media presenter' (emphasis added) as claimed. Ans. 34. We agree with the Examiner that one of ordinary skill in that art would reasonably understand "inaccessible by" in light of the claims and the Specification to encompass the container "not able to be accessed by" the presenter and the presenter "not capable of accessing" the container. Id. We disagree, however, that the limitation encompasses merely the "container not accessed by" the presenter. Id. Rather, we are persuaded by Appellants' argument that the term "inaccessible by" as used in the claims and read in light of the Specification does not encompass a system or method wherein the presenter could, but simply does not, access the container. Reply Br. 12- 13. Obviousness The Examiner rejects each of independent claims 1, 9, and 15 as obvious in light of Eyal and various other references of record. Final Act. 4--5,8-9, and 12-13. Within each rejection, the Examiner relies on findings 4 Appeal2013-009403 Application 12/388,474 in Eyal as teaching or suggesting the limitation at issue. Id. Specifically, the Examiner finds Eyal: suggests embodiments wherein a media container is 'inaccessible by' in the sense of 'not accessed by' the activated media presenter (see, e.g., id., col. 4, lines 37-51, describing an embodiment in which each media resource is directly loaded using corresponding links selected from a database; and cf, e.g., id., col. 4, lines 25-36, describing an embodiment in which a container is first accessed in order to ultimately load a media resource). Ans. 35; see also Final Act. 17 (citing Eyal, 4:26-51). In light of our determination above regarding the construction of "inaccessible," we find the portions of Eyal upon which the Examiner relies insufficient to teach or suggest the limitation at issue. We agree with Appellants that the cited portions of Eyal describe embodiments wherein the media presenter could, and in some cases does, access the media container. Ans. 21-22; Eyal, 4 :26-51. Therefore, the cited portions of Byal-without more-are insufficient to establish a prima facie case of obviousness. The Examiner alternatively finds the independent claims obvious because the limitation at issue is merely a matter of design choice. Final Act. 5; Ans. 38. Specifically, the Examiner finds, Interpreting the limitation as indicating that the player does not access or is not capable of accessing a container is consistent with a broadest reasonable interpretation, and in view of the various embodiments and related teachings of Eyal, it would have been obvious to implement a system in which a controlled player component does not access or is not capable of accessing a web page, which goes to the designed or implemented functionality of a player or its role within a larger system that 5 Appeal2013-009403 Application 12/388,474 implicates questions of design choice (such as complexity of the player) obvious to one of ordinary skill in the art. Ans. 38. In light of our determination above regarding the construction of "inaccessible," we agree with Appellants that the Examiner errs in this finding. The Examiner fails to set forth in the record before us sufficient reasoning to establish why, in light of the teachings of Eyal, a person of ordinary skill in the art would find the limitation at issue merely a matter of design choice. Accordingly, we do not sustain the Examiner's rejections of independent claims 1, 9, and 15, nor their dependent claims 2-8, 10-14, and 16-20. DECISION We reverse the Examiner's decision to reject claims 1-20. REVERSED 6 Copy with citationCopy as parenthetical citation