Ex Parte Lejeune

Patent Trial and Appeal Board

Aug 21, 2015

12355578 (P.T.A.B. Aug. 21, 2015)

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.
12/355,578 01/16/2009 Stephane Lejeune 7114-86953-US 7013
37123 7590 08/21/2015
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
ELLIOTT IV, BENJAMIN H
ART UNIT PAPER NUMBER
2474
MAIL DATE DELIVERY MODE
08/21/2015 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 STEPHANE LEJEUNE
____________________

Appeal 2013-006192
Application 12/355,578
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, PETER P. CHEN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-006192
Application 12/355,578

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Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1–
30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF CASE
The claims are directed to a method and apparatus for facilitating
interaction between services provided by respective networked devices.
Claims 1, 15, 21, and 27 are independent. Claim 1, reproduced below with
the disputed limitations in italics, is illustrative of the claimed subject
matter:
1. A method to facilitate interaction between services provided by
respective networked devices, the method comprising:

receiving service capabilities associated with a source device
which has joined a first network;

receiving a service application from the source device at a
presentation device, the service application being associated with at
least one service identified by the service capabilities associated with
the source device; and

presenting the at least one service identified by the service
capabilities associated with the source device on the presentation
device utilizing the service application received from the source
device.

The Examiner’s Rejections
Appellant appeals the following rejections:
Claims 1–30 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Istvan (US 2006/0085825 A1, Apr. 20, 2006).
Claim Groupings
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Application 12/355,578

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Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1, as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012).

ANALYSIS
Issue: Did the Examiner err in finding that Istvan discloses
“receiving a service application from the source device at a presentation
device” and “utilizing the service application received from the source
device” as recited in claim 1?
The Examiner interprets the claim term “receiving a service
application from the source device at a presentation device” to “correspond
to any type of service (via a communications network) that is received at any
type of device that has the capacity to receive such a service, or has
requested the service.” (Ans. 18). The Examiner finds that “[t]he claim
limitation does not discriminate between any type of service, only that it is a
service that is identified by the service capabilities associated with a source
device. In other words, the receiving device only needs the capability to
receive or request the service.” (Ans. 18). In addition, the Examiner finds
that “a ‘service application’ is given no concrete, explicit definition [in the
originally filed disclosure], and therefore, corresponds to any type of service
that may be received, used, and/or executed by a presentation device.” (Ans.
19). In view of this claim interpretation, the Examiner concludes that Istvan
discloses the disputed limitation. (See Ans. 18–24).
Appellant contends that the Examiner’s interpretation is unreasonably
broad, in that it construes “receiving a service application” as “‘any type of
service.’” (App. Br. 15; Reply Br. 7–9). Appellant contends that the terms
“service” and “application” are fundamentally different: “For example, the
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Application 12/355,578

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term ‘application’ is well-understood to mean computer software including
an executable application, while the term ‘service’ is well-understood to be a
software-implemented functionality such as delivery of a streaming movie
over the Internet.” (Reply Br. 2–3, 8; see also App. Br. 15). Appellant
therefore contends that Istvan does not disclose that a “service application”
is sent by the source device to the presentation device or that the
presentation device receives a “service application” from the source device.
(App. Br. 11–13; see also Reply Br. 3–7).
We are persuaded by Appellant’s arguments. During prosecution,
claims are given “the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment . . . may be afforded by the
written description contained in the applicant’s specification.” In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). It is well-settled that “[a]ll words in a
claim must be considered in judging the patentability of that claim against
the prior art.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); see also In
re Wilder, 429 F.2d 447, 450 (CCPA 1970) (“[E]very limitation positively
recited in a claim must be given effect in order to determine what subject
matter that claim defines.”).
The Examiner’s claim construction, which effectively reads the term
“application” out of the claim, is unreasonably broad. Although Appellant’s
Specification may not provide an explicit definition for the term “service
application,” it consistently describes the claimed “service application” as
“downloadable” and states that it may be “executed” and “configured.”
(See, e.g., Spec. 4, 9–11). The passages of Istvan cited by the Examiner
disclose receiving “content,” “metadata,” or “information” at the
presentation device. (Ans. 18–24). However, the Examiner has made no
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Application 12/355,578

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showing, nor do we find anything in the passages cited by the Examiner or
elsewhere in Istvan, that Istvan discloses “receiving a service application
from the source device at a presentation device,” as called for in claim 1.
(Emphasis added.). For the same reasons, we find that Istvan also does not
disclose the “utilizing the service application received from the source
device” limitation.
For the foregoing reasons, the Examiner’s rejection of independent
claim 1, and depending claims 2–14, as anticipated by Istvan is not
sustained. Additionally, independent claims 15, 21, and 27 recite
substantially similar limitations. (App. Br. 19–28, Claims App’x.). The
Examiner’s findings are similar to the findings discussed above with regard
to the rejection of independent claim 1. (Ans. 24–26). Accordingly, for the
same reasons as discussed above, the Examiner’s rejections of independent
claims 15, 21, and 27 and depending claims 16–20, 22–26, and 28–30
(which were not separately argued by Appellant), as anticipated by Istvan
are not sustained.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–30 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)(1)(iv).

REVERSED
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