Ex Parte LejeuneDownload PDFPatent Trial and Appeal BoardAug 21, 201512355578 (P.T.A.B. Aug. 21, 2015) Copy Citation 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 2 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 Appeal 2013-006192 Application 12/355,578 3 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 Appeal 2013-006192 Application 12/355,578 4 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 Appeal 2013-006192 Application 12/355,578 5 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 gvw Copy with citationCopy as parenthetical citation