Ex Parte Lipinski et al

Patent Trial and Appeal Board

Apr 22, 2016

11742581 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111742,581 0413012007
22879 7590 04/26/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Gregory J. Lipinski
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.
82223960 5088
EXAMINER
SONG,HEEK
ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
04/26/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. LIPINSKI and PHILIP M. WALKER
Appeal2014-003831
Application 11/742,581
Technology Center 2400
Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
JOHN KENNY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seeks our review under 35 U.S.C. § 134(a) of the
Examiner finally rejecting claims 1-10 and 12-22, all the pending claims in
the present application. Claim 11 is canceled. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to searching protected and
non-protected digital content and providing a uniform view of search results.
See Abstract.
Appeal2014-003831
Application 11/742,581
Claim 1 is illustrative:
1. A system, comprising:
a plurality of electronic devices, the electronic devices
having protected digital content and non-protected digital content; and
a server coupled to the plurality of electronic device,
wherein the server selectively searches the protected
digital content and the non-protected digital content and provides a
uniform view of search results.
Appellants appeal the following rejections:
RI. Claims 1, 2, 4, 6, 10, 12, 17, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Du (US 2011/0047079 Al, Feb. 24,
2011) and Interlandi (US 2009/0044253 Al, Feb. 12, 2009) (Final Act. 3);
R2. Claims 3, 5, 13, 14, 18, and 19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Du, Interlandi, and Upendran (US
2007/0156719 Al, July 5, 2007) (Final Act. 5); and
R3. Claims 7-9, 15, 16, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Du; Interlandi; and Peterka (US
2006/0242069 Al, Oct. 26, 2006) (Final Act. 7).
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to the Appellants'
arguments. We concur with Appellants' conclusion that the Examiner erred
in finding that the combination of cited references teaches or suggests
providing a uniform view of search results, as set forth in each independent
claim.
As identified by Appellant, "no disclosure is made [in Interlandi or
Du] of providing a uniform view of search results including both the
protected and unprotected content" (App. Br. 10-11). For example,
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Appeal2014-003831
Application 11/742,581
although the Examiner finds in Interlandi "[t]he catalogued playlists from
the protected and non-protected content based on the metadata presents to
the user [a] view of both protected and non-protected content of what the
user is looking for" ( Ans.15) and Du teaches "the search results are for
protected content" (id.), the Examiner fails to address or direct our attention
to any teaching of a uniform view of search results.
The ordinary and usual meaning of "uniform" is having always the
same form, manner, or degree. Merriam-Webster's Collegiate Dictionary,
p.1290 (9th Edition 1990). This is consistent with Appellants' Specification
which states "the search results have a uniform appearance regardless of
whether the digital content is protected or non-protected" (see i-f 16; see also
i-f 26). Thus, we find that the claims require providing the same view for any
search result, albeit protected content or non-protected content.
Here, we find that the Examiner's reasoning mainly focuses on the
prior art's ability to search/index protected and non-protected content (see
Ans. 14--15). We cannot say, nor has the Examiner explained, how this
necessarily teaches the specific uniform view of search results. Nor will we
speculate in that regard here in the first instance on appeal.
Regarding the Examiner's reference to Lambert (US Patent
8,010,800 B2) (see Ans. 14), it is unclear to us why this particular prior art is
being introduced here because the Examiner's rejection is under§ 103(a) as
being unpatentable over Du and Interlandi (see Final Act 3). 1 Presumably,
the Examiner is citing Lambert to show that it is well known to display
results in a uniform manner. The cited portions of Lambert, however, at best
1 Appellants have not challenged the introduction of Lambert with the
Examiner's Answer. 37 C.F.R. § 41.40(a).
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Appeal2014-003831
Application 11/742,581
disclose a unified search method that allows end users to locate encrypted
content alongside unencrypted content (see Abstract; col. 2, 1. 45 to col. 3, 1.
58), as opposed to a uniform view of results. The Examiner has not found
that any of the other references of record teach a uniform view of search
results. We are, therefore, constrained by the record before us to find that
the Examiner erred in rejecting claim 1, and claims 2-10 and 12-22 for
similar reasons.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
Accordingly, we will not sustain the Examiner's obviousness rejection of
claims 1-10 and 12-22.
DECISION2
The decision of the Examiner to reject claims 1-10 and 12-22 is
reversed.
REVERSED
2 In the event of further prosecution, we leave it to the Examiner to consider
if the computer-readable medium claim, claim 17, should also be rejected
under 35 U.S.C. § 101. We are compelled to note that the ordinary and
customary meaning of "computer readable medium" to a person of ordinary
skill in the art is broad enough to encompass both non-transitory and
transitory media. Signals are not patentable eligible subject matter under
§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also MPEP
§ 2106(!) (8th ed. Rev. 9 Aug. 2012) and Ex parte Mewherter, 107 USPQ2d
1857 (PTAB 2013) (precedential).
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