Ex Parte Marilly et alDownload PDFPatent Trial and Appeal BoardApr 30, 201411516777 (P.T.A.B. Apr. 30, 2014) 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. 11/516,777 09/07/2006 Emmanuel Marilly LUTZ 200642US01 9286 48116 7590 05/01/2014 FAY SHARPE/LUCENT 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115-1843 EXAMINER BANTAMOI, ANTHONY ART UNIT PAPER NUMBER 2423 MAIL DATE DELIVERY MODE 05/01/2014 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 EMMANUEL MARILLY, GERARD DELEGUE, OLIVIER MARTINOT, STEPHANE BETGE-BREZETZ ____________ Appeal 2011-007636 Application 11/516,777 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007636 Application 11/516,777 2 STATEMENT OF THE CASE The Examiner finally rejected claims 1-3, 5, 8, 9, 11-19 and 21-30. Claims 4, 6, 7, 10, and 20 were cancelled. Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to a method “adapted to analyze the data of said [content] streams in order, in the event of detection of an interactivity point to determine the corresponding service application as a function of at least one selected criterion.” (Abstract). Claim 1, reproduced below, is representative of the claimed subject matter: 1. Method of broadcasting content data streams to mobile communication terminals (Ti) attached to at least one first broadcast network (R1), the method comprising: [A] [a1] inserting at least interactivity points at selected places in contents to be broadcast in the form of streams, [a2] each interactivity point designating a corresponding group of service applications, [B] [b1] in the event of reception in a destination terminal (Ti) of said streams broadcast via said first network (R1), [b2] displaying the data that they contain and, [b3] in the event of detecting an interactivity point, [b4] determining a first service application from the corresponding group of service applications as a function of at least one selected criterion relating to said terminal (Ti), so that said first service application is executed by said terminal (Ti); [C] wherein the first service application is an interactive service application and, in the event of executing an interactive service application in the terminal (Ti), messages are exchanged via a return channel set up between said terminal (Ti) and a selected Appeal 2011-007636 Application 11/516,777 3 address of said first network (R1) or of a two-way second communication network (R2) under the control of a user of said terminal (Ti). (Steps lettered and disputed limitation emphasized). REJECTIONS R1. Claims 1-3, 5, 8, 9, 11, 13, 15, 17-19, 21, and 23-30 stand rejected under 35 USC 103(a) over the combined teachings of US Patent Application Publication No. 2002/0112249 (“Hendricks”) and US Patent Application Publication No. 2007/0130581 (“Del Sesto”). R2. Claims 12, 14, 16, and 22 stand rejected under 35 USC 103(a) over the combined teachings Hendricks, Del Sesto, and US Patent Application Publication No. 2005/0235332 ("Manson"). GROUPING OF CLAIMS Based on Appellant's arguments, we decide the appeal of the §103 rejections R1 of claims 1-3, 5, 8-9, 11, 13, 15, 17-19, 21, and 23-30 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1 We address the §103 rejection R2 of claims 12, 14, 16, and 22 separately, infra. 1 Appellants filed a Notice of Appeal on July 6, 2010. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also MPEP Rev. 8, July 2010. Appeal 2011-007636 Application 11/516,777 4 ANALYSIS R1. A. As an initial matter of claim construction, we note the temporal conditional “in the event" clauses and “wherein” clause specifying optional steps of claim 1: in the event of reception in a destination terminal (Ti) of said streams broadcast via said first network (R1), displaying the data that they contain and, in the event of detecting an interactivity point, determining a first service application from the corresponding group of service applications as a function of at least one selected criterion relating to said terminal (Ti), so that said first service application is executed by said terminal (Ti); wherein the first service application is an interactive service application and, in the event of executing an interactive service application in the terminal (Ti), messages are exchanged via a return channel set up between said terminal (Ti) and a selected address of said first network (R1) or of a two-way second communication network (R2) under the control of a user of said terminal (Ti). (Emphasis added). We conclude the contested conditional “in the event” clauses and “wherein” clause limitations are not positively recited as requiring steps to be performed.2 Moreover, if the temporal conditional limitation never 2 See MPEP §2111.04 regarding “wherein” clauses: Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the Appeal 2011-007636 Application 11/516,777 5 occurs, the scope of the claim is unclear. See In re Johnston, 435 F.3d. 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim because they can always be omitted.”). Therefore, a question arises as to how much patentable weight, if any, should be given to the contested conditional limitations and conditional “wherein” clause limitations. Even assuming arguendo that these limitations may be accorded weight by our reviewing court, we find the preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for the reasons discussed below. B. Regarding the claim 1 limitation: “[a2] each interactivity point designating a corresponding group of service applications,” (emphasis added), Appellants contend: Even if the Hendricks “virtual object location” could be related to the claimed “interactivity point” and the Hendricks “virtual object” could be related to the claims “service application,” the Hendricks “virtual object location” clearly does not designate a “group of virtual objects.” (Emphasis added; Reply Br. 3). We find Appellants’ contention unpersuasive that Hendricks' virtual object location (“interactivity point”) only designates one virtual object, not the claimed “group of virtual objects” (Reply Br. 3), because Hendrick's limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. (MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012). Appeal 2011-007636 Application 11/516,777 6 virtual object location designates “available virtual objects stored in the virtual object storage 720” (“group of virtual objects”). (emphasis added; ¶[00275]; Ans. 22-23). In addition, we agree with the Examiner that Del Sesto also would have taught or suggested the limitation [a2] “group of virtual objects.” Specifically, Del Sesto’s interactive identifier and code identifiers (“interactivity point”) designate the group of “multiple applications in database 644 corresponding to the interactive content code 300.” (“group of virtual objects”) (Ans. 23; Del Sesto ¶[0061]; See Del Sesto ¶¶[0057]-[0061]). For these reasons, on this record we are not persuaded the Examiner erred. We find Appellants’ similar arguments in the Reply Brief (5-10), regarding commensurate limitations of claims 18 and 21, unpersuasive for the same reasons. C. Regarding the claim 1 preamble: “mobile communication terminals (Ti),” and limitation [B] “[b1] in the event of reception in a destination terminal (Ti) of said streams broadcast via said first network (R1), . . . [b3] determining a first service application from the corresponding group of service applications as a function of at least one selected criterion relating to said terminal (Ti), so that said first service application is executed by said terminal (Ti);” (emphasis added) Appellants' contend: Regarding the additional cited portions of Del Sesto, the Appellant respectfully disagrees with the Examiner's interpretation that the use of bandwidth capacity and demographics in Del Sesto is the use of “terminal criterion.” . . . The Del Sesto bandwidth capacity and demographics are “affiliate criterion” rather than "terminal criterion." The Del Sesto CPE 248 relates to the claimed Appeal 2011-007636 Application 11/516,777 7 “terminal.” The Del Sesto local subsystem 628 clearly does not relate to the “terminal” of claim 1 (Reply Br. 3) Appellants' contentions are not persuasive because Appellants’ narrow interpretation of “relating to said terminal” is not commensurate with the broader scope of the claim language. (Claim 1). We broadly but reasonable construe the recited “selection criterion relating to said terminal” language of claims 1, 18, and 26 as covering any nexus, correspondence, or association, no matter how attenuated, between the criterion and said terminal. Further, we conclude “selection criteria” could broadly cover, for example: bandwidth information, geographic information, demographic information and other criteria, in light of Appellants’ description in the Specification. (Spec. Pg. 9). Appellants' claims do not limit the relationship between the criterion and the terminal, and we do not read any such limitation into the claims. The Examiner further finds, and we agree, Del Sesto teaches or suggests the use of various criteria “related to” the end user terminals in selecting the interactive content, including, e.g., bandwidth of the end user devices on a broadcast network, or demographic information about the local subsystem network in which a terminal operates. (Ans. 24-25). D. Regarding claim 1 limitations [b1] and [b3], Appellants also contend Del Sesto's local subsystem is not the claimed mobile terminal in limitation [b1]. (App. Br. 10-11; Reply Br. 3). Appellants' contentions are not persuasive because the Examiner relies upon the combined teaching and suggestions of Hendricks and Del Sesto, Appeal 2011-007636 Application 11/516,777 8 not Del Sesto alone for the suggestion of the [b3] determining performed [b1] at the mobile terminal. Here, the Examiner finds, and we agree, Hendricks teaches the selection of interactive service applications at a mobile terminal. (Ans. 22; e.g. Hendricks ¶[275]). The Examiner also finds Del Sesto would have taught or suggested limitation [b2]. (Ans. 23-23). We agree with the Examiner that the combination of Hendricks and Del Sesto would have taught or suggested limitations [b1] and [b3]. (Ans. 24, 22-24). For these reasons, on this record we are not persuaded the Examiner erred. Appellants’ similar arguments in the Reply Brief, pages 5-10, concerning commensurate limitations of independent claims 18 and 21, are unpersuasive for the same reasons. Accordingly, we sustain the rejection R1 of representative claim 1, and of claims 2, 3, 5, 8, 9, 11, 13, 15, 17-19, 21, and 23-30, which fall therewith. R2. Appellants contend claims 12, 14, 16, and 22 are patentable for the same reasons previously advanced regarding claim 1. (App. Br. 15-16). However, we are not persuaded the Examiner erred regarding the rejection R2 of claims 12, 14, 16, and 22 for the same reasons given above regarding claim 1. Appeal 2011-007636 Application 11/516,777 9 DECISION We affirm the Examiner’s rejections of claims 1-3, 5, 8, 9, 11-19 and 21-30 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED pgc Copy with citationCopy as parenthetical citation