Ex Parte Mettala et al

Patent Trial and Appeal Board

Oct 31, 2016

12123761 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/123,761 05/20/2008
11764 7590
Ditthavong & Steiner, P,C,
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
11/02/2016
FIRST NAMED INVENTOR
Hannu Mettala
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.
P3413USOO 1438
EXAMINER
JAKOVAC,RYANJ
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
docket@dcpatent.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANNU METTALA, TONI STRANDELL, and
BRENDA CASTR01
Appeal2015-006149
Application 12/123, 7 61
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-35. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellants identify Nokia Corporation as the real party in interest. App.
Br. 1.
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Application 12/123, 7 61
STATEMENT OF THE CASE
Introduction
Appellants' claimed invention is directed to publishing content to be
shared. Spec. i-f 1. In a disclosed embodiment, a user may upload content
(e.g., a photo or video) to be shared using a first online service. Spec. i-f 9.
According to the Specification, exemplary embodiments "receive the content
item and distribute the content item to other online services." Spec. i-f 9. In
addition to uploading the content item, a user may also include tags, such as
metadata, associated with the content item that include publishing
preferences or rules indicating how the content item is to be published.
Spec. ,-r 48.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A method comprising:
receiving, by a processor, a content item from an online
service, wherein the content item is published to the online
service;
receiving, by the processor, a selection of user contact
entries, wherein the selection of user contact entries provides
user contacts associated with the selected user contact entries
with a notification that the content item has been published;
identifying, by the processor, one or more online services
associated with the selected user contact entries; and
determining to publish, by the processor, the content item
on the one or more identified online services,
wherein receiving the content item includes receiving one
or more tags associated with the content item, the one or more
tags include publishing preferences or rules.
2
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Application 12/123, 7 61
The Examiner's Rejections2
1. Claims 1, 2, 7, 9-12, 17, 19-22, 27, 29-31, and 34 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Lisiecki et al.
(US 2002/0143888 Al; Oct. 3, 2002) ("Lisiecki"); Young (US 8,341,219
Bl; Dec. 25, 2012); Aarabi et al. (US 2008/0069480 Al; Mar. 20, 2008)
("Aarabi"); and Singh (US 2008/0103906 Al; May 1, 2008). Final Act. 6-
12.
2. Claims 8, 18, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lisiecki, Young, Aarabi, Singh, and Mcintyre et al.
(US 2004/0201709 Al; Oct. 14, 2004) ("Mcintyre"). Final Act. 13.
3. Claims 3, 5, 13, 15, 23, 25, 32, and 35 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lisiecki, Young, Aarabi,
Singh, and Huck (US 2009/0182745 Al; July 16, 2009). Final Act. 14--15.
4. Claims 4, 14, 24, and 33 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Lisiecki, Young, Aarabi, Singh, Huck,
and Trauth (US 2008/0235592 Al; Sept. 25, 2008). Final Act. 16-17.
5. Claims 6, 16, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lisiecki, Young, Aarabi, Singh, and Trauth. Final
Act. 18.
2 In the headers for the rejections of claims 3---6, 13-16, 23-26, 32, 33, and
35, the Examiner mistakenly omits Singh, which is relied upon in rejecting
the base claims. See Final Act. 6-18. Appellants respond to the rejections
as including Singh. App. Br. 22-23. Thus, for purposes of our review we
include Singh in the rejection and treat the Examiner's typographical error as
harmless.
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Application 12/123, 7 61
6. Claims 1, 7, 9-11, 17, 19-21, 27, 29-31, and 34 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Singh and Aarabi.
Final Act. 19-21.
7. Claims 2, 12, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Singh, Aarabi, and Reshef et al. (US 2008/0178081
Al; July 24, 2008) ("Reshef'). Final Act. 22.
8. Claims 3, 5, 13, 15, 23, 25, 32, and 35 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Singh, Aarabi, and Huck.
Final Act. 23-24. 3
9. Claims 4, 14, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Singh, Aarabi, Huck, and Trauth. Final Act. 25.
10. Claims 6, 16, 26, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Singh, Aarabi, and Trauth.
Final Act. 26-27.
11. Claims 8, 18, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Singh, Aarabi, Young, and Mcintyre. Final Act. 28.
Issue on Appeal
Did the Examiner err in finding the combination of Singh and Aarabi
teaches or suggests "wherein receiving the content item includes receiving
one or more tags associated with the content item, the one or more tags
include publishing preferences or rules," as recited in claim 1?
3 Claim 32 is mistakenly omitted from the header for this rejection, but
otherwise appears in the body of the rejection. Final Act. 23-24. We find
the Examiner's typographical error to be harmless.
4
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Application 12/123, 7 61
ANALYSIS4
In rejecting claim 1, under either alternative rejection (i.e., the
rejection in view of the combination of Lisiecki, Young, Aarabi, and Singh,
or the rejection in view of the combination of Singh and Aarabi), the
Examiner finds, inter alia, Aarabi teaches receiving a content item includes
receiving one or more tags and Singh teaches one or more tags including
publishing preferences or rules. See Final Act. 7-8 (citing Aarabi, Fig. 1;
Singh i-fi-f 18, 23-24, Abstract); Final Act. 20 (citing Aarabi, Fig. 1; Singh
i-fi-f 18, 23-24, Abstract). Thus for the limitation "wherein receiving the
content item includes receiving one or more tags associated with the content
item, the one or more tags include publishing preferences or rules," the
Examiner relies on the combined teachings of Singh and Aarabi.
Appellants assert Aarabi "does not disclose or suggest that the tags
associated with the content item include[] publishing preferences or rules."
App. Br. 18. Appellants additionally assert Singh "does not disclose or
suggest that receiving a content item includes receiving one or more tags
associated with the content item, wherein the one or more tags include
publishing preferences or rules." App. Br. 18; see also Reply Br. 3-5.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCP A 1981 ). Rather, the test for obviousness is whether the combination
4 Throughout this Decision, we have considered the Appeal Brief, filed
December 23, 2014 ("App. Br."); the Reply Brief, filed June 1, 2015
("Reply Br."); the Examiner's Answer, mailed on April 1, 2015 ("Ans.");
and the Final Office Action ("Final Act."), mailed on August 5, 2014, from
which this Appeal is taken.
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Application 12/123, 7 61
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We are not persuaded of Examiner error because Appellants'
arguments are not responsive to the Examiner's rejection and attack the
references separately, whereas the Examiner's rejection relies on the
combined teachings of Aarabi and Singh. As discussed above, the Examiner
relies upon Aarabi in the proposed combination, not Singh, to teach wherein
receiving a content item includes receiving one or more tags associated with
the content item. Final Act. 7-8 (citing Aarabi Fig. 1); see also Ans. 5. The
Examiner relies on Singh to teach one or more tags including publishing
preferences or rules. Final Act. 8 (citing Singh Abstract; i-fi-f 18, 23, and 24);
see also Ans. 5---6. Accordingly, the Examiner finds, and we agree, the
combination of Aarabi and Singh teaches wherein receiving a content item
includes receiving one or more tags associated with the content item, the one
or more tags include publishing preferences or rules.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1 and, for similar reasons, the rejection of independent claims 11, 21,
31, and 34, which recite similar limitations and which were not argued
separately. See App. Br. 16-21, 24. Additionally, we sustain the
Examiner's rejections of dependent claims 2-10, 12-20, 22-30, 32, 33, and
35, which were not argued separately. See App. Br. 21-27.
DECISION
We affirm the Examiner's decision to reject claims 1-35.
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Application 12/123, 7 61
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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