Ex Parte Minor

Patent Trial and Appeal Board

Mar 17, 2015

11934519 (P.T.A.B. Mar. 17, 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.
11/934,519 11/02/2007 Sten Hakan Minor 9342-409 / PS07 0724 US1 5896
54414 7590 03/18/2015
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
SALCE, JASON P
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
03/18/2015 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 STEN HAKAN MINOR
____________________

Appeal 2013-000019
Application 11/934,519
1

Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
According to Appellant, the real party in interest is Sony Ericsson Mobile
Communications AB. App. Br. 1.
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STATEMENT OF THE CASE
2

The Invention
Appellant's claimed invention relates to "[a]n electronic device . . .
operated by receiving a commercial from a service provider . . . [in which]
[t]he commercial is processed to identify a destination device on a Local
Area Network (LAN) to which the commercial is to be sent. The
commercial is then sent to the destination device. Spec. 17.
Exemplary Claims
Claims 1 and 13, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A method of operating an electronic device,
comprising:
receiving a commercial from a service provider at the
electronic device, the commercial comprising routing
information that associates the commercial with destination
device types that are configured to play the commercial;
processing the commercial to identify a destination
device on a Local Area Network (LAN) to which the
commercial is to be sent based on the association between the
commercial and destination device types; and
sending the commercial to the destination device.
13. A method of operating an electronic device,
comprising:

2
Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Apr. 16, 2012); Examiner's Answer ("Ans.," mailed June 18, 2012); Final
Office Action ("Final Act.," mailed Nov. 8, 2011); and the original
Specification ("Spec.," filed Nov. 2, 2007). No Reply Brief has been made
of record.
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sending a commercial to a routing device on a Local
Area Network (LAN), the commercial comprising routing
information that associates the commercial with destination
device types that are configured to play the commercial; and
receiving notification from the routing device that the
commercial has been played by a destination device on the
LAN.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Zigmond et al.
("Zigmond")
US 6,698,020 B1 Feb. 24, 2004
Sparrell et al.
("Sparrell")
US 2004/0221304 A1 Nov. 4, 2004
Smith US 7,546,383 B2 June 9, 2009
Rejections on Appeal
R1. Claims 1–3, 7, and 9–12 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sparrell. Final Act. 5.
R2. Claims 4–6, 8, and 13–22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sparrell and
Zigmond. Final Act. 8.
R3. Claims 1–3, 7, and 9–12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sparrell and Smith.
Final Act. 12.
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R4. Claims 4–6, 8, and 13–22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Sparrell, Smith, and
Zigmond. Ans. 15–16.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 3–18), we decide the
appeal of Rejection R1 of claims 1–3, 7, and 9–12 on the basis of
representative independent claim 1; we decide the appeal of Rejection R2 of
claims 4–6, 8, and 13–22 on the basis of representative independent claim
13; we decide the appeal of Rejection R3 of claims 1–3, 7, and 9–12 on the
basis of representative independent claim 1; and we decide the appeal of
Rejection R4 of claims 4–6, 8, and 13–22 on the basis of representative
independent claim 13.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(1)(iv)
(2012).
We disagree with Appellant's arguments with respect to claims 1–22,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
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highlight and address specific findings and arguments regarding claims 1
and 13 for emphasis as follows.
1. § 102 Rejection R1 of Claims 1–3, 7, and 9–12
Issue 1
Appellant argues (App. Br. 3–8) the Examiner's rejection of
claims 1–3, 7, and 9–12 under 35 U.S.C. § 102(b) as being anticipated by
Sparrell is in error. These contentions present us with the following issue:
Did the Examiner err in finding Sparrell discloses a method that
includes, inter alia, the step of "receiving a commercial from a service
provider at the electronic device, the commercial comprising routing
information that associates the commercial with destination device types
that are configured to play the commercial," as recited in claim 1?
(emphasis added).
Analysis
Appellant agrees that paragraphs 28 and 30 of Sparrell teach
transmission of an advertisement to different device types for playback
thereon. App.Br. 6. However, Appellant contends Sparrell does not teach or
suggest "including routing information within a commercial that associates
the commercial with destination device types that are configured to play the
commercial as recited in the independent claims," and "[t]here is no
description in paragraphs 28 and 30 of a commercial or advertisement
including information therein that associates the commercial with
destination device types that are configured to play the advertisement or
commercial." Id.
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During examination, a claim must be given its "broadest reasonable
interpretation consistent with the [S]pecification," as it would be interpreted
by one of ordinary skill in the art. Because the applicant has the opportunity
to amend claims during prosecution, giving a claim its broadest reasonable
interpretation will reduce the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) ("During patent examination the pending claims must be interpreted
as broadly as their terms reasonably allow.").
In response to Appellant's assertions, the Examiner concludes the
recited term "associates" is broad, and does not require "that the actual
routing information contain a device type value." Ans. 4. Instead, the claim
only requires that there be an "association" between the commercial and the
destination device type, and this "association" is identified by the Examiner
as having multiple ways of being defined, e.g., by the IP or Real Time
Protocol address data, the location of the device type, or the physical
attributes of the device type. Ans. 5. The Examiner also finds Sparrell
discloses an embodiment in which advertisements are transmitted to
playback devices. Id. (citing Sparrell ¶ 30).
We agree with the Examiner's unrebutted findings in the Answer cited
above.
3

Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of

3
Appellant did not file a Reply Brief to rebut the Examiner's findings and
legal conclusions in the Answer.
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the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1 and claims 2, 3, 7,
and 9–12 which fall therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 4–6, 8, and 13–22
Issue 2
Appellant argues (App. Br. 8–11) the Examiner's rejection of claims
4–6, 8, and 13–22 under 35 U.S.C. § 103(a) as being obvious over the
combination of Sparrell and Zigmond is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes the steps of "sending a commercial . . .
comprising routing information that associates the commercial with
destination device types that are configured to play the commercial; and
receiving notification from the routing device that the commercial has been
played by a destination device on the LAN," as recited in claim 13?
Analysis
Appellant essentially restates the arguments concerning the alleged
deficiencies of Sparrell, as cited above with respect to Issue 1. App.
Br. 8–10. Appellant further contends Zigmond describes selecting and
inserting advertisements into video programming, but "fails to provide the
teachings missing from Sparrell with respect to the advertisements
comprising routing information that identifies destination device types on
which the advertisement can be played." App. Br. 10. However, we find
Appellant fails to address the Examiner's findings concerning the teachings
of Zigmond with respect to claim 13 (Final Act. 8–10), and also fails to
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rebut the Examiner's findings in the Answer. As pointed out by the
Examiner, "Applicant reiterates the arguments presented in section A of the
Appeal Brief . . . [and] further states that Zigmond fails to provide the
teachings missing from Sparrell, but state[s] no additional arguments
regarding the Zigmond reference." See n.3, supra.
Mere attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (citing In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984)); and Ex parte Belinne, No. 2009-004693,
2009 WL 2477843 at *4 (BPAI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.");
cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art."). Arguments not made are therefore waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 13 and claims 4–6, 8,
and 14–22 which fall therewith. See Claim Grouping, supra.
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3. § 103 Rejection R3 of Claims 1–3, 7, and 9–12
Issue 3
Appellant argues (App. Br. 11–14) the Examiner's rejection of claims
1–3, 7, and 9–12 under 35 U.S.C. § 103(a) as being obvious over the
combination of Sparrell and Smith is in error. These contentions present us
with the following issue:
Did the Examiner err in finding Sparrell discloses a method that
includes, inter alia, the step of "receiving a commercial from a service
provider at the electronic device, the commercial comprising routing
information that associates the commercial with destination device types
that are configured to play the commercial," as recited in claim 1?
(emphasis added).
Analysis
We first note Appellant's arguments (App. Br. 11–13) are essentially
the same as set forth with respect to the teachings and suggestions of
Sparrell in connection with for Issue 1, supra.
With respect to the Smith reference, Appellant contends Smith does
not appear to teach or suggest "a commercial or advertisement comprises
routing information that identifies device types on which the commercial or
advertisement can be played and then selecting a destination device to which
a commercial will be sent based on the association between the commercial
and the destination device types," and alleges the passages of Smith cited by
the Examiner "provide further detail regarding the use of broadcast region
configuration files that allow a client device to selectively receive data based
on a region identifier associated with the device," but "[n]one of these
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passages, however, describe including in a commercial or advertisement
routing information that associates the commercial with destination device
types configured to play the commercial." App. Br. 14.
In response, the Examiner finds:
Figure 9 and Column 19, Lines 14 through Column 20,
Line [3 of Smith] teach selecting . . . configuration settings and
routing information with an identifier that matches the selected
configuration setting. This is further evidenced at Column 17,
Line 57 through Column 18, Line 3, wherein the client device
contains a task object that is used for obtaining data for a
particular data type associated with a selected configuration
type of the client device (see Column 3, Line 63 through
Column 4, Line 8 for receiving data with a region identifier in a
DVD player, which identifies the type of data transmitted to the
DVD player and matches the type of data to the type of device
defined by the region identifier).
Ans. 6–7 (emphasis omitted). We agree with the Examiner's findings which
remain unrebutted by Appellant. See n.3, supra.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and claims 2, 3, 7,
and 9–12 which fall therewith. See Claim Grouping, supra.
4

4
In light of our affirmance of anticipation Rejection R1 of claim 1 over
Sparrell, we also note in connection with obviousness Rejection R3 that a
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984)
(citation omitted).
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4. § 103 Rejection R4 of Claims 4–6, 8, and 13–22
Issue 4
Appellant argues (App. Br. 15–18) the Examiner's rejection of claims
4–6, 8, and 13–22 under 35 U.S.C. § 103(a) as being obvious over the
combination of Sparrell, Smith, and Zigmond is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes the steps of "sending a commercial . . .
comprising routing information that associates the commercial with
destination device types that are configured to play the commercial; and
receiving notification from the routing device that the commercial has been
played by a destination device on the LAN," as recited in claim 13?
Analysis
Appellant essentially repeats his arguments concerning the alleged
deficiencies of Sparrell and Zigmond, as cited above with respect to Issue 2.
App. Br. 15–17. With respect to the teachings of Smith, Appellant alleges
"Smith does not appear to disclose or suggest, however, that a commercial or
advertisement comprises routing information that identifies device types on
which the commercial or advertisement can be played and then selecting a
destination device to which a commercial will be sent based on the
association between the commercial and the destination device types" (App.
Br. 17–18), and that the passages of Smith cited by the Examiner (see Final
Act. 17; Ans. 6–7) do not "describe including in a commercial or
advertisement routing information that associates the commercial with
destination device types configured to play the commercial." App. Br. 18.
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In response, the Examiner finds Appellant's arguments against
Rejection R4 "reiterate[] the arguments presented in [Issues 1 and 3]," to
which the Examiner responded, and which remain unrebutted by Appellant.
See n.3, supra.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner's reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 13 and claims 4–6, 8,
and 14–22 which fall therewith. See Claim Grouping, supra.
CONCLUSIONS
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1–3, 7, and 9–12 under 35 U.S.C. § 102(b) over the cited prior
art of record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2–R4 of claims 1–22 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1–22.
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) (2011).
AFFIRMED
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