Ex Parte Mohapatra

Patent Trial and Appeal Board

Jul 29, 2016

13404645 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/404,645 02/24/2012 Bibhudendu Mahapatra
36738 7590 08/02/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
201104062.01 1006
EXAMINER
NICHOLS, JENNIFER ELIZABETH-JO
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIBHUDENDU MOHAPATRA
Appeal2015-001104
Application 13/404,645
Technology Center 2100
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5, 6, 9-15, and 18-20. Claims 4, 7, 8, 16, and 17
are canceled (Final Act. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellant's claimed invention is directed to "determining a given set
of one or more configuration parameters associated with a given one of the
items of content from a content configuration data structure" (Abstract).
Appeal2015-001104
Application 13/404,645
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method comprising:
receiving, by a processing unit, one or more items of
content including at least a first item of content, the first item of
content being associated with a current group of configuration
parameters and a default group of configuration parameters,
determining from a data structure, by the processing unit,
one or more configuration parameters associated with a the first
item of content, wherein at least one of the one or more
configuration parameters are selected from the current group of
configuration parameters, consisting of a volume parameter, a
brightness parameter, a contrast parameter, and a color
parameter, or the default group of configuration parameters,
consisting of a default volume parameter, a default brightness
parameter, a default contrast parameter, and a default color
parameter;
responsive to a determination that the first item of
content has been running in a browser or a tab of the browser,
outputting, by the processing unit, the first item of content in
the browser or a tab of the browser according to at least one
configuration parameter in the current group of configuration
parameters; and
responsive to a determination that the first item of
content has not been running in the browser or a tab of the
browser, outputting, by the processing unit, the first item of
content in the browser or a tab of the browser according to at
least one configuration parameter in the default group of
configuration parameters.
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Appeal2015-001104
Application 13/404,645
REFERENCES and REJECTIONS
Claims 1-3, 5, and 6 stand rejected under 35 U.S.C. § 112, second
paragraph, as being incomplete for omitting essential steps, such omission
amounting to a gap between the steps. Final Act. 4.
Claims 1-3, 5, 6, 9-15, and 18-20 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite. Final Act. 5.
Claims 1, 3, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kendall et al. (US 2005/0193053 Al; Sept. 1, 2005), in
view of Williams et al. (US 5,977,964; Nov. 2, 1999) and Nishimura (US
2011/0181789 Al; July 28, 2011). Final Act. 8.
Claims 9-15 and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kendall in view of Nishimura. Final Act. 14. 1
ISSUES
The issues are whether the Examiner erred in finding that:
1. the claims are indefinite;
2. the combination of Kendall, Williams, and Nishimura teaches or
suggests the limitations of "responsive to a determination that the first
item of content has been running" and "responsive to a determination
that the first item of content has not been running," as recited in claim
l; and
1 Claims 1, 9-11, and 18 are objected to. See Final Act. 2--4. We decline to
review the objections because they are a petitionable rather than an
appealable matter. See Manual of Patent Examining Procedure § 1002 (9th
Ed., Rev. 07.2015, October 2015).
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Application 13/404,645
3. the combination of Kendall and Nishimura teaches or suggests the
limitations of "responsive to a determination," as recited in claims 9
and 13.
ANALYSIS
Claims 1, 3, 5, 6, 9-15, and 18-20 rejected under 35 U.S.C. § 112,
second paragraph
The Examiner makes the following findings:
(1) Claim 1 is indefinite because the claim recites "responsive to a
determination" but "the limitation is unclear to when the determination
would have been made" as the claim omits the determining step (Final Act.
4). Claims 2, 3, 5, and 6 are rejected based on their dependence on claim 1
(Final Act. 5).
(2) Claim 1 is indefinite because it is unclear whether the "default group" of
configuration parameters is a subset of the "current group" (Final Act. 5).
Independent claims 9 and 13 are rejected on the same rationale (Final Act.
5).
(3) Claim 1 is indefinite because it is unclear "what is happening" during
the first step (directed to "receiving") because the third and fourth steps are
each directed to "responsive to a determination" (Final Act. 5---6).
Independent claims 9 and 13 are rejected on the same rationale (Final Act.
6).
( 4) Claim 9 is indefinite because the term "the configuration parameters"
has insufficient antecedent basis (Final Act. 6). Claims 10-12 are rejected
based on their dependence on claim 9 (Final Act. 6).
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Appeal2015-001104
Application 13/404,645
(5) Claim 13 is indefinite because the terms {"the first set of default
parameters", "the second set of default parameters"} each has insufficient
antecedent basis (Final Act. 7). Claims 14, 15, and 18-20 are rejected based
on their dependence on claim 13 (Final Act. 7).
Appellant argues that independent claim 1 is not indefinite, because
no essential steps are missing (App. Br. 5, citing In re Mayhew, 527 F.2d
1229 (CCP A 1976)). Appellant also contends that the Examiner has
hypothesized that one of the two recited sets of configuration parameters
might be a subset of the other in order to find the claim is additionally
indefinite (App. Br. 6). Appellant also contends the indefiniteness rejections
of independent claims 9 and 13 do not indicate what wording in the claims is
indefinite (App. Br. 7).
We agree with Appellant regarding the rejections based on items (1)
and (3). Claims 1, 9, and 13 each recite steps beginning with the language
"responsive to a determination." The Examiner is correct in finding such
language "implies that a determination has already been made" (Final Act.
4); however, the claims are not rendered indefinite because the claims fails
to state when the determination is made, as one skilled in the art would
understand that the underlying "determination" may be made at any time
prior to the responsive step. Additionally, we also agree with Appellant that
claims 1, 9, and 13 are not indefinite because two sets of configuration
parameters are recited (item (2)). Accordingly, we reverse the rejections to
claims 1-3, 5, 6, 9-15, and 18-20 described in items (1}-(3) above.
Appellant did not argue the Examiner's rejections based on lack of
antecedent basis for claims 9-15 and 18-20 described in items ( 4 }---( 5)
above; accordingly, we proforma affirm these rejections.
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Appeal2015-001104
Application 13/404,645
Claims 1, 3, 5, 6, 9-15, and 18-20rejectedunder35U.S.C.§103(a)
Appellant argues the Examiner erred in finding the combination of
Kendall, Williams, and Nishimura discloses or suggests "responsive to a
determination that the first item of content has been running" and
"responsive to a determination that the first item of content has not been
running," as recited in claim 1. Particularly, Appellant argues that "[i]n
Kendall/Williams, no mention is made picking any particular configuration
parameter responsive to the determinations claimed" (App. Br. 8) and that
"the relied-upon portions of Nishimura are out in left field, having nothing at
all to do with browsers, much less the specific determinations claimed"
(App. Br. 9).
We are not persuaded by Appellant's arguments. The Examiner finds,
and we agree, that Kendall discloses parameters chosen from both user
selected preferences and default preferences (Final Act. 8, citing Kendall
i-fi-f l 7-18) and web page rendering using both user selected preferences and
default preferences (Final Act. 9, citing Kendall i1 3 7). 2 The Examiner also
finds, and we agree, that Nishimura discloses "responsive to determining
that the content has been running (normal watching), the content is outputted
at a user adjusted value; and responsive to determining that the content has
2 We note that in Figure 7 of Kendall (corresponding to i137), steps 47, 48,
51, and 52 are performed responsive to a determination that a web page has
not been running in a browser and the web page has no stored preferences,
and steps 53, 54, 50, and 52 are performed responsive to a determination that
a web page is running in a browser and a preference has been received.
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Appeal2015-001104
Application 13/404,645
not been running (playback), the content is outputted at a default value"
(Ans. 11).
Appellant's argument is unpersuasive of error because Appellant
attacks Nishimura individually without addressing the combination of
references, and thus fails to address the Examiner's findings. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.").
Therefore, Appellant has not persuaded us the Examiner's combination
rationale (see Ans. 11) is erroneous or that a person of ordinary skill in the
art would not have reached the conclusions reached by the Examiner. See
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006) ("[T]he proper question is whether the
ordinary artisan possesses knowledge and skills rendering him capable of
combining the prior art references.").
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and dependent claims 2, 3, 5, and 6 not separately argued.
Appellant's arguments regarding independent claims 9 and 13 are
substantively identical to Appellant's arguments regarding independent
claim 1 (see App. Br. 10), and we sustain the Examiner's rejection of
independent claims 9 and 13, and dependent claims 10-12, 14, and 18-20
not separately argued, for the reasons discussed above.
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Application 13/404,645
The Examiner:
CONCLUSION
1. erred in finding claims 1-3, 5, and 6 are indefinite, but did not err in
finding claims 9-15 and 18-20 are indefinite;
2. did not err in finding the combination of Kendall, Williams, and
Nishimura teaches or suggests the limitations of "responsive to a
determination that the first item of content has been running" and
"responsive to a determination that the first item of content has not
been running," as recited in claim 1; and
3. did not err in finding the combination of Kendall and Nishimura
teaches or suggests the limitations of "responsive to a determination,"
as recited in claims 9 and 13.
DECISION
The Examiner's decision rejecting claims 1-3, 5, 6, 9-15, and 18-20
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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