Ex Parte Newman et al

Patent Trial and Appeal Board

Nov 3, 2016

13093878 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/093,878
23553 7590
MARKS & CLERK
P.O. BOX957
STATIONB
04/26/2011
OTTA WA, ON KIP 5S7
CANADA
11/03/2016
FIRST NAMED INVENTOR
Hubert B. Newman
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.
25397-US 9540
EXAMINER
LEVY,AMYM
ART UNIT PAPER NUMBER
2179
MAILDATE DELIVERY MODE
11/03/2016 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 HUBERT B. NEWMAN and QUENTIN G. GARNIER
Appeal2015-004938
Application 13/093,878
Technology Center 2100
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 4 and 6-9, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-004938
Application 13/093,878
Representative Claim
4. A method executed by an end user device, comprising:
receiving at the end user device an ISO (International
Organization for Standardization) transport stream from an IP
Multimedia Subsystem (IMS) server;
displaying on the end user device video from the ISO
transport stream, the video having been captured by another end
user device;
receiving content on the end user device; and
sending by the end user device the content to the IMS
server.
Mockett
Hsiao
Prior Art
US 2007 /0266170 Al
US 2010/0198981 Al
Examiner's Rejections
Nov. 15, 2007
Aug. 5, 2010
Claims 4, 6, 8, and 9 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Mockett.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mockett and Hsiao.
ANALYSIS
We adopt the findings of fact made by the Examiner in the Final
Rejection and Examiner's Answer as our own. We concur with the
conclusions reached by the Examiner for the reasons given in the
Examiner's Answer. We address the following points for emphasis.
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Appeal2015-004938
Application 13/093,878
Section j 02 rejection of claims 4, 6, 8, and 9
Claim 4 recites "displaying on the end user device video" sent from an
IP Multimedia Subsystem (IMS) server, and "sending by the end user device
the content to the IMS server." Appellants' Specification discloses their
invention allows a user watching captured video of an event to share chat
text while watching the event. Spec. i-f 9.
The Examiner finds Figure 1 of Mockett describes client 104 in
bidirectional communication with server 102 over network 106, which
describes "sending by the end user device the content to the IMS server."
Ans. 5. Appellants contend that data sent from client device 104 to server
102 of Mockett are commands, not content within the meaning of claim 4,
because claim 6 recites the content is chat text, and claim 7 recites the
content is video. Reply Br. 3--4. However, "the presence of a dependent
claim that adds a particular limitation gives rise to a presumption that the
limitation in question is not present in the independent claim." Phillips. V.
AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 2005). Here, dependent
claims 6 and 7 give rise to the presumption that the scope of "the content"
recited in independent claim 4 encompasses something other than the "chat
text" or "video" content of dependent claims 6 and 7.
Appellants contend that the claimed content refers to actual data, not
just commands to be executed by the server. Reply Br. 3--4. However,
Appellants have not persuasively explained how the commands of Mockett
are anything other than bits of actual data. Accepting Appellants' definition
of the claimed content as actual data, Appellants have not provided
persuasive evidence or argument to distinguish the claimed content from the
commands described by Mockett.
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Appeal2015-004938
Application 13/093,878
We agree with the Examiner that ivfockett' s description of sending
commands from the client to the server describes "sending by the end user
device the content to the IMS server," as recited in claim 4. The Examiner's
additional findings for this limitation are cumulative. We address the
Examiner's findings for Paragraphs 57 and 123 of Mockett for emphasis.
The Examiner finds Paragraphs 57 and 123 of Mockett disclose
"sending by the end user device the content to the IMS server" that sent
video to the end user device. Final Act. 6; Ans. 6-7. Paragraphs 57 and 123
of Mockett describe two users interacting in a video chat environment, and
also describe synchronizing and coordinating rich media with the video chat,
to allow the users to simultaneously observe the same rich media while
interacting in the video chat environment.
Appellants contend the chat data captured by each user's device of
Mockett is sent to a third party chat server, not to the server that sends the
rich media. App. Br. 4--5; Reply Br. 4--5. However, claim 1 does not
require the user's device to send chat data to the server that sends rich
media. Claim 1 only requires the user's device to send content, such as chat
data, to a server that sends video, such as chat video from another user, to
the end user's device. Appellants' contention is not commensurate with the
scope of the claim. Appellants do not persuasively distinguish "sending by
the end user device the content to the IMS server" that sends video as recited
in claim 4 from capturing, sending, and receiving video chat content to and
from the third party chat server disclosed by Mockett.
We sustain the rejection of claim 4 under 35 U.S.C. § 102. Appellants
do not provide arguments for separate patentability of claims 6, 8, and 9,
which fall with claim 4.
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Appeal2015-004938
Application 13/093,878
Section 103 rejection of claim 7
Claim 7 recites "capturing video on the end user device," and
"sending by the end user device the captured video" to the server. Appellants
contend that the Examiner "has not disclosed a problem that needs to be
addressed," and has "simply purported to show an advantage that may be
realized by combining the teachings of the cited references." App. Br. 7.
Here, Paragraph 57 of Mockett describes individuals interacting in a
video chat environment, which implies capturing and sending video and chat
data from each individual to the other through a server. The Examiner relies
on Hsaio to make explicit what is implicitly taught by Mockett's description
of video chat, namely, capturing and transmitting video from a client to a
server was within the level of ordinary skill in the art. Final Act. 8. Hsaio's
teaching of capturing and sending video from a client to a server are
cumulative to Mockett's teaching of a video chat environment. Appellants
have not provided persuasive evidence or argument to show capturing and
sending video from a client to a server was "uniquely challenging or difficult
for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 419 (2007))).
We sustain the rejection of dependent claim 7 under 35 U.S.C. § 103.
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Appeal2015-004938
Application 13/093,878
DECISION
The Examiner's rejections of claims 4 and 6-9 are 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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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