Ex Parte Niven-Jenkins et al

Patent Trial and Appeal Board

May 12, 2016

13128986 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/128,986 05/12/2011
23117 7590 05/16/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Benjamin P. Niven-Jenkins
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.
LB-36-2364 5032
EXAMINER
MAK,PETERK
ART UNIT PAPER NUMBER
2479
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN P. NIVEN-JENKINS and
ANDREW J. MCLACHLAN
Appeal2015-000363
Application 13/128,986
Technology Center 2400
Before MAHSHID D. SAADAT, JOHN A. EVANS, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-10, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is British
Communications. (App. Br. 3.)
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Application 13/128,986
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to a "content delivery system in which
one or more data distribution servers make data available to a number of
users (subscribers) over a data communications system such as the Internet."
(Spec. i-f 1.) Claim 1 is illustrative, and is reproduced below:
1. A method of providing data on request to an end user
terminal by way of a communications connection from a data
distribution server hosting the data, wherein
the data may be delivered in any of two or more different
modes, wherein
the delivery mode of the data is selected in accordance
with user-specific profile data, and wherein
on receipt of a request for data from an end user, the data
distribution server platform accesses the user-specific service
profile, selects the delivery mode in accordance with the user-
specific service profile, and modifies the data to be delivered in
accordance with the selected delivery mode.
Rejections on Appeal
Claims 1-6 and 8-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prathaban et al. (US 2009/0037361 Al; pub. Feb. 5, 2009)
("Prathaban") and Hwang et al. (US 2002/0107985 Al; pub. Aug. 8, 2002)
("Hwang"). (See Final Office Action (mailed September 16, 2013) ("Final
Act.") 3-10.)
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prathaban, Hwang, and Dougherty et al. (US 6,987,769
B 1; issued Jan. 17, 2006) ("Dougherty"). (See Final Act. 10---11.)
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Application 13/128,986
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
With respect to claim 1, the Examiner finds that "Prathaban teaches
all the claimed limitations, but does not explicitly disclose" the limitation
"modifies the data to be delivered in accordance with the selected delivery
mode." (Final Act. 4--5.) However, the Examiner relies on Hwang with
respect to this limitation, and determines that Hwang "teaches modifies the
data to be delivered in accordance with the selected delivery mode" and that
the delivery mode was selected "in accordance with the user-specific service
profile." (Id.) Specifically, the Examiner determines that paragraphs 15 and
53 and Figure 4 of Hwang disclose "modifying the delivery mode with the
attribute delivery type in the content file." (Ans. 6.)
AppeUants contend that the Examiner erred in making these
determinations. (App. Br. 10---11.) We agree with Appellants that paragraph
53 of Hwang "only teaches that there are different manners of delivery of the
content, not that the data is modified in accordance with a selected delivery
mode."2 (Reply Br. 4.) As further pointed out by Appellants, Hwang
teaches that delivery type field 450, i.e., the delivery mode, "may be used,
2 Since we agree with at least one of the arguments advanced by Appellants,
we need not reach the merits of Appellants' other arguments.
Because we do not sustain the Examiner's rejection for the reasons discussed
herein, we need not address Appellants' further arguments. See Beloit Corp.
v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on "a single
dispositive issue").
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Application 13/128,986
for example, to indicate [how] the associated content should be delivered."
(Hwang i-f 53; Reply Br. 4--5.) We further observe that Hwang does not
disclose that the "delivery mode" (delivery type field 45) is selected "in
accordance with user-specific profile data" (user profile record 500). (See
Hwang i-fi-160---66; Reply Br. 4--5.) In addition, we agree with Appellants that
paragraph 15 of Hwang does not teach the content is modified by the
delivery mode, and instead, discloses "identify[ing] the wireless mobile
device or devices to which the content is to be delivered and/or to perform
computations necessary to deliver the content, is described." (See Hwang
i-f 15; Reply Br. 4.)
For the foregoing reasons, we are persuaded of the Examiner error in
the rejection of claim 1. Independent claim 8 recites a substantively similar
limitation: "a data adaptor configured to modify the requested data for
delivery in one of two or more different modes in accordance with user-
specific profiies." The Examiner aiso reiies on the same portions of Hwang
discussed above with respect to this limitation of claim 8. We are persuaded
that the Examiner's rejection of claim 8 is deficient for the same reasons
discussed above with respect to claim 1.
Thus we do not sustain the 35 U.S.C. § 103(a) rejection of claims 1
and 8, as well as claims 2-6, 9, and 10 dependent therefrom, as unpatentable
over Prathaban and Hwang. We also do not sustain the 35 U.S.C. § 103(a)
rejection of claim 7 over Prathaban, Hwang, and Dougherty because the
Examiner has not identified any teachings in Dougherty with regard to the
limitations at issue to overcome the above-stated deficiency of the
Prathaban-Hwang combination. (See Final Act. 10-11; Ans. 3-9.)
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Application 13/128,986
DECISON
The decision of the Examiner to reject claims 1-10 is reversed.
REVERSED
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