Ex Parte Rosenthal et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612880480 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/880,480 09/13/2010 11764 7590 Ditthavong & Steiner, P.C. 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 06/02/2016 FIRST NAMED INVENTOR Noam Rosenthal 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. P4528USOO 9203 EXAMINER CHU,DAVIDH ART UNIT PAPER NUMBER 2616 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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 NOAM ROSENTHAL and TIMO TAPANI VITIKAINEN Appeal2014-009572 Application 12/880,480 Technology Center 2600 Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009572 Application 12/880,480 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the rejection under 35 U.S.C. § 103(a) and enter new grounds of rejection under 35 U.S.C. § 112, first paragraph, pursuant to 37 C.F.R. § 41.50(b). THE INVENTION The application is directed to "rendering content based on chunks and layers." (Abstract.) Claim 1, reproduced below, is illustrative: 1. A method comprising: receiving a request to render content at a device; determining one or more layers of the content; determining one or more patterns of the content corresponding to one or more of the layers; determining one or more chunks based, at least in part, on the one or more patterns; and determining to render at least one of the layers and the corre- sponding one or more chunks separately from the other layers, wherein at least one pattern comprises two or more chunks, and wherein at least one chunk of the at least one pattern is different from another chunk. 1 Appellants identify Nokia Corporation as the real party in interest. (See App. Br. 1.) 2 Appeal2014-009572 Application 12/880,480 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Marion et al. Moore US 6,822,655 Bl US 6,856,323 B2 THE REJECTION Nov. 23, 2004 Feb. 15,2005 Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moore and Marion. (See Final Act. 3-7.) APPELLANTS' CONTENTIONS Appellants argue that the rejections were improper because "it is apparent that Moore and Marion et al. do not disclose or suggest all the features of the claimed invention and that at least some of the missing features are not the type of which Official Notice can be taken, as the Examiner has asserted." (App. Br. 8.) ANALYSIS New Grounds of Rejection Under Section 112 As filed, claim 1 recited a method comprising (a) "receiving a request to render content at a device"; (b) "determining one or more layers of the content"; ( c) "determining one or more patterns of the content corresponding to one or more of the layers"; ( e) "determining one or more chunks based, at least in part, on the one or more patterns"; and (t) "determining to render at least one of the layers and the corresponding one or more chunks separately 3 Appeal2014-009572 Application 12/880,480 from the other layers." Independent claim 9 is a corresponding apparatus claim, and independent claim 1 7 is a corresponding Beauregard claim. Thus, all of the original claims recited determining a pattern of content, determining "chunks" based on the pattern, and determining to render the chunks. Appellants' Specification describes the use of the pattern as follows: "cues can ... be used to determine one or more patterns of the content corresponding to one or more of the layers," and "one or more chunks can be determined based, at least in part, on the one or more patterns," where "[e]ach chunk can correspond to a particular area on a bitmap associated with the content." (Spec. i-f 52-53.) "For example, a rule for the pattern may state that every other chunk in a particular layer is shaded the color blue and the other chunks are shaded green." (Id. i-f 53.) In an amendment dated July 30, 2013, Appellants added the last two limitations to claim 1: "wherein at least one pattern comprises two or more chunks" and "wherein at least one chunk of the at least one pattern is different from another chunk." At the same time, Appellants made similar amendments to the other independent claims. We find that the claims as amended lack the written description support required by 35 U.S.C. § 112, first paragraph.2 2 This application, filed February 15, 2008, is being examined under the pre- AIA version of Section 112. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, § 4(e) (2011) ("The amendments made by this section shall take effect upon the expiration of the I-year period beginning on the date of the enactment of this Act [September 16, 2011] and shall apply to any patent application that is filed on or after that effective date [September 16, 2012]. "). 4 Appeal2014-009572 Application 12/880,480 As noted, the amendments added that "at least one pattern comprises two or more chunks." This "pattern" has its antecedent in the original "one or more patterns." However, as explained above, the original claim and the Specification provide that the "pattern" is used to determine the chunks. (See Spec. i-fi-152-53. 3) Thus, the "pattern" is a scheme used to determine which chunks are to be displayed, not a set of chunks or something that includes the chunks themselves. The Specification does not describe a pattern that both determines the chunks and comprises chunks. For this reason, we conclude that claims 1-20 lack adequate written description support and are, therefore, invalid under 35 U.S.C. § 112, first paragraph. Section 103 Rejections Appellants argue that "even assuming, arguendo, that the pattern of Marion is defined by two or more distinctive shapes, no evidence is provided on this record to support the allegation that with such knowledge, it would have been obvious to a person of ordinary skill in the art to 'determine one or more chunks based, at least in part, on the one or more patterns; and determine to render at least one of the layers and the corresponding one or more chunks separately from the other layers, wherein at least one pattern comprises two or more chunks, and wherein at least one chunk of the at least one pattern is different from another chunk."' (App. Br. 7.) We agree that the Moore/Marion combination does not teach or suggest both "determin[ing] one or more chunks based, at least in part, on 3 Appellants identified paragraph 53 as providing the support for the Amendment. See July 30, 2013 Response Under 37 C.F.R. § 1.111, at 8. 5 Appeal2014-009572 Application 12/880,480 the one or more patterns" and that "at least one pattern comprises two or more chunks" and therefore reverse the Section 103 rejections, although we also observe that, as explained above, such an arrangement is not described in Appellants' Specification. DECISION We enter a NEW GROUND OF REJECTION of claims 1-20 under 35 U.S.C. § 112, first paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b). The rejections of claims 1-20 under Section 103(a) are reversed. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review" and that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) reopen prosecution by submitting an appropriate amendment of the claims so rejected, or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner; or (2) request that the proceeding be reheard under § 41.52 by the Board upon the same Record. 6 Appeal2014-009572 Application 12/880,480 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(B) 7 Copy with citationCopy as parenthetical citation