Ex Parte Sharma et al

Patent Trial and Appeal Board

Jun 30, 2015

11893136 (P.T.A.B. Jun. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KSHITIJ SHARMA and PRANAV KAMKHALIA

Appeal 2012-005652
Application 11/893,136
Technology Center 2100
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Before JAMES T. MOORE, ERIC B. CHEN, and
JEREMY J. CURCURI, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE

Appellants’ invention is directed to digital content distribution. More
specifically, it concerns digital content distribution techniques that are said
to allow for customized distribution, receipt, and playing of digital content
via management or control by an external entity. App. Br. 2. In execution,
this is accomplished in an embodiment by executing code referenced in a
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markup language page to request a browser displayable interface
configuration from a server; receiving from the server a definition of the
interface including resource tags; and interpreting the resource tags to
request the digital content. See Spec. ¶ [0002].
Claim is 1 illustrative:
1. A method for disseminating digital content, comprising:
receiving a markup language page configured and supplied from a
distributor server with distributor specific code;
executing the distributor specific code referenced in a markup
language page to request a browser displayable interface configuration from
a supplier server;
receiving from the supplier server a definition of the interface
including resource tags for the digital content to be provided by the supplier
different from the distributor;
and
interpreting the resource tags to request the digital content from the
supplier.

The Examiner relies on the following as evidence of unpatentability:
van Zoest US 6,496,802 B1 Dec. 17, 2002
Lamkin US 7,689,510 B2 Mar. 30, 2010

THE REJECTION

The Examiner rejected claims 1–20 under 35 U.S.C. § 103(a) as
unpatentable over Lamkin and van Zoest. (Fin. Act. 2–16; Ans. 5–18).

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ANALYSIS

We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 5–11) and the Reply Brief (Reply
Br. 2–4) that the Examiner has erred. We have also reviewed the findings
and reasons set forth by the Examiner in the Office Action from which this
appeal is taken (Fin. Rej. 2–16), and the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 19–
22).

REJECTION UNDER § 103

The Examiner has rejected claims 1–20 under 35 U.S.C. § 103(a) as
obvious over Lamkin and van Zoest. Fin. Rej. 2.
The Examiner finds that Lamkin describes a method for managing
content over a network, and also a variety of network mapped user interfaces
including browser displayable interfaces requested from a server. Fin. Rej.
2–3, citing Lamkin, 4:21–5:47 and 42:31–36. The Examiner further found
that Lamkin further teaches a content user interface to identify content
available through the network and the location of content on the network.
(col. 43, ll. 38–40; col. 45, ll. 1–25). Fin. Rej. 2–3
Lamkin has also been found to describe a method for managing
content over a network (col. 4, l. 21–col. 5, l. 47); a variety of network
mapped user interfaces including browser displayable interfaces requested
from a server (col. 42, ll. 31–36), and a content user interface to identify
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content available through the network and the location of content on the
network (col. 43, ll. 38–40; col. 45, ll. 1–25). Fin. Rej. 3.
Additionally, Lamkin has been found to describe remote access to the
network and server to show and distribute the content via a user interface
(col. 34, l. 30–col. 35, l. 58); identifying content having associated metadata
contained in an XML file (resource tags for the content interface) (col. 31, l.
40–col. 32, l. 48), and an interface for a user to define a collection of content
(col. 5, ll. 5–40). Id.
The Examiner admits that Lamkin does not explicitly describe a
supplier server different from the distributor. Fin. Rej. 4.
The Examiner turns to van Zoest, and finds it describes a system for
delivering digital content where the distributor location may receive order
information for digital content from another location, such as a partner or a
third party, to supply digital content to the user at the client site, via an
Application Program Interface (API) (col. 17, l. 14–col. 18, l. 21). More
specifically, van Zoest is said to describe a client location, a distributor
location, and a partner location, where the distributor and partner locations
include a server (col. 3, l. 3–col. 4, l. 56) and where the systems may be
connected via HTML (col. 3, l. 3–col. 5, l. 62). Id.
As both Lamkin and van Zoest are said to be directed to delivering
digital content over a network, i.e., the Internet, and Lamkin disclosed that
the network could be expanded to incorporate third party services (col. 34, l.
49–col. 35, l. 4; col. 52, ll. 8–35). The Examiner concluded that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to apply the server configuration disclosed by van Zoest including
partner, i.e., supplier, distributor, and client locations, to Lamkin, because
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Lamkin disclosed an expandable network configuration which could be
modified to incorporate the separate supplier and distributor locations as
disclosed by van Zoest. Id.
Appellants first argue that the Examiner erred in rejecting claims 1,
15, 17, and 20 under 35 U.S.C. § 103(a) as obvious because van Zoest
“clearly teaches the supplier and distributor being one and the same. Thus,
the [E]xaminer’s reliance on [v]an Zoest to illustrate a ‘supplier different
from the distributor’ is clearly improper.” App. Br. 8. This argument is
based upon the Appellants’ reading of van Zoest that the distributor both
supplies and hosts the digital content. App. Br. 7. A partner as described in
van Zoest is urged by Appellants as describing only a determination whether
a user is authorized to access a work. Id., citing van Zoest, col. 5, ll. 36–39.
The Examiner counters that van Zoest discloses a system for
delivering digital content where the distributor location may receive order
information for digital content from another location, such as a partner or a
third party, to supply digital content to the user at the client site, via an
Application Program Interface. Ans. 21, citing van Zoest, col. 17, l. 14–col.
18, l. 21. van Zoest is further said to describe a client location, a distributor
location having servers (item 100), and a partner location (Fig. 1, items 105
and 133), i.e., a supplier server; where the distributor and partner locations
each include a server. Ans. 21, citing van Zoest, col. 3, l. 3–col. 4, l. 56,
where the systems may be connected on the Internet via HTML, citing van
Zoest, col. 3, l. 3–col. 5, l. 62.
We agree withthe Examiner’s position because such position has the
most merit. Appellants are pointing to a particular preferred embodiment in
van Zoest where authentication is performed. van Zoest, col. 5, ll. 36–39.
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However, this argument does not address the overall description in van
Zoest which includes the Application Program Interface which allows a user
to purchase a work from a retailer, and then access the work through the
network. van Zoest, col. 17, ll. 14–36. van Zoest expressly states that these
may be different parties – a partner or a third party. van Zoest also points to
a preferred embodiment where a distributor communicates with a plurality
of retailers through the program interface. Id., col. 17, ll. 16–20.
Accordingly, we are not persuaded by this first contention of error.
Appellants also argue that, even were van Zoest found to describe a
supplier and distributor being different, the combination of references would
not result in the claimed invention. App. Br. 8. Specifically, it is urged that
as the Examiner has admitted that Lamkin does not distinguish between
distributors and suppliers of digital content, it cannot describe the claim
limitations sourced from a “‘distributor’” or a “‘supplier different from a
distributor.’” App. Br. 9.
Specifically, this argument goes to the “markup language page
configured and supplied from a distributor server” as recited by independent
claim 1 and recited in similar language by independent claims 15, 17, and
20. The argument also includes the “distributor specific code referenced in a
markup language page to request a browser displayable interface
configuration from a supplier server” as recited by independent claim 1.
Appellants further urge that Lamkin does not disclose “receiving from the
supplier server a definition of the interface” recited in claim 1 and similarly
recited in claims 15 and 17. Finally, it is urged that Lamkin does not
disclose “a web address from which a player definition can be retrieved on a
supplier server” as recited by claim 20. App. Br. 9–10.
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Appellants seem to be urging that Lamkin alone must describe the
specific limitations cited above. But this argument overlooks the directives
from the Supreme Court.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). See
also KSR, 550 U.S. at 406 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415 (citing Graham, 383 U.S. at
12), and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
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when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

Id. at 417.
The operative question in this “‘functional approach’” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 415–17.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. 417–18 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
In this instance the Examiner has found that van Zoest describes
multiple locations – a Distributor Location 100, a Partner Location 105, and
a Client Location 100. The three parties are connected by the Internet in any
of a variety of architectures. van Zoest col. 3 ll.3–37. An application user
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interface is described at column 17, lines14–41. The interface has the
capabilities of managing purchase and return among these three parties. Id.
We are pointed to no persuasive error in the Examiner’s finding that
Lamkin describes a variety of network mapped user interfaces including
browser displayable interfaces requested from a server (Lamkin, col. 4, l.
21–col. 5, l. 47 and col. 42, ll. 31–36) or a description of a content user
interface to identify content available through the network and the location
of content on the network. (Col. 43, ll. 38–40; col. 45, ll. 1–25). Fin. Rej.
2–3.
Likewise, we have been pointed to no persuasive error in the finding
that Lamkin describes remote access to the network and server to show and
distribute the content via a user interface (col. 34, l. 30–col. 35, l. 58); and
specifically identifying content having associated metadata contained in an
XML file (resource tags for the content interface) (col. 31, l. 40–col. 32, l.
48).
The pivotal question is whether it would have been obvious to one of
ordinary skill in the art to select the distributor server as the server to
configure and supply the markup language page as claimed in claim 1. The
art recognizes that there is a content interface page, and that functions can be
hosted on a supplier or distributor server.
We are aware that the Appellants believe that the intended function of
their system is to allow a supplier to manage (e.g., customize) a distributor
specific interface. Reply Br. 3. Appellants urge that the difference in the
origin of the content interface page requires coordination between the
supplier and distributor which is equivalent to a structural difference in the
system. Id.
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We find that we are in agreement with the Examiner that it would
have been obvious to one of ordinary skill in the art to supply the markup
language page from a different server, as a predictable variation. We are not
persuaded that the alleged presence or absence of additional coordination
between the server and other parts of the system is evidence of a structural
difference. It was known that interfaces in general provide coordination
between media and the renderer of the media. See, e.g., Lamkin, col 7, ll. 2–
4.

CONCLUSION
As we are unpersuaded of error, the Examiner’s decision to reject
claims 1–20 is hereby affirmed.

ORDER
The Examiner’s decision rejecting claims 1–20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 U.S.C. § 1.136(a).

AFFIRMED
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