Ex Parte Shea

Board of Patent Appeals and Interferences

Nov 30, 2009

11128616 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MATTHEW T. SHEA
__________

Appeal 2009-002155
Application 11/128,616
Technology Center 2100
__________

Decided: November 30, 2009
__________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-30. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

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Statement of the Case

The Invention
Appellant’s invention relates generally to electronic data/information
processing. More particularly, Appellant’s invention relates to methods and
devices for notifying a user of the load progress of other companion users in
a distributed multi-user session, such as multi-player gaming. (Spec. 2, Para.
[0002]).

Claim 1 is illustrative:
1. A method comprising:
receiving by a server requests for shared content from at
least two participants in a joint consumption of the shared
content;
transmitting by the server at least a first portion of the
requested shared content to each participant; and
sending by the server to at least one participant
transmission progress information associated with the
transmitting by the server to at least one other participant, at
least once, prior to completion of the transmitting by
the server to the at least one other participant.

Prior Art
The Examiner relies upon the following references as evidence:
Nagarajayya US 6,038,588 Mar. 14, 2000
Ording US 6,927,770 B2 Aug. 9, 2005
(filed Jan. 5, 2001)
Wong US 6,999,083 B2 Feb. 14, 2006
(filed Aug. 22, 2001)
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The Rejections
1. The Examiner rejected claims 1, 2, 4, 5, 8-14, 16-18, and 20-30 under
35 U.S.C. § 103(a) as unpatentable over Wong in view of Nagarajayya. 1

2. The Examiner rejected claims 3, 6, 7, 14, 15, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Wong in view of Nagarajayya and Ording.2

Grouping of Claims
Based upon Appellant’s arguments in the Briefs, (see App. Br. 9), we
will decide this appeal based upon representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Appellant’s Contentions
1. Appellant contends that the cited references fail to teach or
suggest the limitation of sending transmission progress information to one
participant associated with the transmitting to at least one other participant.
(App. Br. 7, ¶2).

2. Appellant contends there is no motivation to modify either of
the cited references to achieve claims 1, 2, 4-5, 8-14, 16-18 and 20-30.
(App. Br. 8).

1 The Examiner rejected dependent claim 14 under the headings of both
rejection 1 and rejection 2. (Ans. 3, 13). However, we observe that the
Examiner only sets forth a detailed rejection for claim 14 in the second
rejection on page 13 of the Answer. We will consider claim 14 as standing
rejected under both rejection 1 and rejection 2.
2 See Note 1 supra regarding the rejection of claim 14.
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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

1. Has Appellant shown the Examiner erred in combining Wong,
Nagarajayya and Ording?
2. Has Appellant shown the Examiner erred in finding that the
cited references teach or suggest the limitation of sending transmission
progress information to one participant associated with the transmitting to at
least one other participant?

PRINCIPLES OF LAW
Obviousness
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more
ingenuity and skill were required in making or applying the said
improvement than are possessed by an ordinary mechanic
acquainted with the business, there is an absence of that degree
of skill and ingenuity which constitute the essential elements of
every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
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Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006). Therefore, we look to Appellant’s Briefs to show error in the
proffered prima facie case.

Findings of Fact
In our analysis infra, we rely on the following findings of fact (FF):

Wong
1. Wong discloses transmitting state information. (Col. 4, ll. 42-
46). The state information may include participant progress information
which includes parameters that have values which define the status and
relationship of the participants relative to the game. The state information is
continually updated and transmited to each of the participants in the game.
(Col. 4, ll. 46-49, 60-63).

Nagarajayya
2. Nagarajayya discloses keeping the user apprised of the progress
of the completion of the job through the use of a progress dialog box. (Col.
2, ll. 39-46 and Fig. 1B).
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ANALYSIS
ISSUE 1
We decide the threshold question of whether Appellant has shown the
Examiner erred in combining Wong, Nagarajayya, and Ording. Appellant
contends that spectators do not interact with each other, and one user’s
spectator experience is not enhanced by receiving another spectator’s
content transmission progress information. (App. Br. 8). Appellant further
contends that a progress dialog window could not be displayed until the
program whose progress it was measuring was completed. (Id. at 8-9).
After considering the evidence before us, it is our view that
Appellant’s arguments do not take into account what the collective teachings
of the prior art would have suggested to one of ordinary skill in the art and
are therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”) (citations
omitted). This reasoning is applicable in the present case.
We find the basis of the Examiner’s rejection does not rest upon
whether one skilled in the art would have been motivated to bodily
incorporate Nagarajayya’s invention into Wong’s invention. Instead, in
establishing the prima facie case for the rejection, the Examiner’s basis for
combining the teachings of Wong with Nagarajayya is to show the function
of keeping a user apprised of the progress of the transaction. (See Ans. 4).
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Thus, it is our view that the modification of Wong by the teaching of
Nagarajayya would have been in accordance with what the Supreme Court
considers “common sense.”
Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.
(KSR, 550 U.S. 398 at 420).

Moreover, we are not persuaded that combining the respective
familiar elements of the cited references in the manner proffered by the
Examiner 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, 550 U.S. at 418)). Therefore, we find the
predictable use of familiar prior art elements according to their established
functions (as proffered by the Examiner) would have clearly conveyed a
reasonable expectation of success to a person of ordinary skill having
common sense at the time of the invention.
For at least the aforementioned reasons, we find Appellant has not
shown that the Examiner erred in combining the cited references.

ISSUE 2
We decide the question of whether Appellant has shown the Examiner
erred in finding that the cited references teach or suggest the limitation of
sending transmission progress information to one participant associated
with the transmitting to at least one other participant. (See claim 1). Based
upon our review of the record before us, we agree with and adopt the
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Examiner’s arguments with respect to this limitation for the reasons
discussed infra. (See Ans. 15-16)
It is our view that the combined teachings of the references strongly
suggest sending transmission progress information associated with
transmitting to at least one other participant. Wong discloses transmitting
state information. (FF 1). We further find that Wong discloses state
information is continuously updated as a function of time in response to
instructions received from the participants. (See col. 4, ll. 46-49). The
updating as a function of time is, in our view, a strong suggestion of
“progress information” since the state information is updated as a function of
time. Further, it is our view that a “received instruction” may include a
download of a program. As noted above, the state information (progress
information) is transmitted to the participants. (FF 1) We note that
Nagarajayya is relied upon by the Examiner to show that information such
as progress information may be represented in graphical form, again as a
function of time. (FF 2). Thus, we find that the combined teachings of the
cited references strongly suggest the argued limitation of sending
transmission progress information to one participant associated with the
transmitting to at least one other participant.

In addition, based upon our review of the record before us, we find
Appellant’s arguments for patentability regarding the aforementioned
limitation are predicated on nonfunctional descriptive material. We note that
functional descriptive material consists of data structures or computer
programs which impart functionality when employed as a computer
component. In contrast, non-functional descriptive material refers to data
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content that does not exhibit a functional interrelationship with the substrate
and does not affect the way the computing processes are performed. (See
MPEP § 2106.01).
Here, we find that the step of “sending by the server,” is not changed
or performed differently according to the particular type of data that is sent
for viewing by the at least one (human) participant (see argued limitation
(“sending . . .” – descriptive data representing “transmission progress
information” being sent to “at least one other participant,” App. Br. 7, ¶2).
Thus, Appellant has grounded his principal argument for patentability on the
type of data being sent.
The content of such nonfunctional descriptive material is not entitled
to weight in the patentability analysis. In a precedential decision, an
expanded panel recently held that elements that do not affect the claimed
process are non-functional material and are merely descriptive. See Ex parte
Nehls, 88 USPQ2d 1883, 1887-1888 (BPAI 2008) (precedential). 3
Because Appellant’s arguments regarding the aforementioned
limitation would require us to give weight to nonfunctional descriptive
material, we find Appellant has not met his burden of showing error in the
Examiner’s specific findings of fact. Thus, we find that sending particular
types of data does not distinguish over the cited combination of Wong and

3 Cf. In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994) (“Lowry does not
claim merely the information content of a memory. . . . Nor does he seek to
patent the content of information resident in a database.”). See also Ex parte
Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir. Appeal
No. 2006-1003, aff’d Rule 36 June 12, 2006); Manual of Patent Examining
Procedure (MPEP) § 2106.01 (8th ed., Rev. 7, July 2008).
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Nagarajayya (and Ording), because we give the particular type of data that is
sent no patentable weight in our analysis.
Based on the record before us, we find that Appellant has not shown
the Examiner erred in rejecting representative claim 1. Because Appellant
has not presented separate arguments for claims 2-30, these claims fall with
claim 1. Accordingly, we sustain the Examiner’s obviousness rejections of
claim 1-30.

CONCLUSIONS
Based on the findings of facts and analysis above:
1. Appellant has not established that the Examiner erred in combining
the teachings of Wong, Nagarajayya, and Ording.

2. Appellant has not established that the Examiner erred in
determining that the cited combination of references teaches or suggest
sending transmission progress information to one participant associated
with the transmitting to at least one other participant.

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DECISION
We affirm the Examiner’s rejections of claims 1-30 under 35 U.S.C.
§ 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

erc

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