Ex Parte Skog

Patent Trial and Appeal Board

Sep 23, 2016

12306851 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/306,851 0312712009
132398 7590 09/27/2016
Clairvolex Inc,
4010 MOORPARK AVE, Ste, 228
San Jose, CA 95117
FIRST NAMED INVENTOR
Robert Skog
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.
P21323-US1 7272
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
elofdocket@clairvolex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SKOG
Appeal2014-005504
Application 12/306,851 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-32 (claims 33 and 34 being withdrawn). See
Final Action, 1, 3; Appeal Br. 1, 23-24. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, the real party in interest is Telefonaktiebolaget
LM Ericsson (publ). Appeal Br. 1.
Appeal2014-005504
Application 12/306,851
ILLUSTRATIVE CLAIM
1. A method of purchasing streamed media as executed
in a communication terminal operated by a user, the method
implemented by the communication terminal comprising the
following steps:
receiving and playing, by the communication terminal, a
media stream containing at least one media object as data
packets from a streaming server,
receiving, by the communication terminal, user input for
the purchase of the currently played wanted media object,
sending, from the communication terminal, a purchase
request for the wanted media object to the streaming server in
response to said user input,
receiving, by the communication terminal, a download
enabler in response to said purchase request containing
information that the communication terminal requires for
downloading the wanted media object, and
downloading, by the communication terminal, the wanted
media object based on the information contained in the received
download enabler.
CITED REFERENCES
The Examiner relies upon the following references:
Hsu et al. US 2003/0069904 Al Apr. 10, 2003
(hereinafter "Hsu")
Charlier et al. US 2004/0122746 Al June 24, 2004
(hereinafter "Charlier")
Kjellberg et al. US 2005/0071418 Al Mar. 31, 2005
(hereinafter "Kjellberg")
Falco US 7,136,577 Bl Nov. 14, 2006
REJECTIONS
I. Claims 1-32 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
2
Appeal2014-005504
Application 12/306,851
distinctly claim the subject matter that the Appellant regards as the
invention. 2
II. Claims 1, 4---6, 9-12, 16-21, 25-29, and 31 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kjellberg, Charlier, and Hsu.
III. Claims 2, 3, 7, 8, 13-15, 22-24, 30, and 32 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kjellberg, Charlier, Hsu, and Falco.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Rejection Under 35U.S.C§112, Second Paragraph
Claims 1-32 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite, on account of claim 1 's recitation of "currently played
wanted media object," with claims 2-32 either depending upon claim 1 or
containing a similar limitation. Final Action 4--5; Answer 10-11. (Thus, the
Examiner regards independent claim 29 's recitation of "currently played
music piece or film" as similarly problematic. Answer 11.) The Final
Office Action states that it is not clear how a user would "want" a media
object that is currently being played, because such media object would
already be in the user's possession. Final Action 4.
Alleging error in the rejection, the Appellant argues that the identified
limitation of claim 1 is clear, in view of the Specification's description of a
user's purchase of a media object being experienced as streaming media,
2 The Examiner sets forth the rejection under 35 U.S.C. § 112 as alternatively
based upon either the pre-AIA or AIA version of the statute. Final Action 4.
Because the Appellant's application was filed before September 16, 2012,
the pre-AIA version of the statute is applied herein.
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Application 12/306,851
such that the user might not possess the "currently played" media object, due
to the ephemeral nature of streamed media - a context also revealed in
claim 1 's recitation of "receiving and playing, by the communication
terminal, a media stream containing at least one media object as data packets
from a streaming server." Appeal Br. 6-8; Reply Br. 1-2.
The Appellant's arguments regarding the contextual meaning of the
identified limitation of claim 1 - in the context of the claims and
Specification-persuasively demonstrate that this claim language (and the
same or similar recitations in independent claims 6, 11, 20, 29, and 31) is
reasonably clear to a person of ordinary skill in the art.
Accordingly, we do not sustain the rejection of claims 1-32 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Rejection Under 35U.S.C.§103(a)
The Appellant (Appeal Br. 8-11) contends that the Examiner erred in
rejecting claim 1under35 U.S.C. § 103(a), because the cited prior art does
not disclose claim 1 's "receiving, by the communication terminal, user input
for the purchase of the currently played wanted media object."
The Examiner relies upon Kjellberg as teaching this feature. Final
Action 5 (citing Kjellberg i-fi-f 18, 72, claim 1); Answer 12 (citing Kjellberg
i-f 18).
However, as the Appellant points out, Kjellberg does not disclose a
system in which a media object is played (for example, via streaming) prior
to a user purchasing the media object, such that in Kjellberg there is no
"currently played" media object that is available to be purchased. Appeal
Br. 11.
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Application 12/306,851
Thus, the Appellant's argument is persuasive of error in the rejection
of independent claim 1.
The above arguments also apply to independent claims 6, 11, 20, 29,
and 31, which include limitations similar requiring a purchase request or
input for a "currently played" media object, music piece, or film. See
Appeal Br. 11, 12-13; Reply Br. 3.
Accordingly, including the respective dependent claims, the rejection
of claims 1-32 under 35 U.S.C. § 103(a) is not sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-32.
REVERSED
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