Ex Parte Squedin et alDownload PDFPatent Trial and Appeal BoardMay 17, 201814114008 (P.T.A.B. May. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/114,008 01/06/2014 48116 7590 05/21/2018 FAY SHARPE/LUCENT 1228 Euclid Avenue, 5th Floor The Halle Building FIRST NAMED INVENTOR Sylvain Squedin 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. LUTZ 201736US01 1974 EXAMINER VO,TRUONGV Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 05/21/2018 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): docketing@faysharpe.com ipsnarocp@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SYLVAIN SQUEDIN and ALEXANDRE VANBELLE Appeal2017-010729 Application 14/114,008 1 Technology Center 2100 Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and PHILLIP A. BENNETT, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Alcatel Lucent. App. Br. 1. Appeal2017-010729 Application 14/114,008 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1 and 3-10. We have jurisdiction under 35 U.S.C. § 6(b). Representative Claims Claims 1, 7, and 8 under appeal read as follows ( emphasis added): 1. A method for assisting video content searches over a communication network for a user, comprising: • receiving a first content item from said user, wherein the first content item is textual and comprises a browser or a selected portion of an e-book or a PDF file; • automatically extracting semantic data from the first content item; • automatically generating queries for at least one service, as a function of said semantic data, making it possible to retrieve a set of videos on said at least one service, wherein said at least one service is determined based on said semantic data; and • presenting said set of videos to said user, • wherein said method further comprises selecting a sub-set of videos from among said set, based on a criterion of semantic proximity between said first content and a description associated with the videos in said set. 7. A communication terminal equipped with a processor configured to implement the method according to claim 1. 8. A non-transitory computer-usable data carrier storing instructions that, when executed by a computer, cause the computer to execute the method according to claim 1. 2 Appeal2017-010729 Application 14/114,008 Rejection on Appeal The Examiner rejected claims 1 and 3-10, as being unpatentable under 35 U.S.C. § I03(a) over the combination of Pereira et al. (US 2008/0313140 Al; Dec. 18, 2008) and Spivack (US 2009/0106307 Al; Apr. 23, 2009). 2 Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief and Reply Brief) that the Examiner has erred. Appellants raise the following arguments in contending3 that the Examiner erred in rejecting claim 1 under 35 U.S.C. § I03(a). While Spivack further provides that additional content including topics similar to content provided by the object can also be identified, e.g., based on a semantic match, Spivack is completely silent as to at least one service being determined based on said semantic data .... Spivack only discusses determining related content based on the semantic data, and ... does not mention services, namely, video content provision services. App. Br. 9 ( emphasis omitted). Appellants further contend: [T]he Examiner suggests [ Ans. 2-3] that Spivack' s tagging system, as described in paragraph 0058 of Spivack, 2 As to this rejection, our decision as to the rejection of claim 1 is determinative for all claims. Therefore, except for our ultimate decision, we do not further discuss claims 3-10 for this rejection. 3 This contention is determinative as to the rejection on appeal. Therefore, Appellants' other contentions are not discussed herein. 3 Appeal2017-010729 Application 14/114,008 discloses the claimed "at least one service being determined based on said semantic data." Appellants disagree. As noted in paragraph 0058 of Spivack: In some embodiments, item data include semantic tags identified from the web content, tagged by the system, tagged by the user that provided the web content, tagged by the third party content provider and/ or tagged by the sponsor. Thus, in addition, content/items related to the web content, web links containing information related to the contents of the object, additional content including topics similar to content provided by the object can also be identified (e.g., based on a keyword match and/ or a semantic match) and stored in the database 312A. Spivack is silent as to linking the semantic tags to the provision of a service, as claimed. Reply Br. 3. As to Appellants' above contention, we agree with Appellants that Spivack at paragraph 58 teaches identifying tags and topics, not services. We conclude, consistent with Appellants' arguments, there is insufficient articulated reasoning to support the Examiner's finding (Final Act. 4) that Spivack at paragraph 58 teaches "wherein said at least one service is determined based on said semantic data." Therefore, we conclude that there is insufficient articulated reasoning to support the Examiner's final conclusion that claim 1 would have been obvious to one of ordinary skill in the art at the time of Appellants' invention. 4 Appeal2017-010729 Application 14/114,008 NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 4I.50(b ), we reject dependent claims 7 and 8 under 35 U.S.C. § 112, fourth paragraph, as they do not specify a further limitation of the subject matter claimed in method claim 1 from which each depends. Dependent claims 7 and 8 are structured as either an apparatus ("communication terminal" for claim 7) or an article of manufacture ("data carrier storing instructions" for claim 8), each being "configured to implement" or "execute" the method of claim 1. However, claims 7 and 8 do not necessarily require actual performance of the method of claim 1. Therefore, claims 7 and 8 each fail to specify a further limitation of the subject matter of claim 1, as required for dependent claims under§ 112, fourth paragraph. Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006); see also MPEP § 608.0l(n)(II). Although such "article/method" or "manufacture/method" claims are sometimes construed as an independent claim that reference another claim for certain limitations, here the intrinsic evidence does not support such an interpretation. Rather, this record requires us to interpret claims 7 and 8 as dependent claims. The evidence supporting such an interpretation includes: (1) Appellants' Patent Application Fee Determination Record form, filed August 3, 2016, which states only three (not five) independent claims are pending; (2) Appellants' application as appealed contains nine claims, three of which (claims 1, 9, and 10) depended from no other claim and, therefore, are independent claims; and (3) Appellants' Appeal Brief, at pages 3-5, which provides a concise explanation for independent claims 1, 9, and 10, but not for claims 7 and 8. 37 C.F.R. § 4I.37(c)(l)(iii) ("the brief shall 5 Appeal2017-010729 Application 14/114,008 contain ... [a] concise explanation of the subject matter defined in each of the rejected independent claims"). We note Appellants are not precluded from declaring claims 7 and 8 to be independent claims and paying the appropriate fees. As independent claims, claims 7 and 8 no longer would be required to specify a further limitation of the subject matter claimed in method claim 1. 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit 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 prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. 6 Appeal2017-010729 Application 14/114,008 CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1 and 3-10 as being unpatentable under 35 U.S.C. § 103(a). (2) We reject claims 7 and 8 under 35 U.S.C. § 112, fourth paragraph. 4 (3) On this record, claims 1, 3---6, 9, and 10 have not been shown to be unpatentable. ( 4) Claims 7 and 8 are not patentable. DECISION The Examiner's rejections of claims 1 and 3-10 are reversed. Claims 7 and 8 are newly rejected. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). REVERSED 37 C.F.R. § 4I.50(b) 4 Appellants can overcome this rejection by designating these claims as independent and paying the appropriate fees. 7 Copy with citationCopy as parenthetical citation