Ex Parte Stone et al

Patent Trial and Appeal Board

Apr 24, 2014

11301925 (P.T.A.B. Apr. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER J. STONE,
DAVID C. GOODWIN, and
ANDREA C. HARRIMAN
__________

Appeal 2011-012152
Application 11/301,925
Technology Center 2100
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Christopher J. Stone, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-3, 5-14, and 16-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

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Application 11/301,925

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SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer program embodied in a computer-readable medium
for delivering information to a network, the network including at least
one control device and at least one client device coupled to the at least
one control device, the program comprising instructions for execution
by a computer, the program comprising:
instructions for receiving in the control device the information
from an information source;
instructions for determining in the control device if the client
device is capable of rendering the information received from the
information source to an end user;
if the client device is capable of rendering the information the
control device received from the information source to an end user,
instructions for tuning to a first channel in the control device to allow
the client device to receive the information the control device received
from the information source when the client device is tuned to a
second channel; and
instructions for delivering by the control device to the client
device the information received from the information source.

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Feb. 3, 2011) and the Examiner’s Answer (“Ans.,” mailed May 5,
2011).
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Eisenberger

US 2006/0155581 A1 Jul. 13, 2006
The following rejection is before us for review:
1. Claims 1-3, 5-14, and 16-20 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Eisenberger.

ISSUE
Did the Examiner err in rejecting the claims 1-3, 5-14, and 16-20
under § 102 as being anticipated by Eisenberger?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
Claim 1 includes limitations to “determining in [a] control device if
[a] client device is capable of rendering [ ] information received from [an]
information source to an end user” and, if so, “tuning to a first channel in the
control device to allow the client device to receive the information the
control device received from the information source when the client device
is tuned to a second channel.” Independent system claim 7 parallels claim 1;
said limitations being worded in functional terms. The other independent
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device claim 13 also parallels claim 1 but is more particularly directed to
EAS information.
The Appellants argue that Eisenberger fails to disclose said
limitations. Br. 5-6.
The Examiner’s position is that said limitations are expressly
described at paragraphs [0040]-[0041], [0051]-[0055], [0057], [0058],
[0060], [0067] and [ 0097] of Eisenberger. Ans. 4 and 10.
The question is whether Eisenberger in fact anticipates the claimed
subject matter as reasonably broadly construed. In that regard, the claim
term “rendering” is not expressly defined in the Specification and therefore
given its ordinary and customary meaning – which is to “give, hand over,
deliver, present or submit” (Webster’s New World Dictionary 1136 (3rd ed.
1988), entry 1. for “render.”)
Paragraph [0058] which was cited in support of the Examiner’s
position does not show a Message Flow Server (i.e., a control device)
determining if a client device is capable of “rendering” information received
from an information source as claimed. It is the Publisher that determines
whether the Subscriber is capable of receiving the information. See
paragraph [0058] (“The Publisher 200 responds to request for publication by
approving or denying the request and sending a message to the
Administrative Server 1100. As shown, each Publisher 200 sends an
approval response 200a to the Administrative Server 1100.”)
Paragraph [0060] also does not describe the control device
determining whether the client device can “render” information. While, as
the Examiner (Ans. 10) argues, it discloses clinical data can be transmitted
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to the Subscriber in one or more formats, including, but not limited to, email,
download or transmission to a database, this merely shows that Eisenberger
discloses that clinical data can be transmitted to the Subscriber (i.e., client
device) in various forms.
Paragraph [0067] discloses that an
Administrative Server [ ] can transmit a subscription message to
the message Flow Server to initiate the subscription and allow
clinical data to be routed from the Publisher to the Subscriber
via the Message Flow Server without requiring the requestor to
request publication for future events or data on that topic from
that Subscriber.
At best, this passage merely describes information routed to the Subscriber
(i.e., client device) without the subscriber requesting publication in the
future.
Paragraph [0097] appears to disclose that the Message Flow Server
relays information in a format approved for the Subscribers. See paragraph
[0097] (“The Message Flow Server [ ] can be configured to dynamically
publish and/or subscribe selected topics of interest from participating
Publishers [ ] to participating (approved) Subscribers and implements the
publish/subscribe communication protocol.”)
We have reviewed the other cited passages and find they are also
deficient in expressly describing the claim limitations of determining in a
control device if a client device is capable of rendering information received
from an information source to an end user and, if so, tuning to a first channel
in the control device to allow the client device to receive the information the
control device received from the information source when the client device
is tuned to a second channel, as reasonably broadly construed.
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At best, the cited passages would lead one of ordinary skill in the art
to permit a person to determine whether a client device is capable of
rendering the information received, rather than a control device as claimed.
See paragraph [0055] (“Typically, the request is approved or denied upon
review by a person (rather than electronically) by each respective Publisher
200. The request for a particular Subscriber and topic may be approved
once.”) The Examiner’s reliance on Eisenberger’s Message Flow Server as
the control device to make a determination as to whether the client device is
capable of “rendering” the information received from the information source
to an end user is not fully in accord with what Eisenberger discloses because
according to Eisenberger the information must first be requested by the
subscriber before it can be forwarded back to the subscriber from the
message flow server.
Finally, we note that the Examiner does not appear to address the
“first channel” and the “second channel” limitations in claim 1.
For the foregoing reasons, we find that a prima facie case of
anticipation has not been made out in the first instance and therefore the
rejection is not sustained.

CONCLUSION
The rejection of claims 1-3, 5-14, and 16-20 under 35 U.S.C. § 102(e)
as being anticipated by Eisenberger is reversed.

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DECISION
The decision of the Examiner to reject claims 1-3, 5-14, and 16-20 is
reversed.

REVERSED

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