Ex Parte Svendsen

Patent Trial and Appeal Board

Apr 27, 2016

13647049 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/647,049 10/08/2012 Hugh Svendsen
71739 7590 04/28/2016
Concert Technology Corporation
5400 Trinity Road, Suite 303
Raleigh, NC 27607
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.
CT-REC-OOlC/US (P002C) 5086
EXAMINER
LIAO, JASON G
ART UNIT PAPER NUMBER
2156
MAILDATE DELIVERY MODE
04/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGH SVENDSEN
Appeal2014-003977
Application 13/647,049
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
The Invention
Appellant's disclosed and claimed invention "relates to an archiving
system that refines media recommendations made to a user from an e-
commerce service based on an archive of the user's media collection."
(Spec. ii 2).
Appeal2014-003977
Application 13/647,049
Representative Claim
1. A system comprising:
a communication interface for receiving communications from
an e-commerce service; and
a control system associated with the communication interface
and adapted to:
store information identifying a media collection in an associated
storage unit;
receive information identifying media purchased from the
e-commerce service;
generate the purchased media based on a corresponding
reference media file and a desired encoding algorithm;
update the information identifying the media collection to
include information identifying the generated media; and
provide the generated media to a computing system associated
with the media collection.
(Contested limitation emphasized).
Rejections
RI. Claim 16 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellant regards as his
invention.
R2. Claims 1, 6, and 11-19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Palmer (US 2002/0108115 Al, publ. Aug. 8, 2002).
2
Appeal2014-003977
Application 13/647,049
R3. Claims 2-5 and 20 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Palmer and
Hosken (US 6,438,579 Bl, iss. Aug. 20, 2002).
R4. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Palmer, Hosken,
and Thomas (US 2007/0162502 Al, publ. July 12, 2007).
RS. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Palmer, Hosken,
and Chung (US 2006/0277098 Al, publ. Dec. 7, 2006).
Claim Grouping
Based on Appellant's arguments (App. Br. 8-13), we decide the
appeal of anticipation Rejection R2 of claims 1, 6, and 11-19 on the basis of
representative independent claim 1. We decide the § 112, second paragraph,
Rejection RI of dependent claim 16 separately. We address§ 103 Rejections
R3 through R5, not separately argued, infra. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
Rejection RI of Dependent Claim 16 under§ 112, second paragraph
For essentially the same reasons argued by Appellant in the Briefs
(App. Br. 10; Reply Br. 4--5), as further discussed below, we reverse the
Examiner's rejection RI of claim 16 under§ 112, second paragraph.
In particular, Appellant argues "the phrase 'an encoding algorithm'
can be construed to cover the singular and plural such as the term 'a desired
encoding algorithm' [ (claim 1 ),] while claim 16 requires the term 'plurality
of encoding algorithms' to be construed in the plural." Appellant correctly
3
Appeal2014-003977
Application 13/647,049
notes '"a' and 'the' in a claim can generally be construed to cover both the
singular and the plural, unless otherwise indicated in an application or
clearly contradicted by context." (Reply Br. 4).
Appellant's argument is persuasive. See SanDisk Corp. v. Kingston
Technology Co., Inc., 695 F.3d 1348, 1360 (Fed. Cir. 2012) (citing Baldwin
Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1342 (Fed.Cir.2008)):
[T]his court has repeatedly emphasized that an indefinite article
"a" or "an" in patent parlance carries the meaning of "one or
more" in open-ended claims containing the transitional phrase
"comprising." That "a" or "an" can mean "one or more" is best
described as a rule, rather than merely as a presumption or even
a convention. The exceptions to this rule are extremely limited:
a patentee must "evince[] a clear intent" to limit "a" or "an"
to "one. " The subsequent use of definite articles "the" or
"said" in a claim to refer back to the same claim term does not
change the general plural rule, but simply reinvokes that non-
singular meaning.
This reasoning is applicable here. The Examiner's conclusion that
claim 16 requires "every version to correspond to a single encoding
algorithm" (Ans. 4, emphasis added) is contrary to the guidance of Sandisk.
Therefore, we reverse the Examiner's rejection of dependent claim 16 under
§ 112, second paragraph.
Rejection R2 of Claims 1, 6, and 11-19 under 35 U.S.C. § 102(b)
We have considered all of Appellant's arguments and any evidence
presented. Appellant contests the following limitation recited in
representative claim 1: "generate the purchased media based on a
corresponding reference media file and a desired encoding algorithm."
(Emphasis added).
4
Appeal2014-003977
Application 13/647,049
Appellant disagrees with the Examiner's finding that Palmer's
transcoding inherently discloses the "desired encoding algorithm" recited in
claim 1. (App. Br. 11 ). Appellant contends in the Briefs:
[T]he high resolution format could be in any of the formats listed
above, and encoded based on any suitable encoding algorithm
and could change periodically without the knowledge of the user.
This is simply not the same as a "desired encoding algorithm."
The specification makes clear that the "desired encoding
algorithm" is user specific in that it is either selected by the user
or based on user preferences. There is no such disclosure in
Palmer.
(App. Br. 11, emphasis added).
It is clear from the specification that the "desired" in "desired
encoding algorithm" indicates user specific in that the encoding
algorithm is either selected by the user or based on user
preferences.
(Reply Br. 5, emphasis added).
However, claim 1 is silent regarding the argued user selection or user
preferences. (App. Br. 11 ). Moreover, we conclude the contested claim
term "desired" is a subjective word, under a broad but reasonable
interpretation. Therefore a question arises regarding how and to what degree
(if any) the claim term "desired'' limits the scope of system (apparatus)
claim 1. Our reviewing court guides:
When a claim term "depend[ s] solely on the unrestrained,
subjective opinion of a particular individual purportedly
practicing the invention," without sufficient guidance in the
specification to provide objective direction to one of skill in the
art, the term is indefinite. Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)
5
Appeal2014-003977
Application 13/647,049
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir.
2014). See also Manual of Patent Examining Procedure (MPEP)
§ 2173.05(b)(IV) (9th Ed., Mar. 2014).
We find Appellant's arguments unpersuasive, because we conclude
the scope of the contested "desired encoding algorithm" (claim 1) is a
subjective term that relates to a mental state or "wish" of an unclaimed user.
Therefore, the argued "desired encoding algorithm" cannot distinguish the
system of claim 1 over the corresponding encoder (i-f237) that transcodes
video in the Palmer reference, as found by the Examiner. (See Final Act. 12;
Ans. 8). 1
To the extent the claim term "desired" reads on Palmer's user's
wishes, we find the recited "a desired encoding algorithm" broadly but
reasonably reads on Palmer's client receiver 350 (i-f300, Fig. 14), that
"determines whether the user wishes to purchase a high resolution version
(STEP 1416)" (id.), and, if so, the client sends a request to OSM 320 (STEP
1420), which then sends ("provides") "the requested high resolution version
of the object." (Palmer i1300, emphasis added).
1 In the event of further prosecution, we leave it to the Examiner to consider
whether at least claim 1 should be rejected under 35 U.S.C. § 112, second
paragraph for being indefinite. "[I]f a claim is amenable to two or more
plausible claim constructions, the US PTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim ... indefinite." Ex parte Miyazaki, 89
USPQ2d 1207, 1211(BPAI2008) (precedential). Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
6
Appeal2014-003977
Application 13/647,049
Appellant also contends "the office has improperly relied on two
different systems in Palmer." (App. Br. 12).
We are unpersuaded by Appellant's argument and agree with the
Examiner's finding that Figure 3A, element 210 contains all of elements 310
("NCS"), 320 ("OSM") and 330 ("Media Servers") that generate the media
according to the desired resolution ("desired encoding algorithm").
(Ans. 12; Claim 1 ). Appellant's argument is not persuasive because Palmer
describes the block diagram depicted in Figure 3A, which includes the
components 310, 320, 330, 340, as a single embodiment. (See Palmer i-f 234,
citing "In this embodiment ... ") (Emphasis added). Figure 3A depicts these
numbered components described in Palmer's paragraph 237, which is the
paragraph cited by the Examiner in rejecting claim 1. (Final Act. 12).
Therefore, we find Figure 3A describes a single embodiment relied on by the
Examiner in support of the rejection.
For at least these reasons, and on this record, we find a preponderance
of the evidence supports the Examiner's finding of anticipation regarding
representative claim 1. Because Appellant has not persuaded us the
Examiner erred, we sustain anticipation rejection R2 of representative
claim 1, and anticipation rejection R2 of grouped claims 6 and 11-19, which
fall with claim 1. See Claim Grouping, supra.
Rejections R3, R4, and R5 of claims 2-5, 7-10, and 20 under§ 103 (a)
Appellant advances no substantive, separate arguments regarding the
remaining claims on appeal. (App. Br. 13). Arguments not made are
considered waived. See 37 C.F.R. § 41.37(c)(l)(iv).
7
Appeal2014-003977
Application 13/647,049
DECISION
We reverse the Examiner's Rejection RI of claim 16 under 35 U.S.C.
§ 112, second paragraph.
We affirm the Examiner's Rejection R2 of claims 1, 6, and 11-19
under 35 U.S.C. § 102(b).
We affirm the Examiner's Rejections R3, R4, and R5 of claims 2-5,
7-10, and 20 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 3 7
C.F.R. § 41.50(a)(l).
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
8