Ex Parte Tone et al

Board of Patent Appeals and Interferences

Jan 13, 2011

11256617 (B.P.A.I. Jan. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOBUHIRO TONE and TOSHIYUKI ARAI
____________

Appeal 2010-010412
Application 11/256,617
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, JOHN A. JEFFERY,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
An oral hearing on this appeal was held on Wednesday, January 12,
2011. Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 26-31. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We Affirm.
Invention
Appellants’ invention relates to “a data transmission apparatus, a data
reproducing method, a terminal unit, and a transferring method of the data
transmission apparatus that are suitable for an information transmission
system that causes a transmitting unit that stores information to user terminal
units.” (US Patent 6,640,306 B1, col. 1, ll. 8-13).

Claim 26 is illustrative:
26. A data transmitting server to transmit program data
to a terminal unit, comprising:

a storage configured to store a plurality of program
data;

a receiver configured to receive an information
request, to request a desired program data among a
plurality of program data stored in said storage, and
identification identifying a user requesting said desired
program data from said terminal unit;

an appending unit configured to append said
identification to said desired program data requested by
said user; and
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a transmitter configured to transmit to said
terminal unit said desired program data with said
identification appended thereto.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Stefik US 5,629,980 May 13, 1997
Wales US 6,088,344 Jul. 11, 2000
Huebsch US 6,487,644 B1 Nov. 26, 2002

Appellants appeal the following rejections:
Claims 26 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Huebsch and Wales.
Claims 27, 28, 30, and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Huebsch, Wales, and Stefik.

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:
Are Appellants’ arguments urging patentability predicated
on nonfunctional descriptive material, i.e., the argued
limitations of an identification that identifies a user
requesting program data, where the identification is
appended to program data and transmitted to a terminal unit,
within the meaning of independent claims 26 and 29?

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GROUPING OF CLAIMS
Based on Appellants’ arguments in the Briefs, we decide the appeal
on the basis of representative claims 26 and 29. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FACTUAL FINDINGS (FF)
We adopt the Examiner’s findings in the Answer and final Office
Action. (Ans. 3 et seq.).

ANALYSIS
We find Appellants’ argument unconvincing that the Examiner erred
by determining that the combination of cited references would have taught
or suggested an identification that identifies a user requesting program data
where the identification is appended to program data and transmitted to a
terminal unit, within the meaning of independent claims 26 and 29. (App.
Br. 4-5; Reply Br. 1-2).
In particular, we find Appellants’ arguments urging patentability are
predicated on nonfunctional descriptive material.
The content of nonfunctional descriptive material is not entitled to
weight in the patentability analysis. See Ex parte Curry, 84 USPQ2d 1272,
1274 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12,
2006) (Rule 36) (“wellness-related” data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method).
“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art." Ex
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parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff'd,
191 Fed.Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004)). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90
(BPAI 2008) (precedential) (discussing nonfunctional descriptive material).
Here, we conclude that the particular content of the claimed
“identification identifying a user” does not affect or otherwise alter the
functions performed by the recited “receiver,” “appending unit,” and
transmitter. (Claim 26). The functions of receiving, appending, and
transmitting the “identification identifying a user” are performed in the same
manner regardless of the particular content of the recited “identification.”
(Id.). Therefore, the informational content of the claimed “identification”
represents nonfunctional descriptive material that is entitled to no weight in
the patentability analysis.
We also observe the multiple statements of intended use recited in
claim 26: “a receiver configured to [perform function] . . . ,” “an appending
unit configured to [perform function] . . . ,” and a “transmitter configured to
[perform function] . . . .” (emphasis added). “An intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear
in the claim's preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a
statement of intended use or purpose can appear elsewhere in a claim. Id.
From the above discussion, we conclude that the disputed
“identification identifying a user” limitation that specifies what the claimed
data represents constitutes nonfunctional descriptive material that cannot
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lend patentability to an invention that would have otherwise been rendered
obvious by the prior art. Likewise, limitations specifying an intended use or
purpose of the claimed receiver, appending unit, and transmitter elements
also fail to limit the scope of the claims.
Moreover, Appellants have not rebutted the Examiner’s findings
regarding the structural limitations of claim 26 (receiver, appending unit,
and transmitter). On this record, Appellants have not established error
regarding the Examiner’s ultimate legal conclusion of obviousness for the
specific limitations disputed by Appellants. For these reasons, we sustain
the Examiner’s obviousness rejection of independent claim 26.
We apply a similar analysis to independent method claim 29, where
we again conclude that the claimed “identification” constitutes
nonfunctional descriptive material that cannot lend patentability to an
invention that would have otherwise been rendered obvious by the prior art.
In particular regarding claim 29, we conclude that the recited
“identification” does not affect or otherwise alter how the recited steps of
“receiving” . . . “appending” . . . and “transmitting” are performed. (Claim
29). Therefore, we also sustain the Examiner’s obviousness rejection of
independent claim 29.

Dependent Claims 27, 28, 30, and 31
The Examiner rejected claims 27, 28, 30, and 31 as obvious over the
combination of Huebsch, Wales, and Stefik. (Ans. 4-5).
Appellants aver that the additional Stefik reference does not cure the
deficiencies of Huebsch and Wales. Appellants contend that dependent
claims 27, 28, 30, and 31 are believed to be patentable for at least the
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reasons previously discussed regarding independent claims 26 and 29.
(App. Br. 6).
However, for the reasons discussed above, we do not find Appellants’
arguments persuasive regarding any purported deficiencies of Huebsch and
Wales. Therefore, we also sustain the Examiner’s obviousness rejection of
claims 27, 28, 30, and 31.

CONCLUSION
On this record, we find no error in the Examiner’s ultimate legal
conclusion of obviousness regarding the specific limitations disputed by
Appellants. Therefore, we sustain the Examiner’s obviousness rejection of
representative claims 26 and 29 and associated dependent claims 27, 28, 30,
and 31 (not argued separately). See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 103 rejections of claims 26-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

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OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314