Ex Parte Torgersrud et al

Patent Trials and Appeals Board

May 13, 2019

13843623 - (D) (P.T.A.B. May. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/843,623 03/15/2013
115013 7590 05/15/2019
FBFK- Telmate
9 Greenway Plaza, Suite 500
Houston, TX 77046
FIRST NAMED INVENTOR
Richard Torgersrud
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.
38056/004001; INV-017 4121
EXAMINER
PATEL,DHAIRYAA
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
05/15/2019 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):
rlord@fbfk.law
docketing@fbfk.law
jhathaway@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD TORGERSRUD and
JOHN SATORI YAMASAKI
Appeal 2018-008067
Application 13/843,623 1
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CRAIG.
Dissenting Opinion filed by Administrative Patent Judge COURTENAY.
CRAIG, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's non-
final rejection of claims 1, 3-8, 10-15, and 17-20, which constitute all of the
claims pending in this application. Claims 2, 9, and 16 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Intelmate LLC. App.
Br. 4.
Appeal 2018-008067
Application 13/843,623
INVENTION
Appellants' application relates to a method for "reviewing an inmate's
communications." Spec. ,i 3. Claim 1 is illustrative of the appealed subject
matter and reads as follows ( disputed limitations emphasized):
1. A method for reviewing communications of an inmate
compnsmg:
receiving a two-party message comprising a media item,
wherein a first party of the two-party message is the inmate, and
wherein the two-party message targets a recipient;
determining that a first portion of the media item is viewable
prior to completion of a pending review of the media item;
placing the first portion of the media item in a conditionally
viewable repository for the inmate;
making the first portion of the media item accessible to the
recipient based on the first portion being placed in the conditionally
viewable repository for the inmate;
determining that a second portion of the media item is not
viewable pending review;
placing the second portion of the media item in a conditionally
held repository for the inmate;
making the second portion of the media item inaccessible to the
recipient based on the second portion being placed in the conditionally
held repository for the inmate;
receiving review results of a review process performed on the
media item, wherein the review results indicate that the media item is
rejected;
moving the media item to a rejected repository based on the
review results; and
making the two-party message inaccessible to the recipient
based on the media item being placed in the rejected repository for the
inmate,
wherein the first portion of the media item is accessible to the
recipient prior to receiving the review results and inaccessible to the
recipient subsequent to receiving the review results.
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Application 13/843,623
REJECTION
Claims 1, 3-8, 10-15, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Shapiro et al. (US
2013/0179949 Al; published July 11, 2013) ("Shapiro"), Harper, (US
7,742,582 B2; issued June 22, 2010), Edd et al., (US 8,086,952 B2; issued
Dec. 27, 2011) ("Edd"), and Ayers et al. (US 2012/0276513 Al; published
Nov. 1, 2012) ("Ayers"). Non-Final Act. 2.
ANALYSIS
Appellants argue claims 1, 3-8, 10-15, and 17-20 as a group and
select claim 1 as representative of the group. App. Br. 7. We also choose
claim 1 as representative of the group. See 37 C.F.R. §41.37(c)(l)(iv).
Appellants contend the Examiner erred because Ayers does not teach
or suggest the limitation "determining that a first portion of the media item is
viewable prior to completion of a pending review of the media item," as
recited in claim 1. App. Br. 13. Appellants argue "it is completely unclear
how and where Ayers teaches 'determining that a first portion of the media
item is viewable prior to completion of a pending review of the media item,'
because the cited paragraphs appear to be entirely unrelated to the claim
limitation." App. Br. 13-14.
The Examiner found that paragraphs 11, 75, and 77 of Ayers teach or
suggest the disputed "determining" limitation. See Non-Final Act. 5-6;
Ans. 6. We do not find that the cited portions of Ayers, or even Shapiro,
Harper, or Edd, or any other portions of the references, teach or suggest
"determining that a first portion of the media item is viewable prior to
completion of a pending review of the media item" as particularly recited
and specifically described in each of the independent claims 1, 8, and 15.
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Application 13/843,623
For example, the Examiner found that paragraph 11 of Ayers teaches
that participants can be inmates. See Ans. 6; Ayers ,i 11. The Examiner
found paragraph 7 5 of Ayers teaches that video files are stored in a remote
server, cataloged and readily reviewable by participants. See Ans. 6; Ayers
,i 7 5. The Examiner also found paragraph 7 5 of Ayers teaches "the analysis
stage that is performed by the system can provide valuable information
about the relationship between the participants (i.e. content is viewable prior
to the completion of the pending review)." See Ans. 6 (emphasis added);
Ayers ,i 75. Finally, the Examiner found that paragraph 75 of Ayers teaches
that face-to-face interactions are stored, cataloged, and searchable for the
convenience of the participants and/or reviewer. See Ans. 6; Ayers ,i 77.
While Ayers teaches in paragraph 7 5 that a "video file may be shared
with others with permission from one or more of the participants," and "[t]he
video file may be shared with others when only all of the participants
provide permission for sharing," we find these teachings insufficient to teach
or suggest the disputed limitation, which requires "determining" for a given
media item that "content is viewable prior to the completion of the pending
review." See Ayers ,i 75 (emphasis added). Thus, we agree with Appellants
that, on the record before us, these portions of Ayers are insufficient to teach
or suggest the "determining" limitation of claim 1.
In addition, the Examiner found Edd teaches or suggests that "the first
portion of the media item is accessible to the recipient prior to receiving the
review results and inaccessible to the recipient subsequent to receiving the
review results," as recited in claim 1. Non-Final Act 5 (citing Edd col.
3 :26-29). The cited portion of Edd teaches "prior to the automatically
initiated review the second country version is accessible to end users of a
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web site that uses the content-controlled database." Edd col. 3:26-29. The
Examiner found "[t]his is functionally equivalent to the claimed language
because, the portion of media (i.e. content) is accessible to the recipient (i.e.
accessible to the end users) prior to the receiving the review results (i.e. prior
to the automatically initiated review)." Ans. 6.
We agree with Appellants that the Examiner erred. The invention as
claimed recites a single media item that has at least two portions. In
contrast, Edd teaches multiple, separate versions of the same content, but not
multiple portions of content. See Reply Br. 3. On the record before us, it is
unclear how the teachings of Edd fit with the teachings of Shapiro, Harper,
and Ayers to teach or suggest "the first portion of the media item is
accessible to the recipient prior to receiving the review results and
inaccessible to the recipient subsequent to receiving the review results," as
claim 1 requires.
For these reasons, we are persuaded that the Examiner erred in finding
that the combined teachings of Shapiro, Harper, Edd, and Ayers teach or
suggest the disputed limitations of claim 1. The Examiner's findings do not
provide sufficient evidence or explanation to support the rejection. See
Ans. 6.
Accordingly, on the record before us, we reverse the Examiner's
35 U.S.C. § 103(a) rejection of independent claim 1 and grouped claims 3-8,
10-15 and 17-20.
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DECISION
We reverse the Examiner's decision rejecting claims 1, 3-8, 10-15,
and 17-20.2
REVERSED
2 In the event of further prosecution, we leave it to the Examiner to
determine whether the claims are patent eligible under 35 U.S.C. § 101 in
view of the Director's revised guidance on subject matter eligibility. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (https://www.govinfo.gov/content/pkg/FR-2019-0l-
07/pdf/2018-28282.pdf).
6
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD TORGERSRUD and
JOHN SATORI YAMASAKI
Appeal 2018-008067
Application 13/843,623
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge, Dissenting Opinion.
I write separately because I respectfully disagree with the Majority's
reversal of the Examiner's rejection. For at least the reasons detailed below,
and based upon a preponderance of the evidence, I find the following claim
limitations are taught or suggested by the Examiner's proffered combination
of Shapiro, Harper, Edd, and Ayers, and are therefore obvious:
"determining that a first portion of the media item is viewable prior to
completion of a pending review of the media item," as recited in independent
Claims 1, 8, and,
Appeal 2018-008067
Application 13/843,623
"determine that a first portion of the media item is viewable prior to
completion of a pending review of the media item," as recited in independent
Claim 15 ( emphasis added), and,
"wherein the first portion of the media item is accessible to the
recipient prior to receiving the review results and inaccessible to the
recipient subsequent to receiving the review results."
Claims 1, 8, and 15 ( emphasis added).
Claim Construction
I begin my analysis with claim construction, and tum to the
Specification for context:
Pertinent portions of paragraphs 3 and 78 of the Specification are
descriptive of the invention:
In general, in one aspect, the invention relates to a method
for reviewing an inmate's communications. The method includes
receiving a two-party message including a media item, where a
first party of the two-party message is the inmate, and where the
two-party message targets a recipient, and determining whether
the media item is viewable pending review.
Spec. ,i 3 ( emphasis added).
The Specification (ii 78) describes exemplary types of media items:
In one or more embodiments of the invention, the message
server (732) is a process or group of processes with functionality
to receive messages that include media items ( e.g., digital text,
digital photos, digital videos, digital audio, etc.) and deliver
those messages to a recipient based on a target address.
Specifically, the message server (732) may receive messages
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addressed to, or sent from, an inmate residing within a controlled
facility. The message server (732) may send and receive
messages to and from an inmate application (not shown), an
inmate kiosk (not shown), a visitor kiosk (not shown), and/or an
outsider application (not shown).
Spec. ,i 78 ( emphasis added).
Given this context, I conclude, as an initial matter of claim
construction, that the scope of the claimed "media item" at least covers
"digital text, digital photos, digital videos, digital audio, etc." Spec. ,i 78.3
Secondly, I note the two-party messages include messages that are
"addressed to, or sent from, an inmate residing within a controlled facility."
Id. ( emphasis added). Thus, according to the Specification (ii 78), the
communication may flow in both directions between the two parties: i.e.,
from the "inmate" to the "recipient" or vice versa, via the message server.
However, as claimed, the inmate is the first party, and the "two party
message" that "targets a recipient" implies that the "recipient" is the second
party. Claims 1, 8, and 15. However, independent claims 1, 8, and 15 are
silent regarding any literal mention of a "second party." But dependent
3 I accord the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). The scope of the claims on appeal, at
a minimum, at least covers the corresponding supporting embodiment( s)
described in the Specification. However, the scope of the claims is not
limited to the preferred embodiments described in the Specification:
"[ A ]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments .... [C]laims may embrace 'different subject matter
than is illustrated in the specific embodiments in the specification.'"
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane)
(internal citations omitted).
3
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claims 6 and 13 further limit independent claims 1 and 8, respectively, by
specifying "wherein a second party of the two-party message is external to
a controlledfacility housing the inmate." (emphasis added). 4
As further explained in the Background of the Specification, in
detention environments such as jails and prisons, "detained individuals, such
as prisoners, offenders, convicts, military personnel, patients, government
cleared personnel, or other detainees, frequently desire to communicate with
individuals outside the detention environment such as friends or family
members." Spec. ,i 2 (emphasis added). Thus, according to one
embodiment, the "recipient" as recited in the claims may be a friend or
family members. Id.
However, inmates are subject to various communications restrictions
that may be, for example, exercised under a state's police power. The
Specification provides several non-limiting examples: "Inmate target
restrictions may be specific outsiders or visitors with whom the inmate is
not allowed to communicate ( e.g., the victim of a crime perpetrated by the
inmate, etc.)." Spec. ,i 24 (emphasis added). Further, such "[i]nmate target
restrictions may also include types of people with whom the inmate is not
4 Under the doctrine of claim differentiation, "dependent claims are
presumed to be of nan-ower scope than the independent claims from which
they depend." Hm,vrnedica Osteonics Corp. v. Zirnmer, Inc., 822 F.3d 1312,
1323 (Fed. Cir. 2016); see also Phillips, 415 F.3d at 1314-15 (Fed. Cir.
2005) ( en bane) ("Differences among claims can also be a useful guide in
understanding the meaning of particular claim terms. For example, the
presence of a dependent claim that adds a particular limitation gives rise to a
presumption that the limitation in question is not present in the independent
claim.") ( citations omitted) ( emphasis added).
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allowed contact (e.g., outsiders who are ex-cons, minors under the age of 18,
etc.)." Id.
I emphasize, as an initial matter of claim construction, that method
claim 1 does not specify who or what performs the disputed step or act of
"determining."
The Evidence
Turning to the references relied upon by the Examiner as evidence in
support of the rejection:
( 1) Shapiro describes an invention that "includes delivering and
monitoring digital content distributed to correctional facility inmates, giving
supervisory authorities the ability to screen the incoming digital content."
Abstract. Shapiro further describes: "[ d]igital content can include email, and
stored and steamed video content, and can be scanned for keywords by
supervisory authorities before delivery to an inmate." Id.
(2) Harper describes: "A correctional facility communication system
for sending an external message to an offender of a correctional facility."
Abstract.
(3) Edd describes managing content "in a content-controlled database
by detecting a modification made to a first country version of a content item
in the content-controlled database, and automatically initiating a review of a
second country version of the content item in the content-controlled database
in response to detecting the modification of the first country version."
Abstract.
(4) Ayers describes a learning tool used "in reviewing an audio-video
recording of a face-to-face interaction with one or more persons, whereby
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one or more of the participants use the learning tool to privately describe
their separate viewpoints of the interaction." Abstract.
Two-Party Messages Sent or Received by an Inmate
According to one described embodiment of Appellants' invention: "a
message with a single recipient is referred to as a two-party message, in
which one party is an inmate (who is either the sender or receiver) and one
party is an outsider or visitor (who is either the sender or receiver)." Spec.
,i 79. Thus, a "two-party message may be sent or received by the inmate," in
accordance with the Specification, unless further limited by specific claim
language. Id.
Regarding the contested limitation: "determining that a first portion of
the media item is viewable prior to completion of a pending review of the
media item" (Claim 1), the Examiner relies on Shapiro's claim 12 for
teaching or suggesting at least the "determining that a first portion of the
media item is viewable" part of the limitation:
-determining that a first portion of the media item is viewable pending review (claim 12
!imitation "delay distriblition ... to an intended recipient")
Non-Final Act. 3; see also Ans. 3-4.
Shapiro's claim 12 (page 20), as specifically relied upon by the
Examiner (id.), describes in pertinent part:
obtain digital video content from inmates or non-inmates,
delay distribution of at least a portion of the digital video content
until a staff person of the correctional facility approves
transmission of the at least a portion of digital video content to
an intended recipient, and distribute the digital video content to
the intended recipient if approved.
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Application 13/843,623
( emphasis added).
Thus, I find Shapiro's claim 12 at least suggests providing some of the
inmate-provided, non-delayed video content to a non-inmate recipient, with
the delayed "at least a portion" of the video content not being immediately
available for viewing by the recipient, until after review and approval by a
staff person of the correctional facility.
Regarding the second part of the limitation: "viewable prior to
completion of a pending review of the media item" ( claim 1, ( emphasis
added)), the Examiner finds: "Shapiro and Harper do[] not explicitly teach
wherein the first portion of the media item is accessible to the recipient prior
to receiving the review results." Non-Final Act. 5 (emphasis added).
However, the Examiner finds:
Edd teaches wherein the first portion of the media item is
accessible to the recipient prior to receiving the review results
( column 3 lines 26-29). It would have been obvious to one of
ordinary skill in the art at the time of applicant's invention was
made to implement Edd's teaching in Shapiro and Harper's
teaching to ... allow access[] to the content to the recipient prior
to receiving the review results. The motivation for doing so
would be to allow temporary access to the content so if the
content were later disapproved on the review, the recipient user
can explain the reason on why he should be allowed access.
Although, Edd teaches wherein the first portion of the
media item is accessible/viewable to the recipient prior to
receiving the review results (i.e. which can be functionally
equivalent to prior to completion of the pending review of the
media item)( column 3 lines 26-29), [(paragraph break inserted)]
Ayers teaches determining that a first portion of the media item
is viewable prior to completion of a pending review of the media
item (Paragraph[s] 11, 75 77). It would have been obvious to
one of ordinary skill in the art at the time of applicant's invention
was made to implement Ayers's teaching in Shapiro, Edd and
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Application 13/843,623
Harper's teaching to come up with determining first portion of
the media item prior to completion of pending review of the
media item. The motivation [for] doing so would be to preview
the media/video therefore, the length of the media can set or
preset (Paragraph 77).
Non-Final Act. 5-6.
The Edd Reference
Column three of Edd provides some background description:
In various embodiments consistent with the invention,
content is managed in a content-controlled database by detecting
a modification made to a first country version of a content
item in the content-controlled database, and automatically
initiating a review of a second country version of the content
item in the content-controlled database in response to detecting
the modification of the first country version.
Edd, col. 3, 11. 6-12 ( emphasis added).
Lines 26-29 of column 3, as cited by the Examiner (Non-Final Act. 6)
expressly teach: "prior to the automatically initiated review the second
country version is accessible to end users of a web site that uses the
content-controlled database." ( emphasis added).
As noted above, the claimed media items can include "digital text,
digital photos, digital videos, digital audio, etc." (Spec. ,i 78). Edd describes
maintaining "content from a content-controlled database ( e.g., web pages or
other files maintained in a web site)." (Edd, Col. 2, 60-62).
Thus, I find Edd, in combination with the other cited references,
teaches or suggests at least the following part of the "determining"
limitation: "viewable prior to completion of a pending review of the media
item," as recited in independent claims 1 and 8, and as similarly recited in
independent claim 15 ( emphasis added).
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In particular, I find Edd teaches or suggests that a first portion of the
media item (i.e., the modified first country version of the content item) is
viewable (i.e., accessible) ''prior to completion of a pending review" of the
second country version of the same media item. Claims 1, 8, and 15
( emphasis added).
As noted above, the Examiner also relies on Shapiro's claim 12 for
teaching or suggesting at least the "determining that a first portion of the
media item is viewable" part of the limitation:
~determining that a first portion of the media item is viewable pending review (claim 12
limitation "de!ay distribution,,Jo an intended recipient")
Non-Final Act. 3; see also Ans. 3-4.
I emphasize that the Examiner's rejection is based upon the combined
teachings and suggestions of the cited references.
In the Appeal Brief, Appellants merely address Edd by citing to
column 1, lines 14-17, which summarize: "[t]he invention is generally
related to the management of electronic content, in particular, to the
management of electronic content organized into a website and accessible
via a network such as the Internet." App. Br. 12.
However, Appellants fail to address the Examiner's specific findings
regarding Edd's description at column 3, lines 26-29. Non-Final Act. 5. To
the extent that Appellants address the Examiner's findings regarding Edd in
the Reply Brief (page 3, paragraph 1) by merely reproducing them, the
arguments which follow are not supported by any citations to specific
portions of Edd:
In contrast, in Edd, there is a first content that is reviewed (first
country version of a content item), and based on the review of
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the first content, the access to a second content (second country
version of the same content item) is controlled. Accordingly,
Edd requires multiple versions of the same content, but not
multiple portions of the content. Importantly, in Edd, the first of
these multiple versions is reviewed to control access to the
second version of the multiple versions. This is conceptually
entirely different from as single media item being reviewed to
control access to a part of the single media item. In view of the
above, a mapping of the "modified first country version" in Edd
to the "first portion of the media item" as claimed is improper.
Reply Br. 3, ,-J 2. ( emphasis omitted, emphasis in bold added).
Without any specific evidentiary support, Appellants arguments are
merely conclusory. It is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence); In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); see also Ex parte Belinne, 2009 WL 2477843, at *3-4
(BP AI Aug. 10, 2009) (informative).
Applying this reasoning here, I find Appellants' arguments are merely
conclusory and do not meet the burden of persuasion to show error in the
Examiner's prima facie case of obviousness.
The Ayers Reference
I find the Examiner's additional reliance on Ayers is essentially
cumulative with Edd. See,for example, Ayers at paragraph 75:
The user interface can be a part of a social networking
web interface and/or application. The video files are
stored in a remote server, cataloged and readily reviewable by
the parties who are the participants. The video file may be
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Application 13/843,623
shared with others with permission from one or more of the
participants.
( emphasis added).
Thus, I find Ayers also teaches or suggests that "media items" (e.g.,
video files) are also "viewable" by "others" with permission from the one or
more participants ''prior to completion of a pending review of the media
item" (i.e., the video file that is being currently reviewed by any of the
parties who are the participants), within the meaning of independent claims
1 and 8, and as similarly recited in independent claim 15, under a broad but
reasonable interpretation.
I also observe that Ayers' paragraph 68 (not relied upon by the
Examiner, but very near paragraph 75), expressly describes: "The Reviewing
Stage includes playback of the recorded composite images and/or video for
viewing by both parties."
If the video media item is viewable during the "Reviewing Stage" as
described in Ayers (id.), I find the media item is also "viewable prior to
completion of a pending review of the media item," within the scope of each
of independent claims 1, 8, and 15.
Similarly, I find claims 15 and 16 in Shapiro (page 20) teach or
suggest time delayed access for the inmate-provided ( or non-inmate-
provided) video communication which allows the media item to be
"viewable prior to completion of a pending review of the media item" (i.e.,
until censored and interrupted by the correctional facility staff that is
monitoring the video stream in advance of the time-delayed viewing by the
inmate or the non-inmate recipient), within the scope of independent claims
1, 8, and 15.
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Shapiro's independent claim 12 recites: "obtain[ing] digital video
content for inmates or non-inmates." Shapiro's claims 15 and 16, which
depend directly from claim 12, are reproduced below:
15. The system of claim 12, wherein the delay is sufficient to
enable correctional facility staff to monitor and interrupt the
video digital content if the digital video content contains non-
authorized content.
16. The system of claim 12, wherein the digital content is
streaming video content, the digital video content stored by the
server software for a delay period sufficient to enable
correctional facility staff to monitor and interrupt the stream
if non-authorized content is streamed.
( emphasis added).
The Examiner relies on claims 15 and 16 of Shapiro in the Non-Final
Action, at page 3. I emphasize again that the Examiner's rejection is based
upon the combined teachings and suggestions of the cited references.
Our reviewing court further guides: "'the question under 35 USC 103
is not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis
added); see also MPEP § 2123.
Similar to my discussion above regarding Edd, Appellants fail to
address the Examiner's specific findings regarding Ayers. See Non-Final
Act. 5-6:
Ayers teaches determining that a first portion of the media item
is viewable prior to completion of a pending review of the media
item (Paragraph 11, 75[, and] 77). It would have been obvious
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to one of ordinary skill in the art at the time of applicant's
invention was made to implement Ayers's teaching in Shapiro,
Edd and Harper's teaching to come up with determining first
portion of the media item prior to completion of pending review
of the media item. The motivation doing so would be to preview
the media/video therefore, the length of the media can set or
preset (Paragraph 77).
Non-Final Act. 5-6.
In the Appeal Brief, Appellants merely assert: "Ayer[s] is directed to
methods and systems for understanding face-to-face human interactions.
See Ayers, Abstract. However, Ayers does not cure what Shapiro, Harper,
and Edd lack."
Again, I find this is mere attorney argument, unsupported by any
factual evidence in support, and thus is unpersuasive and entitled to little
probative value. See Geisler, 116 F.3d at 1470.
Appellants further argue:
Although the Examiner cites paragraphs [0011], [0075], and
[0077] of Ayers, the Examiner fails to point out how the cited
paragraphs teach or disclose claimed features. Moreover, it is
completely unclear how and where Ayers teaches "determining
that a first portion of the media item is viewable prior to
completion of a pending review of the media item," because the
cited paragraphs appear to be entirely unrelated to the claim
limitation. In other words, the rejection is not clearly articulated
and Appellant is unable to respond completely. This is a
violation of the goal of examination.
App. Br. 13-14.
However, the Examiner's reliance on paragraph 11 needs no
explanation regarding how it teaches or discloses the claimed features, as
Appellants assert. Id.
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Ayers' paragraph 11 describes "Prison inmates preparing for
reentering society after years of incarceration." ( emphasis added).
Each of Appellants' independent claims 1, 8, and 15 recites "an inmate" in
the respective preamble to the claim. Appellants fail to persuasively traverse
address the Examiner's findings regarding paragraph 11 of Ayers.
Moreover, I find Ayers' mention of prison inmates evidences that Ayers is
analogous art to Appellants' claimed invention. Ayers, at paragraph 75,
describes reviewing "media items" (i.e., video files), as recited in each of
Appellants' independent claims 1, 8, and 15:
The user interface can be a part of a social networking
web interface and/or application. The video files are
stored in a remote server, cataloged and readily reviewable by
the parties who are the participants. The video file may be
shared with others with permission from one or more of the
participants.
Ayers ,-J 75 (emphasis added).
Thus, I find Ayers (,-J 75), at least suggests that while participants are
reviewing the video file(s), such video file(s) may also be shared with others
with permission from one or more of the participants, i.e., the video file(s)
may be shared with others ''prior to completion of a pending review of the
media item." Claim 1 ( emphasis added). Thus, the video file being
currently reviewed by any of the participants may be shared with others
during the review, but prior to completion of the pending review.
Appellants fail to persuasively traverse address the Examiner's
findings regarding paragraph 75 (and paragraph 77) of Ayers. Non-Final
Act. 5-6. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants only mention Ayers once in the Reply Brief (2): "None of Harper
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(U.S. Patent No. 7,742,582), Edd (U.S. Patent No. 8,086952) and Ayers
(U.S. Patent Publication No. 2012/0276513) cure what Shapiro lacks."
Appellants advance no substantive arguments regarding Ayers in the
Reply Brief.
Contrary to Appellant's contentions (App. Br. 13-14), it is my view
that the Examiner has met the notice requirement for a prima facie case,
pursuant to 35 U.S.C. § 132(a). The Federal Circuit has held, "the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed.
Cir. 2007).
[ A ]11 that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
This burden is met by "adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond."
Hyatt, 492 F.3d at 1370. It is only "when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection" that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v.
Miller 906 F.2d 1574, 1578 (Fed. Cir. 1990).
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Such is not the case presented here, i.e., a violation of the minimal
notice requirements of 35 U.S.C. § 132(a). In my view, the Examiner's
prima facie case has not been substantively and persuasively rebutted by
Appellants. Moreover, Arguments not made are waived. See 37 C.F.R.
41.37(c)(l)(iv).
Lastly, in my view: "determining that a first portion of the media item
is viewable prior to completion of a pending review of the media item," as
recited in similar form in independent claims 1, 8, and 15, is nothing more
than a predictable result in light of the combined teachings and
suggestions of the references as relied upon by the Examiner. See KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398,401 (2007) ("[A] combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
Therefore, for at least the aforementioned reasons, I find the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness are supported by a preponderance of the evidence regarding the
disputed "determining" clause limitations:
"determining that a first portion of the media item is viewable prior to
completion of a pending review of the media item," as recited in independent
Claims 1, 8, and,
"determine that a first portion of the media item is viewable prior to
completion of a pending review of the media item," as recited in independent
Claim 15.
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Last-recited "wherein" clause of Independent Claims 1, 8, and 15
For at least the reasons discussed below, I find the following similar
"wherein" clause limitation is taught or suggested by the Examiner's
proffered combination of Shapiro, Harper, Edd, and Ayers:
"wherein the first portion of the media item is accessible to the
recipient prior to receiving the review results and inaccessible to the
recipient subsequent to receiving the review results."
Claims 1, 8, and 15.
In reviewing the Appeal Brief, I do not see where this "wherein"
clause is specifically and separately argued, although there is admittedly
some overlap with the "determining" clause above. Regarding this
"wherein" clause limitation, I agree with and adopt the Examiner's
underlying factual findings and ultimate legal conclusion of obviousness.
Non-Final Act. 5-6.
As also found by the Examiner: "In claim 12 of [the] Shapiro
reference, Shapiro further teaches making the first portion of the media item
accessible to the recipient based on the first portion being placed in the
conditionally viewable repository for the inmate ([(see)] claim 12 limitation
"distribute the digital video content ... if approved" and "obtain the
distributed digital video ... [and] present the video content). Non-Final
Act. 3-4.
Given the evidence relied upon by the Examiner (id.), what is claimed
would have been a predictable result: if the inmate-provided video content
is not approved (i.e., censored by the staff of the correctional facility-
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Shapiro, claim 12), it would have been "inaccessible to the recipient
subsequent to receiving the review results." Claims 1, 8, and 15.
The Examiner finds: "In Paragraph 214, Shapiro teaches media
content is inaccessible to the recipient subsequent to receiving the review
result (i.e. moved to [a] different location for deletion)." Non-Final Act. 5.
To the extent that some of the features relied upon by the Examiner in
the Shapiro, Harper, Edd, and Ayers references overlap and thus are
cumulative, I again emphasize that the rejection is based upon the combined
teachings and suggestions of the cited references.
On this record, I am not persuaded of error regarding the Examiner's
legal conclusion of obviousness, as pertaining to the last recited "wherein"
clause limitation of claim 1. Moreover, this "wherein" clause (recited in
each of independent claims 1, 8, and 15) does not appear to be specifically
and separately argued by Appellants in either the Appeal Brief or the Reply
Brief. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding the Examiner's proffered combination of references, the
Supreme Court provides clear guidance that "when a patent 'simply arranges
old elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement, the combination is obvious." KSR, 550 U.S. at 417 (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976)) (emphasis added).
The Supreme Court further guides:
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent ... unless more
ingenuity and skill were required in making or applying the said
improvement than are possessed by an ordinary mechanic
acquainted with the business, there is an absence of that degree
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of skill and ingenuity which constitute the essential elements of
every invention.
Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)). I note that Hotchkiss was cited multiple times
with approval by the Supreme Court inKSR, 550 U.S. at 406,415, and 427.
The Supreme Court cites the obviousness statute, and emphasizes:
Section 103(a) forbids issuance of a patent when "'the
differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter
pertains."
KSR, 550 U.S. at 406 (emphasis added).
This guidance is applicable here. For at least the aforementioned
reasons, and based upon a preponderance of the evidence, I am not
persuaded that Appellants have shown that the Examiner's legal conclusion
of obviousness is in error.
Additional Issues
Given that the claims at issue are intended to restrict communications
between a non-inmate citizen and an inmate who is incarcerated in a federal,
state, or local prison, questions arise as to the public policy of granting a
patent (i.e., a legal monopoly for a limited term) to a non-government entity
to similarly "regulate" (i.e., via enforcement of any patent granted) a form of
communication already regulated or controlled by state, local, and federal
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prison officials, under applicable laws, and under the protections afforded by
our Constitution. 5
Although a private patent owner would be the potential actor ( and not
the government), a question arises as to whether the patent system (and
federal patent laws) can be used by a private entity to place any strictures on
a state's police power to regulate and maintain control over inmate
communications within the state's prison system. 6
State sovereign immunity under the Eleventh Amendment extends to
all parts of the state entity, including, for example, state universities.
Although a state-owned prison operated by state employees would
presumably assert state sovereign immunity as an affirmative defense
against patent infringement, that defense would not extend to a privately
operated prison, or to a prison operated as a publicly-traded corporation.
When a convicted individual walks through the prison entrance,
personal liberty is surrendered, including the right to unrestricted
communications. There are legitimate reasons for restricting such inmate
5 See e.g., Holtz, Titia A., "REACHING OUT FROM BEHIND BARS: THE
CONSTITUTIONALITY OF LAWS BARRING PRISONERS FROM THE
INTERNET', 67 Brook. L. Rev. 855, (2002). See also, e.g., OHIO REV.
CODE ANN.§ 5145.31C(l) (regulating state inmate Internet use).
6 See e.g., Turner v. Safley, 482 U.S. 78, 85 (1987) ("Where a state penal
system is involved, federal courts have, as we indicated in Martinez,
additional reason to accord deference to the appropriate prison authorities.
See id., at 405, 94 S.Ct., at 1807.") (citing Procunier v. Martinez, 416 U.S.
396, 413--414 (1974)).
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communications, as described in paragraphs 22-24 of Appellants'
Specification, and as dictated by the courts. 7
However, what if a patent grant as applied to a private prison system
is used to enforce restrictions on other types of inmate communications,
such as contact with an outside defense attorney? Notably, Appellants'
claims are silent regarding any exceptions that would respect privileged
attorney-client communications.
What if non-inmate friends and relatives ("recipient[s]" - claim 1)
attempting to have the inmate exonerated of the crime are censored by
private prison officials, in accordance with "a method for reviewing
communications of an inmate" ( claim 1 ), such that their ability to mount an
effective appeal is eviscerated, due to a restricted ability to communicate
with the inmate?
And what entity polices the private prison censors who are
implementing a restricted communications policy under license to the patent
owner?
More generally, Appellants' claims, if patented, amount to a
government grant (i.e., a legal monopoly for a limited time) to a private
entity (the patent owner) to restrict communications (speech) in a manner in
accordance with the scope of the claims.
7 See e.g., Turner, 482 U.S. at 89 ("when a prison regulation impinges on
inmates' constitutional rights, the regulation is valid if it is reasonably
related to legitimate penological interests.").
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Significantly, the scope of Appellants' claims is not limited solely to
prison facilities:
Examples of controlled facilities (e.g., controlled facility (100))
include, but are not limited to, detention environments ( e.g., jails,
prisons, etc.), immigration detention centers, military centers,
government secure sites, law enforcement holding structures,
secure business complexes, and psychiatric hospitals.
Spec. ,-i 21. 8
Appellants also provide a broad, non-limiting, exemplary description
of what an "inmate" is within the scope of the claims:
In one or more embodiments of the invention, an inmate is a
person within a controlled facility (100) who is subject to one or
more restrictions, primarily to his or her freedom or rights.
Examples of inmates include, but are not limited to, prisoners,
wards of the state, parolees, employees working in a secure
business complex, temporary or long-term internees, patients,
military personnel, uncharged suspects, and refugees. Inmate
restrictions may be part of a court imposed sentence on an
inmate, while others may be specific to the controlled facility
(100) in which the inmate resides. Restrictions may include
limitations on an inmate's physical movement (i.e., physical
restrictions) and limitations on the inmate's ability to
communicate (i.e., communication restrictions). Communication
restrictions include inmate use restrictions, inmate target
restrictions, and device use restrictions.
Spec. 22 ( emphasis added).
Further, the scope of the claims is not limited to the preferred
embodiments described in the Specification. See Phillips, 415 F.3d at 1323.
8 See also Spec. ,-J 19 ("In general, embodiments of the invention provide a
method and system for facilitating communication between inmates in a
controlled facility and outsiders. Embodiments of the invention may include
interactions with a secure social network.") ( emphasis added).
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Regarding the broader applications of Appellants' claims to restrict
communications (speech) among various individuals who are not prison
inmates, see, e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1322 (Fed. Cir. 2016), Judge Mayer, concurring:
"[T]he Constitution protects the right to receive information and
ideas .... This right to receive information and ideas, regardless
of their social worth, is fundamental to our free society." Stanley
v. Georgia, 394 U.S. 557,564 (1969) (citations omitted). Patents,
which function as government-sanctioned monopolies, invade
core First Amendment rights when they are allowed to obstruct
the essential channels of scientific, economic, and political
discourse. See United States v. Playboy Entm 't Grp., Inc., 529
U.S. 803, 812 (2000) ("The distinction between laws burdening
and laws banning speech is but a matter of degree."); see also In
re Tam, 808 F.3d 1321, 1340 (Fed. Cir. 2015) (en bane)
( explaining that the government may impermissibly burden
speech "even when it does so indirectly").
Id. ( emphasis added).
"Suppression of free speech is no less pernicious because it occurs in
the digital, rather than the physical, realm." Id. at 1323. "Like all
congressional powers, the power to issue patents and copyrights is
circumscribed by the First Amendment. See Golan v. Holder, 132 S. Ct.
873, 889-93 (2012); Eldred v. Ashcroft, 537 U.S. 186, 219-21 (2003)."
Intellectual Ventures I, 838 F.3d at 1323, Judge Mayer, concurring.
I find this reasoning is applicable here, particularly because the scope
of Appellants' claims is not limited solely to inmates in prison facilities. See
supra, Spec. ,-J 21.
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Moreover, dependent claim 12 recites: "wherein the review process is
performed by a software reviewer." ( emphasis added).
Welcome to the new age of patented methods of censorship by
machines over human speech, and patented machine-imposed restrictions on
our selective ability to communicate with other humans!
Did our founding fathers ever contemplate such a bizarre scenario
when they drafted the Bill of Rights? No. The first amendment only limits
the power of the government to restrict speech - not machines. 9 I can only
speculate as to whether the founding fathers ever contemplated that a patent
grant (from the government) might be enforced by a private patent owner to
restrict speech in ways that the government itself could not.
This slippery slope is a threat to personal liberty. Even prison inmates
do not surrender all of their constitutional rights when the iron door slams
shut and locks. And we should be mindful that at least some of them are
innocent, a victim of a wrongful conviction, as evidenced by the many who
have been exonerated in light of DNA evidence not available at the time of
the trial.
Although my concerns regarding such indirect burdens which
restrict speech in a manner involving the patent system are serious enough to
mention here, the resolution of such questions is outside the jurisdiction of
this PT AB panel. These concerns have no bearing on my legal conclusion
of the obviousness of the patent claims on appeal.
9 "Congress shall make no law ... abridging the freedom of speech, or of
the press .... " Amendment I.
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Therefore, the important issues regarding freedom of speech that are
raised by this appeal are left to adversely affected parties to resolve in the
courts in similar cases.
I respectfully dissent from the Majority opinion and cast my vote as a
member of the panel to affirm the Examiner's rejection of all claims on
appeal.
25