Ex Parte Trossen et alDownload PDFBoard of Patent Appeals and InterferencesJun 27, 201210313489 (B.P.A.I. Jun. 27, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/313,489 12/06/2002 Dirk Trossen 990-001.560 8811 20413 7590 06/28/2012 FRANCIS J MAGUIRE WARE, FRESSOLA, VAN DER SLUYS & ADOLPHSON LLP BRADFORD GREEN, BUILDING FIVE 755 MAIN STREET, P O BOX 224 MONROE, CT 06468 EXAMINER ENG, DAVID Y ART UNIT PAPER NUMBER 2455 MAIL DATE DELIVERY MODE 06/28/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DIRK TROSSEN and HEMANT M. CHASKAR ____________ Appeal 2009-014823 Application 10/313,489 Technology Center 2400 ____________ Before DENISE M. POTHIER, JEFFREY S. SMITH, and JENNIFER S. BISK, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014823 Application 10/313,489 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-7, 9-23, 25-37, and 39-45, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates to a system, method and computer program product for the delivery of media content. Title. Representative Claim 1. A method comprising: receiving a multimedia message from a sending entity and addressed to at least one recipient, wherein the multimedia message includes media content; identifying at least one rule comprising at least one sending entity rule defining a rule provided by the sending entity, and wherein the at least one rule is identified prior to delivering the media content; and delivering the media content to the at least one recipient based upon the respective at least one rule. Prior Art Waese US 6,286,031 B1 Sept. 4, 2001 Smith US 6,452,905 B1 Sept. 17, 2002 Sahai US 6,594,699 B1 July 15, 2003 (filed Oct. 10, 1997) Kahveci US 6,938,080 B1 Aug. 30, 2005 (filed June 7, 2000) Appeal 2009-014823 Application 10/313,489 3 Firestone US 6,965,646 B1 Nov. 15, 2005 (filed June 28, 2000) Nagai US 6,993,689 B2 Jan. 31, 2006 (filed Oct. 30, 2001) Examiner’s Rejections Claims 37, 39-42, and 45 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1, 9-11, 17, 25-27, 33-37, and 43-45 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahveci and Sahai. Claims 2-5 and 18-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahveci, Sahai, and Waese. Claims 6, 7, 21-23, and 39-42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahveci, Sahai, and Firestone. Claims 12-16 and 28-31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahveci, Sahai, and Nagai. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kahveci, Sahai, and Smith. Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claim 1. Appeal 2009-014823 Application 10/313,489 4 ANALYSIS Section 101 rejection The Examiner rejects claim 37 because a computer program product is not statutory subject matter because the program codes are non-functional descriptive material. Ans. 10-11. Appellants contend that the executable portions of code stored on the computer readable medium are functional descriptive material and are on a computer-readable storage medium. App. Br. 4-5. We agree with Appellants. The Specification only discloses the computer-readable storage medium as non-volatile storage medium (see Spec. 28:7-11) and does not cover transitory embodiments. See Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Office 212 (Feb. 23, 2010). We do not sustain the rejection of claims 37, 39-42, and 45 under 35 U.S.C. § 101. Section 103 rejections Appellants contend the user preferences of Sahai are receiver rules, not sender rules. App. Br. 5-7. The Examiner finds that Sahai teaches sender rules. Ans. 7-8, 11-12. We agree with the Examiner. The scope of “a rule provided by the sending entity,” when read in light of pages 14 and 15 of Appellants’ Specification, encompasses a rule defining how the media content is delivered or processed, such as a rule based upon the connectivity of the respective recipients or a rule specifying a network for delivering media content. Sahai teaches a server that sends data to a client based on client capabilities (col. 2, ll. 61-64; col. 4, ll. 32-39) or based on delivery paths for Appeal 2009-014823 Application 10/313,489 5 multimedia traffic from the server to the client (col. 4, ll. 44-49). See also Ans. 7-8 (citing to columns 2 and 4). Therefore Sahai teaches “a rule provided by the sending entity” within the meaning of claim 1. Appellants also contend that the application service provider (ASP) of Kahveci is a network entity, not a sending entity; therefore, Kahveci does not teach a sending entity rule defining a rule provided by the sending entity. Reply Br. 2. The Examiner finds that the ASP of Kahveci is a sending entity that, when combined with Sahai, provides a sending entity rule as recited in claim 1. Ans. 5-7. We agree with the Examiner. Appellants have not provided a definition of “sending entity” that excludes the ASP taught by Kahveci. Appellants have failed to show error in the Examiner’s finding that the combination of Kahveci and Sahai teaches “identifying at least one rule comprising at least one sending entity rule defining a rule provided by the sending entity” as recited in claim 1. Appellants contend that the combination of Kahveci and Sahai does not teach “receiving a multimedia message from the sending entity and addressed to at least one recipient” as recited in claim 1. App. Br. 7-8. The Examiner finds that Kahveci teaches a server that receives a multimedia message from a sending entity and addressed to a recipient. Ans. 4-7, 12. The Examiner also finds that Sahai teaches a server that receives a multimedia message from a sender and addressed to a recipient. Ans. 7-8, 12. Appellants have not provided persuasive evidence or argument to rebut the Examiner’s findings. Appellants present arguments for claims 2-7, 9-23, 25-37, and 39-45 similar to those presented for claim 1 which we find unpersuasive. Compare Appeal 2009-014823 Application 10/313,489 6 App. Br. 8-12 with App. Br. 5-8. Based on our above discussion, we need not address whether Waese, Firestone, Nagai, or Smith cures any purported deficiencies in claims 1, 17, or 37. Lastly, Appellants assert that the final Office Action is improper. App. Br. 12-14. Such issues are petitionable matters under 37 C.F.R. § 1.181 and will not be addressed on appeal. See MPEP §§ 1002 and 1201. We sustain the rejections of claims 1-7, 9-23, 25-37, and 39-45 under 35 U.S.C. § 103. DECISION The rejection of claims 37, 39-42, and 45 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is reversed. The rejections of claims 1-7, 9-23, 25-37, and 39-45 under 35 U.S.C. § 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED rwk Copy with citationCopy as parenthetical citation