Ex Parte Walker et al

Patent Trial and Appeal Board

Jun 14, 2013

11112238 (P.T.A.B. Jun. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GORDON KENT WALKER, GEORGE ALAN
WILEY, RICARDO JORGE LOPEZ, RICHARD DOIL
LANE, and RAJIV VIJAYAN
____________________

Appeal 2010-012277
Application 11/112,238
Technology Center 2100
____________________

Before: JASON V. MORGAN, JUSTIN BUSCH, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 5, 6, 8-17, 20, 21, 23-25, 28, 29, 31-33, 35-39, 41-45, 47-51, 53-55, and
58-65. We have jurisdiction under 35 U.S.C. § 6(b). Claims 3, 4, 7, 18, 19,
22, 26, 27, 30, 34, 40, 46, 52, 56, and 57 are canceled.
We affirm-in-part.
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STATEMENT OF CASE
Introduction
The claims are directed to methods and apparatus for inserting content
into a content stream for rendering on a device. Abs. The content is inserted
in the content stream at a location indicated by an insertion point indicator.
Id. Claims 1 and 32, reproduced below, are illustrative of the claimed
subject matter:
1. A computer-implemented method in a mobile user
device for inserting a content into a content stream received by
the mobile user device, the method comprising:
obtaining from the content stream an annotation
parameter having a content identifier and an insertion point
indicator;
retrieving the content associated with the content
identifier from a memory of the mobile user device in response
to receipt of the annotation parameter; and
inserting the content into the content stream at a location
indicated by the insertion point indicator.
32. A computer-implemented method in a server for inserting a
content into a content stream for rendering on a mobile user device,
the method comprising:
generating an annotation parameter having a content identifier
and an insertion point indicator;
inserting the annotation parameter into the content stream; and
transmitting to the mobile user device the content to be inserted
at the mobile user device and being associated with the annotation
parameter, before transmitting the content stream to the mobile user
device.

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Rejections1
The Examiner rejects claims 24, 25, 28, 29, 31, 50, 51, 53-55, 612, and
65 under 35 U.S.C. §112 second paragraph as being indefinite (Ans. 4);
claims 38, 39, 41-45, and 47-49 under 35 U.S.C. §101 as being directed to
non-statutory subject matter (Ans. 3-4); claims 1, 2, 5, 6, 9-14, 16, 17, 20,
21, 24, 25, 28, 29, 32, 33, 35, 36, 38, 39, 41, 42, 44, 45, 47, 48, 50, 51, 53,
54, and 58-65 under 35 U.S.C. §103(a) as being unpatentable over Hinderks
(WO 02/47384 A1; published June 13, 2002) in view of Signes (US
2002/0156842 A1; published Oct. 24, 2002) (Ans. 4-13); and claims 8, 15,
23, 31, 37, 43, 49, and 55 under 35 U.S.C. §103(a) as being unpatentable
over Hinderks, Signes, and Agnihotri (US 2003/0101150 A1; published May
29, 2003) (Ans. 13-14).
Rather than repeat the arguments here, we refer to the Brief and the
Answer for the respective positions of Appellants and the Examiner. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).

1 The Examiner withdrew rejections under 35 U.S.C. §101 to claims 1, 9, 16,
24, 32, and 50. Ans. 3.
2 The Answer lists claim 63, rather than claim 61, in the rejection. Ans. 4.
This appears to be a typographical error, since claim 61 depends from claim
24, which is the independent claim subject to rejection under 35 U.S.C.
§112, second paragraph. Claim 63’s parent, claim 38, is not subject to this
rejection. Appellants repeat the error. Br. 21-22. We treat our analysis as if
the rejection is based on claim 61.
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REJECTION UNDER 35 U.S.C. §112, ¶2
Appellants contend that the Examiner erred in rejecting claims 24, 25,
28, 29, 31, 50, 51, 53-55, 61, and 65 under 35 U.S.C. §112, second
paragraph. Br. 21-22. The Examiner asserts that the independent claims, 24
and 50, are ambiguous due to lack of antecedent basis for “the computer-
readable media,” even though the claims previously recite “[a] computer-
readable storage media.” We disagree with the Examiner and reverse the
rejection. For purposes of evaluating patentability, we understand “the
computer-readable media” to refer to the previously-recited “computer-
readable storage media” in the preamble of claims 24 and 50. 3
REJECTION UNDER 35 U.S.C. §101
Issue
Appellants’ contention, that the Examiner erred in rejecting claims 38,
39, 41-45, and 47-49 under 35 U.S.C. §101, raises the issue of whether
“computer-implemented apparatus in a server,” recited in the preamble of
independent claims 38 and 44, renders the claims patent-eligible.
Analysis
The Examiner cites page 9, paragraph 39, of Appellants’
Specification, which states that “the processing logic 202 comprises a CPU,
processor, gate array, hardware logic, memory elements, virtual machine,
software, and/or any combination of hardware and software.” Ans. 3. The
Examiner finds the limitations of claims 38 and 44 to read on this section,
concluding that because Appellants intend that the apparatus can be software

3 Our reversal does not affect the Examiner’s objection to claims 25, 28, 29,
31, 51, 53-55, 61, and 65 (Non-Fin. Rej. 2), a subject of petition, not appeal.
See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 608.01(m) (8th
Ed., Rev. 8, July 2010).
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or a combination of hardware and software, the claims lack “the necessary
physical articles or objects to constitute a machine or a manufacture within
the meaning of 35 U.S.C. § 101, instead being software per se.” Id. at 3-4.
Appellants contend that, despite the Specification, the term “apparatus” in
the preamble renders the claims patent-eligible. Br. 19. Appellants further
contend that the term “server” in the preamble, and the claim language that
recites the transmission to mobile user devices of content for insertion in a
content stream, limits the scope of the claims such that they “do not
encompass substantially all practical applications of a mathematical
algorithm, and instead are limited to transmitting data streams in servers.”
Id. at 20. We are not persuaded of error.
The limitations of claims 38 and 44, which recite “logic” and
“means,” are readable on the section of the Specification cited by the
Examiner and therefore may be wholly embodied in software. “A claim that
covers both statutory and non-statutory embodiments (under the broadest
reasonable interpretation of the claim when read in light of the specification
and in view of one skilled in the art) embraces subject matter that is not
eligible for patent protection and therefore is directed to non-statutory
subject matter.” MPEP § 2106; See also Gottschalk v. Benson, 409 U.S. 63,
72 (1972). Accordingly, we are not persuaded that the nominal recitation of
“apparatus in a server” in the preamble limits the invention to being
practiced in a computing device.
Nor do we consider the requirement that the claims be limited to a
practical application to be unreasonable, especially when the claim is in the
USPTO and can be amended. “The four categories [of § 101] together
describe the exclusive reach of patentable subject matter. If a claim covers
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material not found in any of the four statutory categories, that claim falls
outside the plainly expressed scope of § 101 even if the subject matter is
otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir.
2007). “An essential purpose of patent examination is to fashion claims that
are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Appellants do not further argue the rejected independent claims. So for the
foregoing reasons, we sustain the rejection of claims 38 and 44 and those
claims that depend thereon.

REJECTION OF CLAIMS 1, 2, 5, 6, 8-17, 20, 21, 23-25, 28, 29, and 31
UNDER 35 U.S.C. §1034
Issue
Appellants contend that Hinderks fails to teach a mobile device
inserting content into a content stream (Br. 9-10); that Hinderks teaches
away from such an arrangement (id. at 10-11); that Signes fails to correct the
defect (Br. 11); that the references do not teach retrieving the content from a
memory of the mobile device (id. at 11-12); and that modifying the
references would change their operation (Br. 12-13). These contentions raise
the issue of whether the Examiner erred in finding claims 1, 2, 5, 6, 8-17, 20,
21, 23-25, 28, 29, and 31 obvious over Hinderks and Signes.

4 Claims 8, 15, 23, and 31 are argued under a separate heading but are
argued on substantially the same grounds as the claims from which they
depend.
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Analysis
We have reviewed the Examiner’s Answer in light of Appellants’
arguments in the Appeal Brief presented in response to the action from
which Appellants appeal. We disagree with Appellants’ conclusions. We
highlight and address specific findings and arguments below for emphasis.
Appellants’ contentions regarding the defects in the teachings of
Hinderks (Br. 9-10, 11-12) that Signes does not correct (Br. 11) are
unpersuasive because Appellants argue the references individually when it is
clear that the Examiner’s rejection is based on what would have been
obvious to one skilled in the art based on the combination. Ans. 4-9, 14-18.
Hinderks describes content receipt by a portable computer or mobile user
device. Hinderks, p. 9. The Examiner cites Signes, paragraph 7, which
recites “a plurality of media streams, including a main program and a set of
customized information, are received at a terminal that is under the control
of an end-user and are combined for presentation so that the user views a
single, integrated display.” Signes’ terminal, which can receive content
wirelessly (¶28), “includes a buffer for storing media and circuitry or
software for integrating and synchronizing the data streams from the several
streaming servers.” Signes, ¶29. Because the terminal of Signes can receive
content wirelessly, this terminal can be a mobile user device. It would have
been obvious to an artisan of ordinary skill to modify the mobile user device
of Hinderks by applying the teachings of Signes regarding a plurality of
media streams. Therefore, the combination of Hinderks and Signes teaches
the claimed mobile device inserting content, retrieved from a memory (the
buffer) of the mobile device, into a content stream. We are thus
unpersuaded that the examiner erred.
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Appellants’ argument that Hinderks “teaches away” (Br. 10-11) is
unpersuasive because, although Appellants point to an alternative teaching
(id., citing Hinderks, claim 23, which appears to describe inserting
alternative content upstream of the eventual recipient), Appellants do not
cite evidence that Hinderks “discouraged following the path set out in the
reference, or [led] in a direction divergent from the path that was taken by
the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We are
similarly unpersuaded by Appellants’ argument that modifying the
references would require changing their principle of operation (Br. 12-13),
since the argument is not supported by sufficient persuasive evidence.

Accordingly, we find no error in the Examiner’s rejection of claims 1,
2, 5, 6, 8-17, 20, 21, 23-25, 28, 29, and 31 as obvious over Hinderks and
Signes.

REJECTION OF CLAIMS 32, 33, 35-39, 41-45, 47, 48-51, 53-55, and 58-
65 UNDER 35 U.S.C. §1035
Issue
Appellants’ contention that the references do not teach delivering to
the mobile device the content to be inserted by the mobile device before
transmitting the content stream (Br. 13-15) raises the question of whether the
Examiner erred in finding claims 32, 33, 35-39, 41-45, 47, 48-51, 53-55, and
58-65 obvious over Hinderks and Signes.

5 Claims 37, 43, 49, and 55 are argued under a separate heading but contain
similar recitations and are argued on substantially the same grounds as the
claims from which they depend.
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Analysis
In response to Appellants’ argument that the cited references do not
teach the prior delivery of content for insertion into the content stream (Br.
13-15), the Examiner cites a number of passages from Hinderks (Ans. 19-
20), including a citation to Hinderks’ description of “locally saved or stored
program content,” having been “previously digitized,” being converted into
a “multicast format” “before providing it to [the] content distribution
network.” Hinderks, p. 12, ll. 1-8. We are persuaded, however, that neither
this description, nor any other cited teaching in the references, renders
obvious transmitting the content to be inserted before transmitting the
content stream. Accordingly, we reverse the rejection of claims 32, 33, 35-
39, 41-45, 47, 48-51, 53-55, and 58-65 on these grounds.

CONCLUSIONS
On the record before us, we conclude that the Examiner erred in
finding claims 24, 25, 28, 29, 31, 50, 51, 53-55, 61, and 65 ambiguous, and
finding claims 32, 33, 35-39, 41-45, 47, 48-51, 53-55, and 58-65 obvious
over Hinderks and Signes. We do not find error in the Examiner’s rejection
of claims 38, 39, 41-45, and 47-49 under 35 U.S.C. §101, nor do we find
error in the Examiner’s rejection of claims 1, 2, 5, 6, 8-17, 20, 21, 23-25, 28,
29, and 31 as obvious over Hinderks and Signes.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 5, 6, 8-
17, 20, 21, 23-25, 28, 29, 31, 38, 39, 41-45, and 47-49 is affirmed and the
rejection of claims 32, 33, 35-37, 50, 51, 53-55, and 58-65 is reversed.
Appeal 2010-012277
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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