Ex Parte Wang et alDownload PDFPatent Trial and Appeal BoardMay 9, 201813699261 (P.T.A.B. May. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/699,261 09/05/2014 11764 7590 Ditthavong & Steiner, P.C. 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 05/11/2018 FIRST NAMED INVENTOR Hao Wang 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. P4038USOO 6665 EXAMINER BUCKNOR, OLANREW AJU J ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 05/11/2018 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): docket@dcpatent.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAO WANG, KUN YU, WENDONG WANG, YIDONG CUI, AKI PETRI HAPPONEN, HANNU VILPPONEN, MATTI ALEKSI MALMSTEDT, and HENRIK STEFAN MARKUS HAKALA Appeal2017-010589 Application 13/699,261 Technology Center 2400 Before ALLEN R. MacDONALD, ST. JOHN COURTENAY III, and STACY B. MARGOLIES, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-010589 Application 13/699,261 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 78-97. Appellants have cancelled claims 1-77. 37 C.F.R. § 1.116 Response 2. We have jurisdiction under 35 U.S.C. § 6(b). Representative Claim 1 Representative claim 78 under appeal reads as follows (formatting and bracketed material added): 78. A method comprising: [A.] determining electronically formatted tag data that associates, on an apparatus, a first user with a content identifier, wherein the content identifier indicates content provided by a different second user; and [B.] causing actions that result in electronically recording authorization data on the apparatus, wherein the authorization data indicates the first user associated with the content identifier by the electronically formatted tag data is authorized by the second user and provider of the content to tag a different third user to associate the third user with the content identifier, without further input by the second user. 1 Each of the independent claims recites limitations regarding the content of certain data. Such recitations may not serve to distinguish over the prior art. However, Appellants and the Examiner address the limitations as though they would so distinguish. We follow their lead and treat these limitations as though they potentially can distinguish over the prior art. 2 Appeal2017-010589 Application 13/699,261 Rejections The Examiner rejected claims 78-97 under 35 U.S.C. § I03(a) as being unpatentable over the combination of Zuckerberg et al. (US 2008/0091723 Al; published April 17, 2008) and Sandquist et al. (US 2009/0187825 Al; published July 23, 2009). Final Act. 5-16. Appellants argue claims 78-97 as a group. App.Br. 4--6. We select claim 78 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv). Except for our ultimate decision, we do not discuss this rejection of claims 79-97 further herein. The Examiner rejected claim 78-97 on the ground of nonstatutory obviousness-type double patenting as not being patentably distinct from claims 1-20 ofNurmenniemi (US 9,432,564 B2; issued August 30, 2016). Final Act. 4. Appellants do not appeal this rejection. 37 C.F.R. § 41.3 l(c) ("An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection .... "). Because Appellants do not identify any error in Examiner's rejection of claims 78-97 under non-obviousness-type double patenting, we summarily sustain this rejection. Except for our ultimate decision, we do not discuss this rejection of these claims further herein. The Examiner provisionally rejected claim 78-97 on the ground of nonstatutory obviousness-type double patenting as not being patentably distinct from claims 39-58 of U.S. Patent Application 14/400,943 to Xu et al. filed June 14, 2012 (now US 20150149469 Al, published May 2, 2015). Final Act. 4--5. Appellants do not appeal this rejection. Because Appellants do not identify any error in Examiner's provisional rejection of claims 78-97 under non-obviousness-type double patenting, we summarily sustain this rejection. Except for our ultimate decision, we do not discuss this rejection of these claims further herein. 3 Appeal2017-010589 Application 13/699,261 Issue on Appeal2 Did the Examiner err in rejecting representative3 independent claim 78 as being obvious? ANALYSIS 4 We have reviewed the Examiner's rejections in light of Appellants' arguments ( Appeal Brief) that the Examiner has erred. We disagree with Appellants' conclusions for the reasons discussed below. 1. As an introduction to presenting their contentions of Examiner error, Appellants present a case law analysis and argue, "it remains well-settled law that an obviousness rejection requires at least a suggestion of all of the claim elements." App. Br. 4. Appellants, however, fail to cite or address KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, the Supreme Court stated that "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation." Id. at 419. The Court also observed that an obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. 2 To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). 3 See 37 C.F.R. § 4I.37(c)(l)(iv). 4 We herein refer to the Final Office Action, mailed Sept. 16, 2016 ("Final Act."); Appeal Brief, filed Feb. 16, 2017 ("App. Br."); and, the Examiner's Answer, mailed Jun. 14, 2017 ("Ans."). 4 Appeal2017-010589 Application 13/699,261 2. Appellants raise the following arguments in contending that the Examiner erred in rejecting claim 78 under 35 U.S.C. § 103(a): Appellant[ s] submit[ s] that the Examiner fails to establish obviousness based on the applied combination of references. Sandquist relates to annotating time segments of videos, not tagging users to a content identifier, for example, a video. The annotations disclosed by Sandquist are not associations of users to the video. Paragraph [0033] of Sandquist states: ["] [ a ]nnotations may include additional content a user has associated with the video. Some exemplary annotations include text, audio including voice, music, and other sound, and graphics." Furthermore, Sandquist does not disclose "authorization data." Rather, users with whom the video is shared are automatically authorized to further annotate the video. Sandquist discloses an annotation tool that presents a user interface allowing users to enter and view annotations to media such as a video. Annotations in a video are associated with a time segment of the video for presentation at appropriate times during video playback. The tool allows users to add contact information for sharing the annotate video. App. Br. 5---6 (emphases added). Appellants thus argue the Examiner erred because Sandquist does not disclose "associations of the users to the video[s]" and "authorization data." App. Br. 6. However, the Examiner did not cite Sandquist for these limitations. Rather, the Examiner cited Zuckerberg in combination with Sandquist. Final Act. 5-7. The Examiner relied on Zuckerberg to show (a) tag data that associates a first user with a content identifier (Final Act. 5), and (b) authorization data (Final Act. 6). 5 Appeal2017-010589 Application 13/699,261 Thus, Appellants do not address the actual reasoning of the Examiner's rejection, including the Examiner's specific findings. Final. Act. 5-7. Instead, Appellants attack the references singly for lacking teachings that the Examiner relied on a combination of references to show. It is well established that one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413,425 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). References must be read, not in isolation, but for what they fairly teach in combination with the prior art as a whole. Merck, 800 F.2d at 1097. 3. Appellants also raise the following argument in contending that the Examiner erred in rejecting claim 78 under 35 U.S.C. § 103(a): Sandquist does not ... provide sufficient guideposts for arriving at the above-quoted claim recitations. The ability to add contact information to a video for directed sharing does not necessarily result in a configuration wherein authorization data indicates authority of a first user by a second user and content provide to tag a third user. Moreover, Sandquist does not necessarily disclose these features without further input by the second user. The Examiner does not address these particularly recited features, and instead appears to read-out multiple claim recitations for force-fit the combination of Zuckerberg and Sandquist to the rejected claims. App. Br. 6. Appellants fail to show error in the Examiner's rejection. Appellants acknowledge that in Sandquist "users with whom the video is shared are automatically authorized to further annotate the video." App. Br. 6. Further, Appellants do not dispute the Examiner's finding that Zuckerberg discloses 6 Appeal2017-010589 Application 13/699,261 authorization data, including "assigning access privileges for who can view and/or modify the contents of the album." See Final Act. 6; Zuckerberg ,r 38. That is, Sandquist discloses universal authorization to annotate (i.e., a universal modify privilege) and Zuckerberg discloses limiting access privileges to modify content by using authorization data. Sandquist Abstract; Zuckerberg ,r 38. Based thereon, we agree with the Examiner that the particular limiting of access as claimed by Appellants (the first user is authorized to tag a different third user to associate the third user with the content identifier) would have been obvious to one of ordinary skill in the art at the time the claimed invention was made. See Final Act. 7; Adv. Action 2; Ans. 4. Further, Appellants have not presented evidence sufficient to show that combining the prior art was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). 4. Appellants also contend that the Examiner erred in rejecting claim 78 under 35 U.S.C. § 103(a) because while the Examiner contends that an alleged second user of Zuckerberg can type contact names of people with which annotated video is shared, this is not expressly or inherently the same as tagging other users to the content, or creating annotations to the content and being authorized to do so based on explicit authorization data received from the first user. App. Br. 6. As to Appellants' above contention, we disagree for the reasons set forth by the Examiner. Ans. 5; Adv. Action 2. Further, Appellants' 7 Appeal2017-010589 Application 13/699,261 conclusory assertions are unsupported attorney argument, and as such are entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). This is particularly true in light of Zuckerberg's explicit teaching of tagging other users to digital content. Zuckerberg ,r 6. CONCLUSION The Examiner did not err in rejecting claims 78-97 as being unpatentable under 35 U.S.C. § 103(a). DECISION We affirm the Examiner's rejection of claims 78-97 as being unpatentable under 35 U.S.C. § 103(a). We affirm the Examiner's rejection of claim 78-97 on the ground of nonstatutory obviousness-type double patenting. We affirm the Examiner's provisional rejection of claim 78-97 on the ground of nonstatutory obviousness-type double patenting. 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). AFFIRMED 8 Copy with citationCopy as parenthetical citation