Ex Parte Weda et al

Patent Trial and Appeal Board

Aug 2, 2016

13318796 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/318,796 11/04/2011 Johannes Weda
24737 7590 08/04/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2009P00567WOUS 8672
EXAMINER
SIDDIQI, EMAD H
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
marianne.fox@philips.com
debbie.henn@philips.com
patti. demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES WEDA, MAURO BARBIERI,
PAV ANKUMAR MURLI DADLANI MAHTANI, and
PAVLO SERHIYOVYCH MUL Y AR
Appeal2015-000276
Application 13/318,796
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN F. HORVATH, and
AARON W. MOORE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Although the record states that claim 14 is a dependent claim (App. Br. 8),
we construe claim 14 herein as an independent claim. To do otherwise
results in claim 14 being indefinite under 35 U.S.C. § 112, second
paragraph, as discussed herein. We leave it to the Examiner to review
whether all appropriate fees have been collected for this independent claim.
Appeal2015-000276
Application 13/318,796
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-12 and 14. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 14 under appeal read as follows (emphasis,
bracketed matter, and formatting added):
1. A method of providing a report of experiences of members of
a group of users, comprising:
[(A.)] making available a content data compilation, wherein the
content data compilation is compiled from at least items of content data
obtained in association with different members of the group;
[ (B.)] obtaining data associated with at least one member of the
group; and
[(C.)] using the obtained data associated with at least one
member to cause at least one message to be output on at least one
device associated with at least one member of the group,
[(i.)] wherein at least part of the content data compilation
is based on information pro1lided in response to the at least one
message by the at least one member with whom the at least one
device is associated,
[(ii.)] wherein further the information is used for
determining where in an order of the content data compilation an
item of content data obtained in association with the at least one
member is to be placed,
[(iii.)] further wherein related items of content data are
clustered together to establish the order of the content data
compilation.
14. A computer program including a set of instructions capable,
when incorporated in a non-transient machine-readable medium, of
causing a system having information processing capabilities to perform
a method according to claim 1.
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Application 13/318,796
Examiner's Rejection
The Examiner rejected claims 1-12 and 14 under 35 U.S.C. § 102(e)
as being anticipated by Baron et al. (US 2009/0063995 Al; publ. Mar. 5,
2009) ("Baron").
Appellants ' Contentions 2
1. Appellants contend that the Examiner erred in rejecting claims
1-12 and 14 because:
The Baron reference discloses that " ... bubble messages may be
configured to offer a link enabling other users to start a public
chat based on the bubble message" and that "users may also
participate in private chats" ( ... Baron, para. 54-55). However,
the mere fact that bubble messages may be configured to offer a
"link" to enable other users to start a public chat or that users
may also participate in private chats does not anticipate, for a
method of providing a "report" or "news reporter", the active
limitation of "obtaining data associated with at least one member
of the group" as claimed, and therefore the rejection should not
be sustained.
App. Br. 12, emphases omitted.
2. Appellants contend that the Examiner erred in rejecting claims
1-12 and 14 because:
[T]he Baron reference discloses that "[a] client application
resides on each of the client devices ... of the users. The client
application is used to connect the client devices ... to a network
... and enables the users the users to join the virtual sessions ..
. accessing the virtual interaction platform . . . through the
network . . . , where appropriate, . . . user interactions . . . are
synchronized between client instances." ( ... Baron, para. 50).
However, the mere fact that the client application of Baron
2 The contentions of error we discuss are dispositive. Appellants' other
contentions of error are not discussed further herein.
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Appeal2015-000276
Application 13/318,796
enables users to "join" the virtual sessions and, where
appropriate, user interactions are synchronized between client
instances does not anticipate, for a method of providing a
"report" or "news reporter", the active limitation of "using the
obtained data associated with at least one member to cause at
least one message to be output on at least one device associated
with at least one member of the group" as claimed, and therefore
the rejection should not be sustained.
App. Br. 12-13, emphases omitted.
3. Appellants contend that the Examiner erred in rejecting claims
1-12 and 14 because:
Baron does not teach the limitation of "using the obtained data
associated with at least one member to cause at least one message
to be output on at least one device associated with at least one
member of the group" as claimed. That is, the message as
claimed is specifically generated using the obtained data from the
member and the generated message serves the purpose of
eliciting more meaningful specific information and/or data from
the message recipient for the content data compilation.
Accordingly, the allegation that "users may respond to messages
through the use of linked chats" ... corresponding to public and
private chats of Baron does not anticipate, for a method of
providing a "report" or "news reporter", the specific limitation of
"wherein at least part of the content data compilation is based on
information provided in response to the at least one message by
the at least one member with whom the at least one device is
associated" as claimed, and therefore the rejection should not be
sustained.
App. Br. 13-14, emphases omitted.
4. Appellants contend that the Examiner erred in rejecting claims
1-12 and 14 because:
[T]he mere fact that the administrative layer of Baron may
provide tools and interfaces for producing virtual sessions,
including a production interface whereby media and other virtual
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Appeal2015-000276
Application 13/318,796
session content are ordered, queued, and simulcast by the
authorize producers( ... see Baron, para. 92) does not anticipate,
for a method of providing a "report" or "news reporter", the
specific limitation of"wherein further the information is used for
determining where in an order of the content data compilation an
item of content data obtained in association with the at least one
member is to be placed" as claimed, and therefore the rejection
should not be sustained.
App. Br. 14, emphases omitted.
5. Appellants contend that the Examiner erred in rejecting claims
1-12 and 14 because:
[T]he "buzz" feature and the "filtering" of the activity list across
multiple virtual sessions as taught by Baron does not anticipate,
for a method of providing a "report" or "news reporter", the
specific limitation of "further wherein related items of content
data are clustered together to establish the order of the content
data compilation" as claimed, and therefore the rejection should
not be sustained.
App. Br. 15, emphases omitted.
Issue on Appeal
Did the Examiner err in rejecting claims 1-12 and 14 as being
anticipated because Baron fails to disclose the argued limitations?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief) that the Examiner has erred.
As to above contention 5, we disagree with Appellants' conclusion.
We concur with the conclusion reached by the Examiner. The Examiner
correctly points out that Baron page 5, paragraph 62, discloses "multimedia
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Application 13/318,796
content may be filtered based of various relationship criteria and viewed in
an activity list to show data compilation." We agree with the Examiner that
this anticipates the claimed "further wherein related items of content data are
clustered together to establish the order of the content data compilation."
Baron includes "geography" as a filtering criteria, and Appellants include
"geotags associated with the material" as a clustering criteria. Spec. 13: 13.
As to above contention 4, we disagree with Appellants' conclusion.
We concur with the conclusion reached by the Examiner. We construe the
claimed "determining ... an order of the content data" to be the genus
encompassing "content data are clustered together." See Appellants
Specification at page 5, line 13, stating "related material can be clustered
together to establish such an order." As we conclude that clustering is
taught by Barone (as set forth for contention 5), we reach the same result for
"determining ... an order of the content data," for the same reasons.
As to above contentions 1-3, we agree with Appellants' conclusions
that Baron falls short of disclosing the argued limitations as required by
claim 1.
CLAIM 14
Claim 14 is structured as an article of manufacture ("computer
program ... in a non-transient machine-readable medium") referencing a
method claim for its limitations. Such "manufacture/method" claims can be
construed as independent claims that reference other claims for certain
limitations. We have construed claim 14 as an independent claim, although
the record states that claim 14 is a dependent claim (App. Br. 8).
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Application 13/318,796
Were we to construe claim 14 as a dependent claim reciting both a
"medium" (an article of manufacture) and a method (by its dependency) for
using that medium, it would not apprise a person of ordinary skill in the art
of its scope, and it would be invalid under section 112, second paragraph.
Then, pursuant to our authority under 37 C.F.R. § 41.50(b), we would be
obligated to reject claim 14 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Particularly, the claim would be indefinite because it is unclear
whether infringement occurs when one creates a manufacture that allows the
user to perform the method, or whether infringement occurs when the user
actually uses the manufacture to perform the method. See IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005)
(claims held indefinite because they claimed both a system and a method for
using that system); In re Katz, 639 F.3d 1303, 1318 (Fed. Cir. 2011) (claims
held indefinite because they claimed both an apparatus and method of use).
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-12 and 14 as being anticipated under 35 U.S.C. § 102(e).
(2) On this record, claims 1-12 and 14 have not been shown to be
unpatentable.
DECISION
The Examiner's rejection of claims 1-12 and 14 is reversed.
REVERSED
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