ADOBE INC.

Patent Trials and Appeals Board

Jan 26, 2022

2020005894 (P.T.A.B. Jan. 26, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/662,592 07/28/2017 Mike Harris 2122US01-CON1/278946 8553 121363 7590 01/26/2022 Adobe Inc. Shook, Hardy & Bacon L.L.P. Intellectual Property Department 2555 Grand Blvd Kansas City, MO 64108 EXAMINER FAN, HUA ART UNIT PAPER NUMBER 2449 NOTIFICATION DATE DELIVERY MODE 01/26/2022 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): seaton@shb.com shbdocketing@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKE HARRIS, MARK RAUSCH, DUANE O’BRIEN, CHARLES C. SCHEINOST, AMIT KISHNANI, BRUCE BOWMAN, MATTHEW HAMLIN, TOM JUHASZ, MATTHEW JOHNSON, and CHRISTIAN CANTRELL Appeal 2020-005894 Application 15/662,592 Technology Center 2400 Before ERIC B. CHEN, MICHAEL J. STRAUSS, and MINN CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1-14.1 See Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe Systems Incorporated. Appeal Br. 1. 2 In this Decision, we refer to Appellant’s Appeal Brief filed March 23, 2020 (“Appeal Br.”) and Reply Brief filed August 6, 2020 (“Reply Br.”); the Appeal 2020-005894 Application 15/662,592 2 CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to synchronization of content display across a plurality of devices. Spec. ¶ 1. Claims 1 and 8 are independent. Claim 1, reproduced below with added emphasis, is illustrative of the claimed subject matter: 1. A method for displaying content, the method comprising: identifying a content displayed at a first device; establishing a wireless peer-to-peer direct connection between the first device and a second device without utilizing any server to establish the wireless peer-to-peer direct connection; identifying, by the first device via the wireless peer-to-peer direct connection, device information of the second device, wherein the device information for the second device includes a display size and a resolution of the second device; based on dimensions of the content and the display size and the resolution of the second device, modifying, at the first device, the content to generate a first version of the content that is customized for the dimensions of the content, and the display size and the resolution identified for the second device; and transmitting to the second device from the first device, via the wireless peer-to-peer direct connection between the first device and the second device and without utilizing any server, the first version of the content and a command corresponding to the first version of the content and derived from the device information of the second device to render the first version of the content at the second device, wherein the command comprises Examiner’s Final Office Action mailed August 1, 2019 (“Final Act.”) and Answer mailed June 12, 2020 (“Ans.”); and the originally filed Specification filed February 15, 2012 (“Spec.”). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. Appeal 2020-005894 Application 15/662,592 3 instructions for rendering the first version of content and the configuration for one or more device settings and causes the second device to display the first version of content at the second device according to the one or more device settings included in the command. Appeal Br. 22 (Claims App.) (emphasis added). REJECTIONS The Examiner relies on the following references: Designation3 Reference Date Pering US 2009/0243959 Al Oct. 1, 2009 Srinivasan US 2010/0271288 Al Oct. 28, 2010 Bell US 2011/0289186 Al Nov. 24, 2011 Alsina US 2012/0050012 Al Mar. 1, 2012 Papakipos US 2013/0145457 Al June 6, 2013 Claims 1-14 stand rejected under 35 U.S.C. § 112, first paragraph, as lacking written description support in U.S. Application No. 13/397,361 (“the ’361 Application” or the “parent application,” filed Feb. 15, 2012) to which the instant Application claims the benefit of priority and, thus, introducing new matter. Final Act. 3. Claims 1, 6-8, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Alsina and Srinivasan. Final Act. 4-6. 3 All citations herein to the prior art are by reference to the first named inventor only. Appeal 2020-005894 Application 15/662,592 4 Claims 2,4 5, 9, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Alsina, Srinivasan, and Bell. Final Act. 7. Claims 3 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Alsina, Srinivasan, and Papakipos. Final Act. 7-8. Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Alsina, Srinivasan, and Pering. Final Act. 8. OPINION Written Description Requirement Under 35 U.S.C. § 112 We have considered Appellant’s arguments (Appeal Br. 8-10; Reply Br. 1-3) in light of the Examiner’s findings and explanations (Final Act. 3- 8; Ans. 10-11). For the reasons set forth below, we are not persuaded of Examiner error in the rejection of the pending claims, and we, therefore, sustain the Examiner’s rejection under § 112. Appellant argues the rejection of independent claims 1 and 8 collectively with regard to the Examiner’s rejection of claim 1 under 35 U.S.C. § 112. Appeal Br. 8-10; Reply Br. 1-3. Appellant does not separately argue patentability for the dependent claims. Appeal Br. 9-10. Therefore, based on Appellant’s arguments, we decide the appeal of claims 1-14 based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). We adopt as our own: (1) the findings and reasons set forth by the Examiner 4 Claim 2 is inadvertently omitted from the statement of the rejection. Instead, claim 1 is inadvertently mentioned. The subject matter recited in claim 2 is nonetheless discussed in the body of the rejection. Final Act. 7. Appeal 2020-005894 Application 15/662,592 5 in the action from which this appeal is taken (Final Act. 3-8) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 10-11). We concur with the conclusions reached by the Examiner, and we highlight the following for emphasis.5 The test for determining compliance with the written description requirement under 35 U.S.C. § 112, first paragraph, is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (bolded emphasis added). “While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification.” Lockwood, 107 F.3d at 1572 (emphasis added). When an explicit limitation in a claim “is not present in the written description whose benefit is sought[,] it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998) (emphases added). In other words, where the written description fails to describe a claim limitation explicitly, “the applicant must 5 Only those arguments made by Appellant have been considered in this decision. Arguments Appellant did not make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-005894 Application 15/662,592 6 show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed.” Hyatt, 146 F.3d at 1354-55 (emphases added). In rejecting claims 1-14 under 35 U.S.C. § 112, first paragraph, the Examiner finds that the limitation “identifying, by the first device via the wireless peer-to-peer direct connection, device information of the second device, wherein the device information for the second device includes a display size and a resolution of the second device” recited in claim 16 lacks written description support in the ’361 Application to which the instant Application claims the benefit of priority. Final Act. 3. In particular, the Examiner finds that although the originally filed Specification of the ’361 Application describes the content portion of the synchronization or push information is tailored for the device type. Based on the dimensions of the visual content, the display size and resolution of a particular device, a version of the visual content appropriate for the particular device is pushed to that device (by the device manager[)], the originally filed Specification of the parent application “does not disclose that such display size and resolution information is identified via the wireless peer-to-peer direct connection.” Id. (emphasis added) (citing Spec. ¶ 37);7 Ans. 10. 6 Independent claim 8 also recites an identical limitation. Appeal Br. 24 (Claims App.). 7 The Examiner and Appellant both cite and refer to the specification of the ’361 Application (i.e., the parent application) as the “originally filed Specification” with the short-hand notation “Spec.” Final Act. 3; Ans. 10; Appeal Br. 8-9; Reply Br. 1-3. Because it appears that only the Specification of the parent application is cited in the context of the issue of Appeal 2020-005894 Application 15/662,592 7 Appellant asserts that the disputed limitation has written description support in the originally filed Specification of the ’361 Application. Appeal Br. 8-9 (citing Spec. ¶¶ 16, 35-40, 56); Reply Br. 1-3 (citing Spec. ¶¶ 16, 24, 35-40, 55, Fig. 1). Appellant argues the originally filed Specification of the parent application describes that a wireless peer-to-peer network may be used as a mechanism to synchronizing the display of content on a plurality of devices such that the “content portion of the synchronization or push information is tailored for the device type.” Appeal Br. 8-9 (quoting Spec. ¶ 38; citing id. ¶ 56); Reply Br. 2 (quoting Spec. ¶ 37). Appellant asserts the Specification of the parent application also describes that “[b]ased on the dimensions of the visual content, the display size and resolution of a particular device, a version of the visual content appropriate for the particular device is pushed to that device.” Appeal Br. 9 (quoting Spec. ¶ 38). Appellant contends the Specification of the parent application further describes that “the first device can send commands to the second device such as a command ‘to interrogate or set the state of the device.’” Id. (quoting Spec. ¶ 36); Reply Br. 2 (quoting Spec. ¶ 35). Appellant further argues that “Figure 1 in the parent application, described in part by paragraph 0024, also indicates that the peer-to-peer wireless network 110 acts in a bi-directional manner” and that “synchronization information, interrogation commands, and rendering commands can be communicated over the peer-to-peer connection.” Reply Br. 2-3 (citing Spec. ¶ 24, Fig. 1). Appellant, however, does not identify, nor do we discern, where the Specification of the parent application explicitly describes “the first device” written description support under 35 U.S.C. § 112, first paragraph, we adopt the same convention and notation. Appeal 2020-005894 Application 15/662,592 8 “identifying” the “display size and [] resolution” of “the second device” “via the wireless peer-to-peer direct connection” between the first device and the second device, as recited in claim 1. See Appeal Br. 8-9 (citing Spec. ¶¶ 16, 35-40, 56); Reply Br. 1-3 (citing Spec. ¶¶ 16, 24, 35-40, 55, Fig. 1). Appellant also does not explain sufficiently why a person of ordinary skill in the art would have understood that the Specification of the parent application necessarily describes the claimed feature of the first device identifying, via the wireless peer-to-peer direct connection, the “display size and [] resolution” of the second device. See Appeal Br. 8-9 (citing Spec. ¶¶ 16, 35-40, 56); Reply Br. 1-3 (citing Spec. ¶¶ 16, 24, 35-40, 55, Fig. 1). Although Appellant argues the Specification of the parent application describes that “the first device can send commands to the second device such as a command ‘to interrogate or set the state of the device’” (Appeal Br. 9 (quoting Spec. ¶ 36); Reply Br. 2 (quoting Spec. ¶ 35)), Appellant does not explain adequately why interrogating the state of the second device requires or necessarily describes the first device “identifying . . . a display size and a resolution of the second device,” as recited in claim 1. We determine that the description “interrogating the state of the second device” in the Specification of the parent application cited by Appellant is too general and non-specific to either explicitly describe or necessarily describe the first device “identifying . . . a display size and a resolution of the second device,” as recited in claim 1. As discussed above, “[o]ne shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood, 107 F.3d at 1572 (bolded emphasis added); see also Hyatt, 146 F.3d at 1354-55 (Where the written description fails to disclose an element explicitly, “the Appeal 2020-005894 Application 15/662,592 9 applicant must show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed.” (emphases added)). Based on the record before us, we determine that the Specification of the parent ’361 Application neither explicitly describes nor necessarily describes “identifying, by the first device via the wireless peer-to-peer direct connection, device information of the second device, wherein the device information for the second device includes a display size and a resolution of the second device,” as recited claim 1. Thus, the Examiner did not err in rejecting claims 1-14 under 35 U.S.C. § 112, first paragraph, as lacking written description support in the ’361 Application and, therefore, introducing new matter. Obviousness Rejection Under 35 U.S.C. § 103(a) In rejecting independent claims 1 and 8 over the combination of Alsina and Srinivasan, the Examiner finds that Alsina teaches the disputed limitation. Final Act. 4 (citing Alsina ¶ 68). In support of this finding, the Examiner refers to the “Examiner’s interpretation” of the disputed limitation stated in the context of the Examiner’s rejection under § 112 (id.), which states because “the specification does not disclose that [a] display size and resolution information is identified via the wireless peer-to-peer direct connection,” “[f]or the sake of the examination, Examiner assumes any identifying and communication method” (id. at 3). Appellant argues the Examiner’s obviousness rejection is in error because there is no teaching or suggestion in Alsina of “identifying, by the first device via the wireless peer-to-peer direct connection, device information of the second device, wherein the device information for the Appeal 2020-005894 Application 15/662,592 10 second device includes a display size and a resolution of the second device,” as recited in claim 1. Appeal Br. 11-12 (citing Alsina ¶¶ 23-24, 68). According to Appellant, Alsina instead discloses “configuration information, such as the resolution of the display device couple[d] with the media client 802 can be stored on storage device 810.” Id. at 11 (emphases added) (citing Alsina ¶ 68). The Examiner responds by stating as Examiner explained in the 112 rejection section, due to lack of sufficient description of the claimed limitation in the specification, i.e., where and how the content sending peer obtains/identifies the content receiving peer device’s display size and resolution, Examiner interpreted the claimed limitation in light of the specification as any identifying and communication method, not necessarily “via the wireless peer-to-peer direct connection.” Ans. 12 (emphases added). The Examiner must, however, consider all limitations of a claim when evaluating the claim for obviousness under 35 U.S.C. § 103, “regardless of whether or not they were supported by the specification as filed.” Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem. 738 F.2d 453 (Fed. Cir. 1984); see also MPEP § 2143.03 (II. LIMITATIONS WHICH DO NOT FIND SUPPORT IN THE ORIGINAL SPECIFICATION MUST BE CONSIDERED) (9th ed. Rev. 10) (2019) (“When evaluating claims for obviousness under 35 U.S.C. 103, all the limitations of the claims must be considered and given weight, including limitations which do not find support in the specification as originally filed (i.e., new matter).” (emphases added)) (citing Grasselli, 231 USPQ 393). In sum, we are persuaded the Examiner erred in finding that Alsina teaches or suggests “identifying, by the first device via the wireless peer-to- Appeal 2020-005894 Application 15/662,592 11 peer direct connection, device information of the second device, wherein the device information for the second device includes a display size and a resolution of the second device,” as recited in claim 1. As the Examiner does not rely on the other cited references for this limitation, we are persuaded the Examiner’s rejection of claim 1 is in error. Accordingly, we agree that the Examiner erred, and, therefore, do not sustain the Examiner’s rejection under 35 U.S.C. § 103 of independent claims 1 and 8 or the rejection of dependent claims 2-7 and 9-14. CONCLUSION The decision of the Examiner to reject claims 1-14 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is affirmed. The decision of the Examiner to reject claims 1-14 under 35 U.S.C. § 103 is reversed. Because we affirm at least one ground of rejection for each claim on appeal, we affirm the Examiner’s decision to reject claims 1-14. See 37 C.F.R. § 41.50(a)(1). Appeal 2020-005894 Application 15/662,592 12 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-14 112 Written Description 1-14 1, 6-8, 13, 14 103(a) Alsina, Srinivasan 1, 6-8, 13, 14 2, 5, 9, 12 103(a) Alsina, Srinivasan, Bell 2, 5, 9, 12 3, 10 103(a) Alsina, Srinivasan, Papakipos 3, 10 4, 11 103(a) Alsina, Srinivasan, Pering 4, 11 Overall Outcome 1-14 TIME PERIOD FOR RESPONSE 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. § 1.136(a)(1)(iv). AFFIRMED