Ex Parte David et al

Patent Trial and Appeal Board

Apr 6, 2016

13110199 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/110,199 05/18/2011
25537 7590 04/08/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Kissinger Peterson Justin David
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.
20110053 3018
EXAMINER
COULTER, KENNETH R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
04/08/2016 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KISSINGER P. DAVID, OOSHMA K. MALKOTI,
ZOUHAIR SEBA TI, SENTHIL K. KUMAR,
HARMEET NANDREY, and MIDDE D. BHARADW AJ
Appeal2014-006574
Application 13/110, 199
Technology Center 2400
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006574
Application 13/110, 199
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
THE INVENTION
The application is directed to a system that "may ... include a content
editor executed by said communications device and configured to present a
content element including a plurality of contexts." (Abstract.) Claim 1,
reproduced below, is illustrative:
1. A hardware system, comprising:
a communications device, and
a content editor executed by said communications device and
configured to receive a definition of a content element to be in-
cluded in a content presentation, the content element including a
plurality of contexts to be selectively provided as the content el-
ement in the content presentation according to user attributes,
each of said plurality of contexts defining:
(i) a version of content items to be included in the content
presentation as the content element, and
(ii) a set of context attributes descriptive of user attributes for
which said context is to be provided as the content element in the
content presentation.
1 Appellants identify "Verizon Communications Inc. and its subsidiary
companies," as the real parties in interest. (See App. Br. 3.)
2
Appeal2014-006574
Application 13/110, 199
THE REJECTIONS AND THE REFERENCE
1. Claims 1-19 stand rejected under 35 U.S.C. § 101 because "the
claimed invention, in light of the specification ... , encompasses
nonstatutory subject matter since such reads on (encompasses) software or
program per se." (Final Act. 2.)
2. Claims 1-24 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gershman et al. (U.S. Pat. No. 6,199,099, Mar. 6, 2001).
(Final Act. 3-7.)
APPELLANTS' CONTENTIONS
Appellants argue that the rejections were improper for the following
reasons:
1. With respect to claim 1, Gershman does not disclose the
following limitations:
a content editor executed by said communications device and
configured to receive a definition of a content element to be in-
cluded in a content presentation, the content element including a
plurality of contexts to be selectively provided as the content el-
ement in the content presentation according to user attributes,
each of said plurality of contexts defining:
( i) a version of content items to be included in the content
presentation as the content element, and
(ii) a set of context attributes descriptive of user attributes for
which said context is to be provided as the content element in the
content presentation.
(See App. Br. 8-11.)
2. With respect to claims 15 and 20, Gershman does not disclose
the following limitations:
3
Appeal2014-006574
Application 13/110, 199
maintaining content elements to be included in a content
presentation, each content element including a plurality of
contexts to be selectively provided as the content element in the
content presentation according to user attributes, each of said
plurality of contexts associated with a set of context attributes
descriptive of user attributes for which said context is to be
provided as the content element in the content presentation and
including a version of content items to be included in the content
presentation as the content element.
(See App. Br. 11)
3. With respect to claims 9, 16, and 21, Gershman does not
disclose the following limitation of claim 9 and similar limitations in claims
16 and 21:
receive a client request for said content presentation from a
communications device;
determine which of said plurality of contexts of the content
item to retrieve according to user attributes associated with said
communications device; and
provide said content items associated with the respective
context to said communications device in response to said client
request.
(See App. Br. 12)
ANALYSIS
35 u.s.c. § 101
Appellants offer no argument regarding the rejections of claims 1-19
under 35 U.S.C. § 101. These rejections are, therefore, summarily affirmed.
See 37 C.F.R. § 41.31(c); Hyattv. Dudas, 551F.3d 1307, 1314 (Fed. Cir.
2008) (explaining that summary affirmance is appropriate where an
appellant fails to contest a ground of rejection).
4
Appeal2014-006574
Application 13/110, 199
Anticipation by Gershman
Appellants generally object that the "[d]espite Appellants['] repeated
attempts for clarification, the Final Office Action and Advisory Action have
continued to fail to show how Gershman even allegedly teaches each and
every element as recited in the context of the claims." (App. Br. 8.) We
interpret that complaint as an argument that the Examiner failed to comply
with the requirements of 3 7 C.F .R. § 1.104( c )(2 ), which is a matter properly
reviewed by petition to the Commissioner under 3 7 C.F .R. § 1.181, not by
appeal to this Board. While we will consider particular alleged errors in the
merits of the rejection to the extent Appellants have placed them before us,
we will not further consider the petitionable issue.
Appellants further argue that, "at best Gershman discloses that queried
information 'is formatted and displayed on the handheld device's screen'
according to 'preferences' or 'customized for the particular customer,' with
no disclosure of the particular 'content editor' or 'content element' recited in
the context of the claim." (App. Br. 10.)
The Examiner responds that "Gershman clearly discloses a content
editor executed by said communication device and configured to receive a
definition of a content element to be included in a content presentation" and
cites column 36, lines 29---63 and Figs. 18, 19, 22, and 23, along with a string
of"[ o ]ther relevant, related passages." (See Ans. 3-5.) According to the
Examiner, the passage concerning Fig. 20 explains how "an agent in
Gershman guides a user through the process of interacting with the system to
customize and personalize system components," which is "equivalent to a
content editor configured to receive a definition of a content element to be
included in a content presentation." (Ans. 3.) The Examiner further states
5
Appeal2014-006574
Application 13/110, 199
that these "passage[s] impl[y] a content editor (guiding a user through the
process of interacting with the system)" and that "[t]he implied content
editor of Gershman acts upon a content element in Gershman (to customize
and personalize various system components)." (Ans. 5.)
We agree with Appellant. The passages of Gershman relied on by the
Examiner do not disclose each and every element as set forth in the claim,
see Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
Cir. 1987), arranged as in the claim, see In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990), in as complete detail as in the claim, see Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
For example, with respect to claim 1, the portions of Gershman cited
by the Examiner fail to describe a "content editor ... configured to receive a
definition of a content element to be included in a content presentation,"
where "the content element include[ es] a plurality of contexts to be
selectively provided as the content element in the content presentation
according to user attributes," where each of the plurality of contexts defines
"a version of content items to be included in the content presentation as the
content element" and "a set of context attributes descriptive of user attributes
for which said context is to be provided as the content element in the content
presentation."
We accordingly do not sustain the rejection of claim 1 under 35
U.S.C. § 102(b) and, for the same reasons, we do not sustain the anticipation
rejections of independent claims 15 and 20, or the anticipation rejections of
the claims depending from claims 1, 15, and 20.
6
Appeal2014-006574
Application 13/110, 199
DECISION
The rejections of claims 1-19 under 35 U.S.C. § 101 are affirmed.
The rejections of claims 1-24 under 35 U.S.C. § 102(b) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
7