Ex Parte Fairbanks

Patent Trial and Appeal Board

Jan 28, 2019

13925168 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/925, 168 06/24/2013
10291 7590 01/30/2019
FISHMAN STEW ART PLLC
39533 WOODWARD A VENUE
SUITE 140
BLOOMFIELD HILLS, MI 48304-0610
FIRST NAMED INVENTOR
Neal Fairbanks
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.
67477-0002 3920
EXAMINER
HOSSAIN, FARZANA E
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
docketing@fishstewip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL FAIRBANKS
Appeal2018-005736
Application 13/925,168 1
Technology Center 2400
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.
CYGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-10, 12-14, and 18-26, which constitute all
the claims pending in this application. Claims 4, 11, 15-17 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, Neal Fairbanks is the real party in interest. App.
Br. 3.
Appeal2018-005736
Application 13/925, 168
Disclosed Invention and Exemplary Claim
The disclosed invention is a method for providing additional
information associated with an object appearing in media content,
particularly streaming or broadcast videos, in which the object is associated
with parameters such as time and position within the media content. See
Spec ,r,r 7, 15. A user viewing the media content may select the object,
causing the display of additional information without interfering with
playback of the media content. Id at ,r 7. Independent claim 1 is exemplary
of the disclosed invention, and reads as follows (with the disputed portions
of the claim emphasized):
1. A method comprising:
receiving, by an end-viewer device having a user interface and
being in communication with a server, media content with an
object, in response to:
establishing, without accessing individual frames of media
content, a region by drawing an outline spaced from and along an
edge of the object as visually presented in the media content,
establishing, while the region is temporarily drawn in relation
to the object, object parameters including a user-defined time and
a user-defined position associated with the object, and linking the
object parameters with additional information;
transmitting, by the end-viewer device, selection event
parameters including a selection time and a selection position in
response to a selection event by the end-viewer device selecting
the object in the media content during playback of the media
content while the object parameters are hidden;
retrieving the additional information if the selection event
parameters correspond to the object parameters; and
displaying, by the user interface of the end-viewer device, the
media content in a first window and the additional information in a
second window separated from the first window by a space and
that expands from the region of the selection event by the end-
viewer device without interfering with playback of the media
content.
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Examiner's Rejections
(1) The Examiner rejected claims 2 and 23 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. Final
Act. 12-13; Ans. 17-18.
(2) The Examiner rejected claims 2 and 23 under 35 U.S.C.
§ 112(b). Final Act. 13. The Examiner has withdrawn this rejection, and it
forms no part of this decision. Ans. 17; see also Reply Br. 5.
(3) The Examiner rejected claims 1-2, 5-10, 12-14, 18-21, 23, and
26 under 35 U.S.C. § I03(a) as being obvious over the combination of
Robinson et al. (US 2004/0109087 Al; published June 10, 2004)
(hereinafter "Robinson") and Andrews et al. (US 2009/0276805 Al;
published November 5, 2009) (hereinafter "Andrews"). 2 Final Act. 2-9, 13-
24; Ans. 18-39.
(4) The Examiner rejected claim 3 under 35 U.S.C. § I03(a) as
being obvious over the base combination of Robinson and Andrews, in view
of Schneider et al. (US 2005/0069225 Al, published March 31, 2005)
(hereinafter "Schneider"), and Cunningham et al. (US 2011/0191699 Al;
published August 4, 2011) (hereinafter "Cunningham"). Final Act. 9-10,
25-26; Ans. 39--40.
(5) The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
being obvious over the base combination of Robinson and Andrews, in view
2 Due to a typographical error in the Final Office Action, admitted by the
Examiner in the Answer (see Ans. 3), the heading of the rejection over
Robinson and Andrews mistakenly included claims 3, 22, 24, and 25 which
are rejected in separate rejections over Robinson and Andrews taken with
various other references (see Rejections (4}-(6), infra).
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Application 13/925, 168
of Grunnet-Jepsen et al. (US 2008/0052750 Al; published February 28,
2008) (hereinafter "Grunnet-Jepsen"). Final Act. 10-11, 26-27; Ans. 40-
41.
(6) The Examiner rejected claims 24 and 25 under 35 U.S.C.
§ I03(a) as being obvious over the base combination of Robinson and
Andrews, in view of Huber et al. (US 2005/0137958 Al; published June 23,
2005) (hereinafter "Huber"). Final Act. 11, 27-28; Ans. 41--42.
Appellant's Contentions
Appellant contends, inter alia (see generally App. Br. 10-36) the
following:
( 1) claims 2 and 23 comply with the written description requirement
under 35 U.S.C. § 112(a), supported by at least Figure 2 and
paragraph 26 of Appellant's specification. App. Br. 10-11; Reply
Br. 4--5;
(2) as to the rejection under 35 U.S.C. § 103 of claims 1-2, 5-10, 12-
14, 18-21, 23, and 26, Appellant contends, inter alia, that the
following limitations are not taught or suggested by the
combination of Robinson and Andrews (App. Br. 13-31):
establishing, without accessing individual frames of media
content, a region by drawing an outline spaced from and along
an edge of the object as visually presented in the media
content, 3
establishing, while the region is temporarily drawn in
relation to the object, object parameters including a user-
defined time and a user-defined position associated with the
3 Variations of the language of this clause appear in independent claims 23
and 26, and in the further limitations of dependent claim 2.
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object, and linking the object parameters with additional
information; and
displaying, by the user interface of the end-viewer device,
the media content in a first window and the additional
information in a second window separated from the first
window by a space and that expands from the region of the
selection event by the end-viewer device without interfering
with playback of the media content.
(3) as to claim 3, the combination of Robinson, Andrews, Schneider,
and Cunningham fails to teach or suggest "a start time input field
for a start time of the region in relation to the object" and "an end
time input field for an end time of the region in relation to the
object," as recited. App. Br. 32-33.
(4) as to claim 22, the combination of Robinson, Andrews, and
Grunnet-Jepsen fails to teach or suggest "updating the object
parameters in response to tracking end-viewer preferences when
the object was selected and how many times the object was
selected," as recited. App. Br. 34.
(5) as to claims 24 and 25, the combination of Robinson, Andrews,
and Huber fails to teach or suggest, inter alia, "encoding the object
parameters including the user-defined time and the user-defined
position, and the additional information into the data output file for
distribution with the media content," as recited by claim 24, or
"storing a separate data output file for each of the associated
objects having established object parameters," as recited by claim
25. App. Br. 34--35.
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Application 13/925, 168
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 12-28) in
light of Appellant's contentions that the Examiner has erred (App. Br. 10-
36; Reply Br. 2-25). Further, we have reviewed the Examiner's response to
Appellant's arguments (Ans. 17--42). We disagree with Appellant's
contentions that the Examiner erred in rejecting claims 2 and 23 under 35
U.S.C. § 112(a). We further disagree with Appellant's contentions that the
Examiner erred in rejecting claims 1, 3, 5-10, 12-14, and 18-26 under 35
U.S.C. § 103. We agree with Appellant's contention that the Examiner erred
in rejecting claim 2 under 35 U.S.C. § 103.
Rejections Under 35 USC§ l l 2(a)
The Examiner has rejected claims 2 and 23 under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement because the
claim phrase "providing an excess space having a substantially constant
distance between the edge of the object and an edge of the region" in
dependent claim 2, and the claim phrase "defining a region by an outline
substantially parallel with or forming a uniform space relative to an edge of
the object" in claim 23, to be unsupported by sufficient disclosure in the
Appellant's disclosure. Final Act. 12-13. The Examiner finds no disclosure
of those phrases in the specification. Id. The Examiner explains that the
specification has support for excess space between outline and object, but
not for "substantially constant distance" or "substantially parallel" or
"uniform space." Ans. 17-18.
Appellant's responses have not persuaded us of error in the
Examiner's rejection. In order to satisfy the written description requirement,
the disclosure of the application must convey with reasonable clarity to those
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Application 13/925, 168
skilled in the art that the inventor was in possession of the invention as of the
filing date of the application. Purdue Pharma L.P. v. Paulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). Specifically, the four comers of the
disclosure of the application as originally filed must describe to a person of
ordinary skill in the art an invention that is understandable and that
demonstrates the inventor actually invented the invention claimed. Ariad
Pharms, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). It is
not sufficient "that the disclosure, when combined with the knowledge in the
art, would lead one to speculate as to modifications that the inventor might
have envisioned, but failed to disclose." Lockwood v. Am. Airlines, Inc., 107
F.3d. 1565, 1572 (Fed. Cir. 1997).
To demonstrate written description support, Appellant points to
Figure 2 and paragraph 24 of the Specification. 4 App. Br. 10-11; Reply Br.
4. The Specification at paragraph 24 states:
The region 46 may be drawn in various ways. In one
embodiment, the region 46 is drawn to completely surround the
object 16. For example, in FIG. 2, the region 46 surrounds the
clothing item. The region 46 does not need to correspond
completely with the object 16. In other words, the region 46
may surround the object 16 with excess space between an edge
of the object 16 and the edge of the region 46.
The quoted portion merely describes the use of an outlined region that
need not completely correspond with the outlined object. An outline need
not match the edges of the object exactly, permitting extra space at areas
between the outline and the object. While this clearly communicates that
such extra space is part of appellant's disclosed invention, it does not
4 The Appeal Brief contains an apparent typo; the entirety of the text quoted as being from "paragraph 26"
appears instead at paragraph 24.
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Application 13/925, 168
describe any particular uniformity of the spacing there between, or any
particular distance between the outline and object.
Figure 2 is reproduced below.
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Figure 2 depicts an editing device in which a user has drawn an
outline surrounding an article of clothing worn by a person.
Figure 2 shows an outline surrounding an object in which the distance
between the outline and the object (a shirt) varies at different points. For
example, the outline closely follows the lower edge of the shirt, but does not
follow the v-neck portion of the upper edge of the shirt, causing the distance
between outline and shirt to vary markedly at that area. Figure 2 does not
provide any indication that the outline is to be spaced at any particular
distance from the edge of the object, let alone a substantially constant
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distance between the object and the outline. Nor does Figure 2 provide any
indication of a region demarcated by an outline substantially parallel with, or
forming a uniform space relative to, an edge of the object. Instead, Figure 2
merely is consistent with the description at paragraph 26 in illustrating an
outline that need not exactly match the edges of the object being outlined.
Thus, neither of the portions of the disclosure cited by Appellant
demonstrate that the disclosure of the invention as originally filed describes
the claimed spacing between outline and object such that one having
ordinary skill in the art would reasonably conclude that the inventor had
possession of an invention for which an outline and object are spaced at a
"substantially constant distance," are "substantially parallel," or are
distanced with a "uniform space." Appellant's arguments are thus
unpersuasive to convince us of error in the Examiner's conclusion that the
application as filed fails to demonstrate possession of the invention of claims
2 and 23.
Appellant has further argued that the rejection may have been
withdrawn in the Examiner's Answer. Reply Br. 4. In the Reply Brief,
Appellant states "the rejection is both listed under the 'Grounds of Rejection
to be Reviewed on Appeal' on page 2 and under the 'Withdrawn Rejections'
on page 17 [referring to pages of the Examiner's Answer]." Id. Appellant
contends it is unclear whether the rejection is being maintained or
withdrawn.
We find no lack of clarity in the Examiner's Answer here. The
Examiner's Answer has a section, denoted "( 1 )", which presents the grounds
of rejection to be reviewed. Ans. 2-17. Section (1) states that withdrawn
rejections will be listed under a subheading labeled "WITHDRAWN
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REJECTIONS." Ans. 2. This subheading includes only a statement that the
rejection under "35 USC 112(b) or 2nd paragraph" is withdrawn. Ans. 17.
In the next section, denoted "(2 )", the Examiner presents the response to the
Appellant's arguments against the claims remaining upon appeal, starting
with the rejection under 35 U.S.C. § 112(a). Ans. 17--42. Therefore, the
Examiner's Answer unambiguously communicates to the reader that the
rejection under§ 112(a) was not withdrawn, but is maintained.
In view of the Examiner's explanation and findings regarding why
one having ordinary skill in the art would not understand Appellant's
originally-filed disclosure to demonstrate possession of the invention set
forth in claims 2 and 23, Appellant's arguments to the contrary are not
persuasive. Accordingly, we sustain the Examiner's rejection of claims 2
and 23 under§ 112(a).
Rejections Under 35 USC§ 103
Claims 1, 5, 7, 13, 18-19, 21, and 26
With respect to claim 1, Appellant raises three main issues concerning
whether the combination of Robinson and Andrews teaches or suggests all
of the claimed limitations.
Issue 1
Appellant's first issue is that the combination of applied references
does not teach or suggest the limitation "establishing, without accessing
individual frames of media content, a region by drawing an outline spaced
from and along an edge of the object as visually presented in the media
content." App. Br. 16. We concur with the Examiner's rationale of how
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that limitation is taught or suggested by the combination of Robinson and
Andrews, and adopt the Examiner's reasoning and conclusions. Ans. 18-19.
With respect to the limitation "without accessing individual frames of
media content," the Examiner relies upon Robinson for such teaching or
suggestion. Ans. 18-19. As highlighted by the Examiner, Robinson teaches
or suggests identifying elements by the x-y coordinates of the pixel locations
corresponding to the position of those elements. Robinson ,r 27; Ans. 19.
These x-y coordinates may be established in one of three ways: "according
to scene, according to frames of a scene, or some other time-based index that
can be used to identify a particular instance in the motion picture." Id.
Thus, Robinson teaches or suggests two ways of establishing a region, i.e.,
scene-based and time-based, that do not access individual frames of media
content.
Appellant argues that Robinson discloses "elements are identified in
each scene ... for example ... using a pointing device to identify an
element in a scene." Reply Br. 8; Robinson ,r 15. Appellant equates the
"scene" of Robinson to the claimed "frame." App. Br. 18. However, this is
not persuasive because Robinson clearly differentiates between a "scene"
and "frames of a scene," and teaches or suggests accessing a "scene" as an
alternative to "frames of a scene" when establishing a region corresponding
to an object in the media content. Ans. 18-19; Robinson ,r 27.
In Appellant's arguments against Robinson's teaching or suggestion
of an "establishing ... a region" limitation, Appellant additionally relies
upon portions of Robinson corresponding to the user's action in viewing the
media content; e.g., "a user viewing the scenes on a television viewing
device [may] later select a position on a frame." Reply Br. 7-8; Robinson
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i-f 27. These portions do not support arguments against Robinson's teaching
or suggestion of "establishing" the region in the creation of the media
content, because they are instead describing the actions of an end-user in
viewing the finalized content.
Appellant fails to point to any requirement of Robinson, in the
"example embodiment" of paragraph 15 or otherwise, that individual frames
of media content must be accessed in Robinson's scene-based or time-based
method of establishing a region. Accordingly, we agree with the reasoning
and conclusion of the Examiner that Robinson teaches or suggests
establishing a region corresponding to an object in media content without
accessing individual frames of media content.
Appellant additionally argues that Robinson teaches away from
establishing a region "without accessing individual frames of media
content." Reply Br. 7-8. As noted by the Examiner, Robinson teaches
defining a region in three alternative manners, two of which do not require
accessing individual frames of media content. Ans. 18-19. Appellant does
not allege that Robinson at any point criticizes, discredits, or otherwise
discourages other alternatives for defining the location of the object.
Accordingly, the mere disclosure of a frame-based method by Robinson
does not constitute a teaching away from other non-frame-based alternatives.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Similarly, appellant argues that Andrews teaches away from
establishing a region "without accessing individual frames of media content"
because Andrews discloses "defining the location of the object ... in each
frame of the video" at paragraph 85, and that the region "can be manually
defined frame by frame" at paragraph 11. App. Br. 17-18; Reply Br. 8-9.
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Appellant does not allege that Andrews at any point criticizes, discredits, or
otherwise discourages other alternatives for defining the location of the
object. Accordingly, Appellant has not shown that Andrews teaches away
from other non-frame-based alternatives.
With respect to the limitation "an outline spaced from and along an
edge of the object," the Examiner relies upon Andrews for such teaching or
suggestion. Ans. 20-21. Appellant contends that Andrews does not suggest
"an outline ... along an edge of the object" as claimed, arguing that
Andrews instead teaches in Figure 4 a "hotspot 304 as a rectangle that
"roughly approximates" the motorcycle that is the desired object. App. Br.
17. However, Appellant also quotes Andrews as stating "hotspot 304 tracks
the movement of the motorbike 302." Id. The Appeal Brief reproduces
Figure 4 of the Andrews, in which the motorbike is denoted as 302, the
motorcycle-shaped hotspot as 304, and the rectangle surrounding both as
306. Id. It is therefore clear that the rectangle in Figure 4 is clearly the
"rectangular selection tool" 306, and not the motorcycle-shaped hotspot 304.
We find that Figure 4 of Andrews illustrates a "motorcycle-shaped
hotspot" to have a generally "motorcycle-shaped" outline that does not
correspond exactly to the outer edges of the particular motorcycle in the
media. While in Figure 4, the hotspot is not shown to cover the entire
motorcycle, Andrews teaches or suggests enlarging the hotspot to cover all
of the object by proportionally increasing the hotspot in size. Andrews ,r,r
85-86. As highlighted by the Examiner, Andrews teaches or suggests
dimensioning an outline that "roughly approximates the shape of' and
covers "all of' the object. Id. We agree with the Examiner's assertion that
Andrews thereby teaches or suggests to one having ordinary skill in the art
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the creation of an outline "spaced from and along an edge of the object."
Ans. 20-21.
Appellant further presents arguments attacking references individually
where the Examiner has applied them in combination. Appellant argues
Robinson lacks drawing an outline (App. Br. 18), a limitation for which the
Examiner relied upon Andrews to teach or suggest (Ans. 19--20). Appellant
also argues that Andrews individually lacks a teaching of establishing a
region "without accessing individual frames of media content" (App. Br.
16-18; Reply Br. 8), a limitation for which the Examiner relies upon
Robinson to teach or suggest (Ans. 19). As explained by the Examiner, such
arguments are not persuasive because one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. Ans. 21 (citing In re Keller, 642 F.2d413, 425
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)).
Issue 2
Appellant's second issue is that the combination of applied references
does not teach or suggest the limitation "establishing, while the region is
temporarily drawn in relation to the object, object parameters including a
user-defined time and a user-defined position associated with the object."
App. Br. 18-19. Specifically, Appellant contends that Robinson lacks a
teaching or suggestion of that limitation. Id. However, the Examiner relies
upon Andrews, not Robinson, for the teaching or suggestion of drawing a
region in relation to an object. Appellant's contention is not persuasive
because, as discussed above, one cannot show nonobviousness by attacking
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references individually where the rejections are based on combinations of
references.
Appellant also contends that Robinson teaches away from establishing
object parameters while the region is temporarily drawn around the object
because "this may be accomplished, for example ... using a pointing device
identify and element in a scene" [sic]. App. Br. 18-19. Appellant's
contention is not persuasive because, as discussed supra, a reference that
merely provides one of a number of possible alternatives does not constitute
a teaching away from other alternatives.
The Examiner explains that Robinson teaches or suggests establishing
regions based on user-defined time and user-defined positions, and that
Andrews teaches establishing regions based on the time and position of a
user-defined outline. 5 Ans. 22-23. The test for obviousness is "what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d at 425. We are not
persuaded of error in the Examiner's conclusion that the combination of
Robinson and Andrews teaches the claimed limitation of "establishing,
while the region is temporarily drawn in relation to the object, object
parameters including a user-defined time and a user-defined position
associated with the object."
Issue 3
Appellant's third issue is that the combination of applied references
does not teach or suggest the limitation "displaying ... the media content in
5 The Reply Brief contends that the Examiner's Answer fails to respond to,
and ignores the limitation at issue. Reply Brief 11. However, the
Examiner's Answer addresses this limitation at pages 22-23.
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a first window and the additional information in a second window separated
from the first window by a space and that expands from the region of the
selection event ... without interfering with playback of the media content."
App. Br. 19.
First, Appellant alleges error in the Examiner's use of the definition of
"expand" taken from "Merriam-Webster.com" as being improper in light of
MPEP 2111.01 (III) because it fails to establish that the definition reflects
that which one having ordinary skill in the art would have understood as of
the effective filing date of the application. App. Br. 20. However, MPEP
2111.01 (III) explicitly permits reference to dictionaries, stating "it is also
appropriate to look how the claim term is used in the prior art, which
includes ... dictionaries." MPEP 2111.01 (III), January 2018 Revision. The
dictionary definition is "provided with a 2006 date as evidence that it
establishes the meaning as of the effective filing date." Ans. 26.
Accordingly, Appellant's contention that the examiner's construction is
inconsistent with the requirements for giving a claim term its ordinary and
customary meaning, as illustrated in MPEP 2111.01 (III), is not persuasive.
To the extent that Appellant is arguing that the Examiner "failed to
establish" their position on claim construction; e.g., failed to make a prima
facie case ofunpatentability, such an argument is unpersuasive. The
"[US]PTO carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in 'notify[ing] the applicant ...
[by] stating the reasons for [its] rejection, or objection or requirement,
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of [the] application."' In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132)
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(alterations in original). The USPTO violates § 132 "when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection." Chesterv. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). But if the USPTO "adequately explain[s] the shortcomings
it perceives ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt, 492 F.3d at 1370. The
Examiner has explained that the term "expand" was not found anywhere in
the specification, and thus the dictionary definition was used to determine
the plain meaning of the term used in the rejection. Ans. 26-27.
Accordingly, we do not find persuasive Appellant's contention that the
Examiner failed to establish their position on the plain meaning of the term
"expand."
Second, Appellant alleges error in the Examiner's construction of
"expand" as being inconsistent with at least Figure 3 of the application.
App. Br. 19--20. Appellant does not explain why the dictionary definition
used by the examiner is considered to be inconsistent.
The Examiner construes claim 1 's limitation "the additional
information in a second window ... that expands from the region of the
selection event" as an "an additional information window ... [that] opens up
and/or the additional information window expresses at length and/or the
additional information window writes out in full." Final Act. 6; Ans. 28.
Appellant's specification describes Figure 3 as portraying "additional
information 14 [which] is viewable at the side of the player 26 such that the
view of the media content 18 is unobstructed." Spec. ,r 46. The additional
information 14 "may include advertising information" that includes "the
icon, description, and link." Id.
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The additional information viewable at the side of the player which
provides additional detail on the selected object as described in Figure 3 and
its accompanying description at paragraph 46 is not inconsistent with the
Examiner's construction of a second window that opens up and contains
information expressed at length pertaining to the selected object.
Accordingly, we are not persuaded by the Appellant's arguments that the
Examiner's construction of claim 1 is inconsistent with the description
provided in Appellant's disclosure at Figure 3.
Appellant further contends Robinson fails to teach or suggest
displaying information in a second window in the claimed manner. App. Br.
20-21. However, the Examiner relies upon Andrews, not Robinson, for this
teaching. Ans. 27-28. As discussed, supra, one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references.
With respect to the limitation of "a second window that is separated
from the first window by a space," Appellant alleges that Andrews Figure 11
teaches a single video display frame containing the media content
(supplemented video 650) and additional information (area 604) "as part of
the same video display frame 600 ... but not a second window separated
from the first window by a space .... Reply Br. 12. The Examiner instead
interprets Figure 11 as having two separate windows separated by a space;
i.e., the video player window and, after selection of an object, a second
window with additional information. Ans. 21.
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Figure 11 is reproduced below.
602 FIG. 11
Figure 11 depicts a video image of a person riding a motorbike and a
separate image of a cap appearing on the person riding the motorbike and
information pertaining to purchasing the cap and other objects appearing in
the video image.
Claim 1 recites "a second window separated from the first window by
a space." The claim fails to set forth any restriction pertaining to the
existence or nonexistence of a "single video frame" as argued by Appellant.
We do not find the Appellant's argument that Figure 11 portrays a single
video frame to show persuasively that the Examiner errs in interpreting
Figure 11 to have two windows separated by a space, as set forth in the
claim.
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In the Reply Brief, Appellant further contends the combination of
Robinson and Andrews is improper because the Examiner failed to provide
adequate reasoning to support the combination. Reply Br. 5---6. Appellant
did not raise this issue in the Appeal Brief, contend that this issue first arose
in the Examiner's Answer, or provide any showing of good cause why the
Board should consider this issue for purposes of the present appeal.
Accordingly, pursuant to 3 7 C.F .R. § 41.41 (b )(2 ), this contention presented
for the first time in the Reply Brief will not be considered.
Accordingly, Appellant has failed to persuade us of error in the
Examiner's rejection of claim 1, and we sustain the Examiner's rejection.
With respect to dependent claims 5, 7, 13, 18-19, and 21, Appellant
points out what the claims recite and then asserts that there is no
corresponding combination of steps taught or suggested in the applied
references. App. Br. 24--31. That is tantamount to merely pointing out the
differences in what the claims cover, lacking the substantive argument as to
the separate patentability of the claims that is required by 37 C.F.R.
§ 4I.37(c)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). With
respect to independent claim 26, Appellant similarly relies upon the reasons
provided for claim 1, providing no further arguments beyond quoting the
language from the claim and asserting that such "arrangement is not taught
or suggested by the cited references." App. Br. 23. Accordingly, claims 5,
7, 13, 18-19, 21, and 26 stand or fall with claim 1 from which they depend,
and we find no error in the Examiner's rejection of those claims. We
therefore sustain the Examiner's obviousness rejection of claims 5, 7, 13,
18-19, 21, and 26.
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Claim 2
With respect to claim 2, Appellant contends the portion of Andrews
cited in the rejection fails to teach an outline surrounding an object and
providing therewith an excess space having a substantially constant distance.
App. Br. 23. The Examiner finds Andrews' disclosure of a hotspot tool that
"can customize the hotspot and can surround and correspond to the object
which includes increasing or decreasing the size around the outline around
the object" meets that limitation. Ans. 30. We agree with Appellant that
this does not teach to one having ordinary skill in the art the creation of an
excess space having a substantially constant object-outline distance.
The Examiner points to Andrews' teaching that a predefined shape
may be increased, either proportionally or disproportionally, to fit the object.
Andrews ,r 86. The Examiner stated that this would result in an excess space
having a substantially constant object-outline distance. However, Andrews
does not teach or suggest that fitting the object is to be performed by leaving
an excess space having a substantially constant distance between the outline
and the object. Accordingly, we reverse the Examiner's obviousness
rejection of claim 2.
Claim 23
With respect to independent claim 26, Appellant similarly relies upon
the reasons provided for claim 1, which we have found unpersuasive, supra.
Appellant further contends the portion of Andrews cited in the rejection fails
to teach the claim limitation "an outline substantially parallel with or
forming a uniform space relative to an edge of the object." App. Br. 22.
Since the claim is phrased in the alternative, the limitation will be met by
either alternative; i.e., a teaching or suggestion of an outline substantially
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parallel with an edge of the object or a teaching or suggestion of an outline
forming a uniform space relative to an edge of the object. See Brown v. 3M,
265 F.3d 1349, 1351 (Fed. Cir. 2001).
We agree with the Examiner's assertion that Andrews at paragraph 86
teaches or suggests an outline "along an edge of the object." Ans. 20, 28.
Specifically, Andrews teaches or suggests causing a hotspot to define an
object by "altering some or all of' the outline of the hotspot to "fit the
object." Andrews ,r 86. Accordingly, we agree with the Examiner that
Andrews teaches or suggests the "outline substantially parallel with ... an
edge of the object" limitation of claim 23, and we sustain the Examiner's
obviousness rejection of claim 23.
Claim 6
With respect to claim 6, Appellant contends that although Andrews at
paragraph 86 describes altering the size of the shape to fit the object, such
alteration is not performed in response to changes to attributes of the object
in the media content. App. Br. 25; Reply Br. 16. However, Andrews
describes that the object will be located in different positions and shapes
during different time periods of the media. Andrews ,r 85. The Examiner
explains that Andrews teaches at paras 85-86 and Figures 4---6 that the
movement of the object is tracked based on different time periods so that the
outline will be customized accordingly. Ans. 31. We find agree with the
reasoning and conclusions of the Examiner as to the entirety of Andrews'
teaching at paras 85-86 and Figures 4--6. Accordingly, we agree with the
Examiner that Andrews teaches or suggests altering the size of the outline in
response to changes in the object at different time periods in the media
content, and we sustain the Examiner's obviousness rejection of claim 6.
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Claims 8 and 9
With respect to claim 8, and claim 9 depending therefrom, Appellant
contends that Andrews fails to teach a plurality of regions outlining
respective parts of an object, and a plurality of different durations of time.
App. Br. 25-26; Reply Br. 16-17. However, the Examiner explains that
Andrews teaches at paragraphs 85-86 and Figures 4---6 that a plurality of
regions corresponding to a plurality of parts of the object may be used at a
plurality of different time periods. Ans. 32. Figures 4---6 show a video of a
motorbike being driven by a user at different distances and relative
perspectives. The Examiner further explains that Robinson discloses the
position of elements at various different times. Id. We find concur with the
reasoning and conclusions of the Examiner that the combination of
Robinson and Andrews teaches a plurality of regions outlining respective
parts of an object and a plurality of different durations of time as set forth in
claim 8. Accordingly, we sustain the Examiner's obviousness rejection of
claim 8.
With respect to claim 9, Appellant points out what the claim recites
and then asserts that there is no corresponding combination of steps taught
or suggested in the applied references. App. Br. 26. That is tantamount to
merely pointing out the differences in what the claims cover, lacking the
substantive argument as to the separate patentability of the claims that is
required by 37 C.F.R. § 4I.37(c)(iv). See In re Lovin, 652 F.3d at 1357.
Accordingly, claim 9 stands or falls with claim 8 from which it depends, and
since we find no error in the Examiner's rejection of those claims, we
sustain the Examiner's obviousness rejection of claim 9.
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Claim 10
With respect to claim 10, Appellant contends that Robinson, by itself,
does not teach or suggest "drawing the region without accessing individual
frames of the media content, especially in the claimed context of without
editing individual frames of the media content." App. Br. 26-27; Reply Br.
17-18. Appellant quotes various sections of Robinson, some of which
describe the actions of the end-user in viewing the media content rather than
the argued-against establishment of a region in the development of the media
content prior to transmission to an end-user. App. Br. 26-27. As discussed
supra, we agree with the reasoning and conclusion of the Examiner that
Robinson teaches or suggests establishing a region corresponding to an
object in media content without accessing individual frames of media
content. Appellant's contention that Robinson sets forth a frame-based
alternative (App. Br. 27-28; Reply Br. 18) is not persuasive as to Robinson's
teaching away from other non-frame-based alternatives because, as
discussed supra, a reference that merely provides one of a number of
possible alternatives does not constitute a teaching away from other
alternatives. Accordingly, we sustain the Examiner's obviousness rejection
of claim 10.
Claim 12
With respect to claim 12, Appellant contends that the combination of
Robinson and Andrews fails to teach a selection event that includes at least
one of a click event, a touch event, and a voice event without utilizing a
layer that is separate from the media content. App. Br. 27-28; Reply Br.
18-19. Appellant quotes language from paragraphs 23 and 2 7 of Robinson,
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and paragraphs 41--42 of Andrews, and makes the bare assertion that "[t]hus,
the cited references nowhere even suggest" the claimed limitation. Id.
The Examiner cites paragraphs 23 and 27 of Robinson for the
teaching or suggestion of information "not carried in the broadcast signal
and stored in a database," wherein the selection event includes at least one of
a click event, a touch event, and a voice event. Ans. 34. The Examiner
equates this to teaching or suggesting a selection event that occurs without
utilizing a layer that is separate from the media content. Id. The Examiner
further cites paragraphs 84--85 of Andrews for the teaching or suggestion of
a selection event being a click event or a touch screen event. Ans. 34--35.
The Examiner has presented a showing that the contested claim limitations
are taught or suggested by the combination of Robinson and Andrews. The
Examiner's reasoning is consistent with the teachings or suggestions of the
references and the plain meaning of the claim terms given their broadest
reasonable interpretation consistent with the specification (including, but not
limited to, paragraph 39) as understood by a person having ordinary skill in
the art.
When a prima facie case of unpatentability has been established, the
burden of coming forward with argument shifts to appellant. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). Appellant has referenced the same language in
Robinson as relied upon by the Examiner and presented those bare quotes as
their assertion that the examiner has erred. However, Appellant has failed to
explain why that language fails meet the claim limitation at issue despite the
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Examiner's reasoned statements to the contrary. 6 Accordingly, Appellant
has failed to set forth reasoning that persuasively shows any error in the
Examiner's obviousness rejection of claim 12, and we sustain the rejection.
Claim 14
With respect to claim 14, Appellant contends that Robinson, by itself,
does not teach or suggest "establishing object parameters without accessing
individual frames of the media content." App. Br. 28-29; Reply Br. 19.
Appellant quotes various sections of Robinson, some of which describe the
actions of the end-user in viewing the media content rather than the argued-
against establishment of object parameters in the development of the media
content prior to transmission to an end-user. App. Br. 28-29. As discussed
supra, we agree with the reasoning and conclusion of the Examiner that
Robinson teaches or suggests establishing a region corresponding to an
object in media content without accessing individual frames of media
content. The Examiner further explains that the region of Robinson
comprises the object parameters of user-defined time and user-defined
positional data. Ans. 19.
We concur with the Examiner's reasoning and conclusion that
Robinson teaches or suggests establishing object parameters without
accessing individual frames of the media content. Appellant's contention
that Robinson's inclusion of a frame-based alternative (App. Br. 29) is not
persuasive as to Robinson's teaching away from other non-frame-based
alternatives because, as discussed supra, a reference that merely provides
6 Note that 37 C.F.R. 4I.37(c)(iv) requires an appeal brief to "explain why
the examiner erred." A mere allegation of patentability does not meet that
standard. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
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one of a number of possible alternatives does not constitute a teaching away
from other alternatives. Accordingly, we sustain the Examiner's
obviousness rejection of claim 14.
Claim 20
With respect to claim 20, Appellant contends that Figure 12 of
Andrews does not teach or suggest the first window being a player of media
content and the second window being separate from the player. App. Br. 30.
Appellant contends that Andrews teaches a supplemental video 650 and an
informational area 604, but that they are part of the same video display
frame 600. Id.
The Examiner instead characterizes the player as including the video
650 and the "play button" directly beneath the video. Ans. 37. The
Examiner finds that the second window 604 containing information is
separate from the player. Id.
The claim fails to set forth any restriction pertaining to the existence
or nonexistence of a "video display frame" as argued by Appellant. We do
not find the Appellant's argument that Figure 12 portrays a video display
frame to show persuasively that the Examiner errs in interpreting Figure 12
to have a media play window separated by a space from a second window
having additional information, as set forth in the claim. Therefore, we
sustain the Examiner's rejection of claim 20.
Claim 3
With respect to claim 3, Appellant notes that the Office Action admits
that Robinson and Andrews are silent on a start time input field, end time
input field, and a plurality of buttons including a clear shape button. App.
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Br. 32; Final Act. 10. Schneider and Cunningham are relied upon by the
Examiner to provide teachings that, along with the teachings of Robinson
and Andrews, teach these claimed features. Final Act. 10; Ans. 39-40.
As a preliminary matter, the Examiner noted in the Examiner's
Answer a "typographical error" in the heading of the rejection which
"inadvertently included Huber instead of Andrews as rejected in the
independent claim." Ans. 14. Appellant does not argue this error in the
Appellant's Brief, instead treating the rejection of claim 3 as if based upon
Andrews rather than Huber. For example, with respect to the "start time
input filed" limitation, Appellant states "the Examiner has relied upon the
combination of the Robinson, Andrews, and Schneider references to teach
the disputed limitation." App. Br. 25.
However, in the Reply Brief, Appellant characterizes the Examiner's
admission of a typographical error as a "new ground of rejection not
properly identified." Reply Br. 3. The exclusive procedure for an appellant
to request review of a new ground of rejection not identified as such is a
petition to the Director under 37 C.F.R. § 1.181. 37 C.F.R. § 41.40; MPEP
1207.03(b). Any such petition must be filed "within two months from the
entry of the examiner's answer and before the filing of any reply brief." 37
C.F.R. § 4I.40(a). Appellant has not timely filed such a petition. The Reply
Brief's request for consideration of a new ground of rejection is not in
accordance with 37 C.F.R. § 41.40 and therefore is not addressed on its
merits in this decision.
Appellant admits Schneider discloses a table used for configuring
hotspots that includes a start time input field and an end time input field.
App. Br. 32; Schneider ,r 242. Appellant contends that Schneider
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individually lacks a teaching of start and end time input fields "of the region
in relation to the object," as claimed. App. Br. 33. However, the Examiner
has relied upon the combination of the Robinson, Andrews, and Schneider
references to teach the disputed limitation. Ans. 39. Appellant's contention
is not persuasive because one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d at 425; In re Merck & Co., 800 F.2d
at 1097. The Examiner has explained how the disputed limitations are met
by Schneider's teaching or suggestion of start and end time input fields,
combined with Robinson's teaching or suggestion of a time input field
related to an object, and Andrew's teaching or suggestion of a region that is
an outline drawn in relation to the object. Ans. 39. Appellant thus fails to
provide persuasive explanation why the Examiner's explanation is in error.
Appellant further contends Cunningham individually lacks a teaching
of a clear shape button and a move shape button as claimed. App. Br. 33;
Reply Br. 23. However, the Examiner has relied upon the combination of
the Robinson, Andrews, and Cunningham references to teach or suggest the
disputed limitation. Ans. 39--40. Appellant's contention is not persuasive
because one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d at 425; In re Merck & Co., 800 F.2d at 1097. The
Examiner has explained how the disputed limitations are met by
Cunningham's teaching or suggestion of the use of buttons, including a clear
shape button in the form of an eraser, combined with Andrew's teaching or
suggestion of a "cursor/button for editing the outline of the object including
a hotspot drawing tool to perform the function of draw shape and move
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shape." Ans. 39-40. Appellant fails to provide persuasive explanation why
the Examiner's explanation is in error. Accordingly, we sustain the
Examiner's obviousness rejection of claim 3.
Claim 22
With respect to claim 22, Appellant contends that Grunnet-Jepsen in
combination with Robinson and Andrews fails to teach "updating the object
parameters in response to tracking end-viewer preferences when the object
was selected and how many times the object was selected," as claimed.
App. Br. 34; 7 Reply Br. 24 ( emphasis added). In particular, Appellant
contends the combination fails to teach when the object was selected. Reply
Br. 24. However, Appellant admits that Grunnet-Jepsen provides a search
history having the location and time stamp of a user's click, and the object
that was selected by the click. App. Br. 34. Appellant is therefore
unpersuasive in contending that there is no teaching of when the object was
selected because Appellant admits that Grunnet-Jepsen teaches tracking the
time of the user's object selection.
Appellant further contends Grunnet-Jepsen individually fails to teach
the entirety of "updating the object parameters in response to tracking end-
viewer preferences when the object was selected and how many times the
object was selected" as claimed. App. Br. 34; Reply Br. 24. However, the
Examiner has relied upon the combination of Robinson, Andrews, and
Grunnet-Jepsen to teach or suggest the disputed limitation. Ans. 40-41.
Appellant's contention is not persuasive because one cannot show
7 The Appeal Brief has a typographical error (Robinson omitted) in the
heading of the discussion of the rejection of claim 22. App. Br. 34.
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nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d at 425; In
re Merck & Co., 800 F .2d at 1097.
The Examiner has explained how the disputed limitations are met by
the combination of Robinson and Andrews in teaching or suggesting
updating the object parameters in response to tracking user preferences, and
the teaching or suggestion of Andrews to track how many times the object
was selected, and the teaching or suggestion of Grunnet-Jepsen of when the
object was selected. Ans. 40-41. Appellant fails to provide persuasive
explanation why the Examiner's explanation is in error. Accordingly, we
sustain the Examiner's obviousness rejection of claim 22.
Claims 2 4 and 2 5
With respect to claim 24, Appellant contends that Huber in
combination with Robinson and Andrews fails to teach or suggest "encoding
the object parameters including the user-defined time and the user-defined
position, and the additional information into the data output file for
distribution with the media content." App. Br. 35; Reply Br. 24--25.
Appellant admits Huber teaches, at paragraph 56, encoding video signals
where the decoder extracts different signals such as a video, an interactive
video feed, another video or interactive feed, and presentation description
information, but contends that Huber does not teach the claimed object
parameters or additional information therewith. Id.
Notably, Huber, at paragraph 56, also states "other information" is
included in the multiple video feed signal sent to the decoder. As for the
inclusion of the claimed object parameters, the Examiner relies upon the
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teaching or suggestion of Robinson of "object parameters including user
defined time and user defined position." Ans. 41.
Appellant's contention is not persuasive because one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d at 425; In
re Merck & Co., 800 F.2d at 1097. The Examiner has explained how the
disputed limitations are met by the combination of Robinson in teaching or
suggesting object parameters including user-defined time and user-defined
position, and the teaching or suggestion of Huber of encoding a video signal
with other video signals and additional information. Ans. 41; Final Act 27-
28. Appellant fails to provide persuasive explanation why the Examiner's
explanation is in error.
With respect to claim 25, Appellant contends that Huber in
combination with Robinson and Andrews fails to teach or suggest "storing a
separate data output file for each of the associated objects having established
object parameters." App. Br. 35-36; Reply Br. 25.
The Examiner relies upon the teachings or suggestion of the base
combination and states that the base combination does not explicitly disclose
separate files. Ans. 42; Final Act. 28. The Examiner explains that Huber
discloses storing a separate data output file for each of the associated
objects. Ans. 42. The Examiner cites to Figure 18 of Huber and its
explanatory paragraph 109, which discusses the use of an embedded ad that
may be applied to the video signal, and that there may be one data file for
each advertisement ( embedded ad) that may also comprise placement and
contour data. Ans. 42; Final Act. 28.
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Appellant's contention is not persuasive because one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d at 425; In
re Merck & Co., 800 F.2d at 1097. The Examiner has explained how the
disputed limitations are met by the combination of Robinson in teaching or
suggesting object parameters including user-defined time and user-defined
position, and the teaching or suggestion of Huber of separate files for each
advertised object. Ans. 18-28, 41--42; Final Act 27-28. Appellant fails to
provide persuasive explanation why the Examiner's explanation is in error.
Accordingly, we sustain the Examiner's obviousness rejection of claims 24
and 25.
Completeness of the Final Office Action
In the Appeal Brief, Appellant further contends the Final Action is
"incomplete, thereby necessitating its reversal." App. Br. 13-16.
To the extent Appellant's contention that the Examiner has "ignored"
limitations of the claims amounts to an argument that the Examiner failed to
make a prima facie case of unpatentability, such argument is unpersuasive.
Where the PTO "adequately explain[ s] the shortcomings it perceives ... the
burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument." Hyatt, 492 F.3d at 1370.
Appellant has provided a list of examples of alleged failure of the
Examiner to address the claim elements. App. Br. 15-16. However, as
discussed for each individual rejection, supra, the Examiner has addressed
each of the limitations for which Appellant has argued. Appellant's
allegations of "ignoring" limitations include instances in which the
Examiner has applied a combination of two references, admitting that one
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reference does not solely teach a specific limitation. The mere fact that a
single reference in a combination does not teach a specific claim limitation,
where that limitation is taught by the other reference applied in that
combination, is not tantamount to "ignoring" the limitation. Nor does an
alleged deficiency in the Examiner's characterization of how the
specification describes a claim limitation amount to "ignoring" that claim
limitation. Appellant does not show that the Final Office Action failed to
state the reasons for each rejection, together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of his application, as required by 35 U.S.C. § 132. At no point
does Appellant show "a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection," such that a prima facie case is not established. Chester v. Miller,
906 F.2d at 1578.
Appellant further alleges the "Office Action and Advisory Action
clearly ignored portions of the claims," rendering those Actions "invalid
under the Administrative Procedure Act." Id. at 16. To the extent that
Appellant presents a substantive argument on the merits of the rejection of
individual claims, each of Appellant's arguments are addressed, supra, for
each of the respective rejections. To the extent that Appellant assigns error
to the Examiner in allegedly failing to follow USPTO procedures,
allegations of procedural error are properly resolvable via petition. 8 The
Board "will not ordinarily hear a question that should be decided by the
8 See, e.g., 37 C.F.R. § 1.181.
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Director on petition. " 9 Appellant has not filed a petition to contest the
completeness of the Final Office Action. Nor has Appellant has presented
reasoning to justify disturbing the line of demarcation between appealable
matters for the Board and petitionable matters for the Director. Accordingly,
Appellant's arguments pertaining to the completeness of the Examiner's
rejections are addressed in this decision purely on their substantive merits,
supra.
Accordingly, Appellant has failed to show reasons why the Board
should reverse the rejections set forth in the Final Action based upon a
procedural defect in that Action.
DECISION
We affirm the Examiner's rejections of claims 2 and 23 under
35 U.S.C. § 112(a).
We reverse the Examiner's rejection of claim 2 under 35 U.S.C. § 103.
We affirm the Examiner's rejections of claims 1, 3, 5-10, 12-14, and
18-26 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1-3, 5-10,
12-14, and 18-26 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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
9 MPEP 1201; see also Ex parte Frye, 94 U.S.P.Q.2d 1072, 1077-78 (BPAI
2010) (precedential).
35