Ex Parte Fukushima et al

Patent Trials and Appeals BoardApr 18, 2016

12272709 - (D) (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/272,709 11/17/2008 Osamu Fukushima 22850 7590 04/20/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 452374US8DIV PPMPH 6809 EXAMINER SHERR, MARIA CRISTI OWEN ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OSAMU FUKUSHIMA, HAJIME FUJII, and HIROSHI OZAKI Appeal2013---005464 Application 12/272,709 Technology Center 3600 Before ANTON W. PETTING, PHILIP J. HOFFMANN, and BRADLEY B. BAY AT, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Osanm Fukushima, Hajime Fujii, and Hiroshi Ozaki (Appellants) seek review under 35 U.S.C. Â§ 134 of a final rejection of claims 39, 41--44, 46- 49, and 51-53, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed August 29, 2012) and Reply Brief ("Reply Br.," filed March 18, 2013), and the Examiner's Answer ("Ans.," mailed January 17, 2013), and Final Action ("Final Act.," mailed November 18, 2011). Appeal2013-005464 Application 12/272,709 The Appellants invented a content providing/obtaining system. Specification 1: Technical Field. An understanding of the invention can be derived from a reading of exemplary claim 49, which is reproduced below (bracketed matter and some paragraphing added). 49. A non-transitory computer-readable storage medium encoded with instructions, which, when executed by a content obtaining apparatus, cause the content obtaining apparatus to execute a content obtaining program for obtaining content data provided by a content providing apparatus and reserved by a customer for purchase or rental, the computer program comprising instructions for executing the following steps: [ 1] generating an image request; [2] sending the image request to the content providing apparatus; [3] receiving a plurality of response images created in accordance with the image request; [ 4 J displaying the plurality of response images to the customer; [5] receiving from the customer a selection of one or more images of the plurality of response images; [ 6] sending to the content providing apparatus a preview request corresponding to the one or more images of the plurality of response images selected by the customer; [7] receiving from the content providing apparatus preview data corresponding to the preview request; [8] displaying to the customer the preview data; [9] receiving from the customer a preview data selection in accordance with a selection made by the customer of the preview data indicating customer desired content data to be reserved for the customer; [ 10] sending to the content providing apparatus customer request data corresponding to the preview data selection; 2 Appeal2013-005464 Application 12/272,709 [11] receiving from the content providing apparatus, via interface means configured to access said content providing apparatus only, the customer desired content data; [12] recording said customer desired content data on a storage medium; and [ 13] reproducing and outputting said customer desired content data. The Examiner relies upon the following prior art: Beattie US 5,659,742 Ginter US 5,892,900 Aug. 19, 1997 Apr. 6, 1999 Claims 39, 41--44, 46--49, and 51-53 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Beattie and Ginter. ISSUES The issues of obviousness tum primarily on whether the art applied describes getting a preview request from a search results list and creating a preview from it. 3 Appeal2013-005464 Application 12/272,709 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Ginter 01. Ginter is directed to ensuring that information is accessed and/or otherwise used only in authorized ways, and maintaining the integrity, availability, and/or confidentiality of such information and processes related to such use. Ginter also relates to protecting rights of various participants in electronic commerce and other electronic or electronically-facilitated transactions and to secure chains of handling and control for both information content and information employed to regulate the use of such content and consequences of such use. It also relates to systems and techniques that manage, including meter and/or limit and/or otherwise monitor use of electronically stored and/or disseminated information, and particularly relates to transactions, conduct and arrangements that make use of, including consequences of use of, such systems and/or techniques. Ginter 1:9-36. 02. Ginter describes dialog boxes which enable flexible browsing. This may be provided by activating an electronic connection to a remote source after a choice is selected. A browsing interface can allow this electronic connection to be made automatically upon a 4 Appeal2013-005464 Application 12/272,709 user selection of an item, or the connection itself can be explicitly activated by the user. Ginter 264:28--42. Beattie 03. Beattie is directed to identifying documents corresponding to a search topic or query, and more particularly, to identifying and retrieving text and multi-media files related to a search topic from a database library composed of information from many various publisher sources. Beattie 1:6-12. 04. Beattie stores document records representative of multi-media records representative of multi-media files. The multi-media records have multi-media information fields for representing digital video, digital audio or graphics information, and associated text fields, each of the associated text fields representing text associated with one of the multi-media information fields. A single search query corresponding to the search topic is received. An index database is searched in accordance with the single search query to simultaneously identify document records and multi-media records related to the single search query. A search result list having entries representative of both textual documents and multi-media files related to the single search query is generated. Digital video, audio or graphics information corresponding to the search topic is retrieved by selecting entries from the search result list representing selected multi-media records to be retrieved, and then retrieving digital video, audio or graphics information represented by multi-media information 5 Appeal2013-005464 Application 12/272,709 fields associated with the selected multi-media records. Beattie 3:59--4:16. 05. Beattie describes generating and sending a search using natural language or key word searching. Beattie 12: 15-34. 06. Beattie describes responding to the search by generating and sending a search results list which contains entries representing the document identification number of each textual document and multi-media file identified in the search. Beattie 12:15-34. 07. Beattie Fig. 4A shows an exemplary search results list displayed in an open window 341 on PC 104. The image displayed in window 341 includes relevance scores 342, bibliographical information 343, readability information 343a, size information 343b, and a file type indicator 344. Beattie 14:41--47 08. If the user wishes to retrieve a document file for display, the user selects one of the documents in the search list and the session server retrieves the text, image bitmap, sequence of video frames, or sequence of digital audio frames associated with the selected document file. This is displayed in a window. The user may repeat this process. This information may be displayed simultaneously with the search results list. The user can also simultaneously open a document composition window to cut/copy/paste both text and video information from windows which represent other selected document files into the document 6 Appeal2013-005464 Application 12/272,709 composition window to form a composite document that pertains to the search query. Beattie 14:66-15:48. ANALYSIS We are persuaded by the Appellants' argument that Ginter does not, and the Final Office Action failed to specifically point out where it does, teach or suggest obtaining content data provided by a content providing apparatus and reserved by a customer for purchase or rental, or sending preview request to the content providing apparatus, wherein the preview request corresponds to images selected by the customer, or receiving from the customer a preview data selection indicating customer desired content data to be reserved for the customer, or sending to the content providing apparatus customer request data corresponding to the preview data selection, or receiving from the content providing apparatus the customer desired content data. App. Br. 20, emphasis omitted. All of the independent claims recite a search for images that returns some list of images to select from and recite eventually selecting and outputting such an image. The Examiner found that Beattie described this. All of the independent claims also recite getting a preview request from the list and creating a preview from it. Beattie does not describe this, so the Examiner found that Ginter did so in a pop up window that listed plural entries, one of which has the word "Preview." Final Act. 5, referring to Ginter Fig. 72D. As Appellants contend, however, Ginter does not explain how any of the data in its Fig. 72D is used and so the Examiner's findings regarding such are speculation rather than fact. None of the applied art describes claim 49 steps [6]-[9] or the equivalent in the other independent claims. 7 Appeal2013-005464 Application 12/272,709 CONCLUSIONS OF LAW The rejection of claims 39, 41--44, 46--49, and 51-53 under 35 U.S.C. Â§ 103(a) as unpatentable over Beattie and Ginter is improper. DECISION The rejection of claims 39, 41--44, 46--49, and 51-53 is reversed. REVERSED 8