Ex Parte Hansson et al

Patent Trial and Appeal Board

May 25, 2016

13271866 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/271,866 10/12/2011
58342 7590 05/27/2016
WARREN A, SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19THFLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Emil HANSSON
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.
PSlO 2644US3 1496
EXAMINER
MAI,KEVINS
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMIL HANSSON, LARS-GUNNAR LUNDGREN,
and DAVID OSTERDAHL 1
Appeal2014-007015
Application 13/271,866
Technology Center 2400
Before CARL W. WHITEHEAD, JR., MICHAEL J. STRAUSS, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-9, and 11-20, which are all pending
claims.2 We have jurisdiction over these claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Sony Mobile Communications AB as the real party in
interest. (App. Br. 2.)
2 Claims 4, 10, and 21-24 were canceled in an Amendment dated June 24,
2013.
Appeal2014-007015
Application 13/271,866
Introduction
According to Appellants:
The present invention relates generally, as indicated, to a
method and apparatus for sharing information about media from
portable electronic equipment via a social network or other
conveyance system, and, more particularly, to sharing such
information and to facilitate one or more others accessing the
information and facilitating their using, e.g., by purchasing, such
media.
(Spec. 1, 11. 10-14.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitations italicized, is
exemplary of the claimed subject matter:
1. A method of sharing content information about content
using portable electronic equipment, comprising:
selecting via the portable electronic equipment the content
about which content information is to be shared by selecting a
like function that is provided via the portable electronic
equipment to indicate that the content is liked by a user of the
portable electronic equipment;
obtaining a unique identifier of the content relating to a
location of the content information; and
sending from the portable electronic equipment to a social
network the unique identifier of the content for posting on the
social network for use by another to obtain the content
information about the content.
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Application 13/271,866
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nguyen et al. ("Nguyen") US 2007 /0264982 Al
Metcalf US 2012/0096018 Al
REJECTIONS
Nov. 15, 2007
Apr. 19, 2012
Claims 1-3, 5-9, and 11-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Nguyen and Metcalf. (Final Act. 2-3 and 5-13.)
Claim 11 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. (Final Act. 3--4.)
ISSUES
1. Whether the Examiner erred in finding the combination of
Nguyen and Metcalf teaches or suggests "selecting via the portable
electronic equipment the content about \'l1hich content information is to be
shared by selecting a like function that is provided via the portable electronic
equipment to indicate that the content is liked by a user of the portable
electronic equipment," as recited in independent claim 1.
2. Whether the Examiner erred in finding the combination of
Nguyen and Metcalf teaches or suggests "sending from the portable
electronic equipment to a social network the unique identifier of the content
for posting on the social network for use by another to obtain the content
information about the content," as recited in independent claim 1.
3. Whether the Examiner erred in rejecting claim 11 under 35
U.S.C. § 112, second paragraph, as indefinite.
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Application 13/271,866
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: ( 1) the findings and reasons set forth
by the Examiner in the Action from which this appeal is taken (Final Act. 3-
11) and (2) the reasons set forth by the Examiner in the Examiner's Answer
in response to Appellants' Appeal Brief. (Ans. 5-18.) We concur with the
conclusions reached by the Examiner, and we highlight the following for
emphasis. 3
A. Rejection Under 35 U.S.C. § 103(a)
1. " ... a like function that is provided via the portable electronic
equipment ... "
The Examiner finds Nguyen "discloses a media file is identified in
response to a user's selection to recommend a media file." (Final Act. 5
(citing Nguyen il 44).) The Examiner further finds Nguyen teaches or
suggests a "like function" by disclosing a choice of "message selections
indicating the user likes the song." (Id. (citing Nguyen Fig. 6C).) As shown
in Nguyen's Figure 6C, the user may select content "from a list of pre-
defined messages" to include in a message along with a link to a chosen
song, such as "This song rocks!" (Nguyen i-f 46 and Fig. 6C.)
Appellants argue the Examiner's findings are in error because,
according to Appellants, "a like function as recited in claim 1 is a general
indication that the user likes the song. A like function as recited in claim 1
3 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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is neither an explicit recommendation nor is it directed to any specific
recipients." (App. Br. 8 (emphasis added).) Appellants acknowledge the
"canned messages" disclosed by Nguyen "may suggest that the user likes the
song," but argue they do not teach or suggest the claimed "like function"
because they are "part of a message where the user expressly recommends
the media to the speclfzc recipients." (Id. (emphasis added).)
Appellants' arguments are not commensurate with the scope of the
claims and hence are not persuasive of Examiner error. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the
outset because ... they are not based on limitations appearing in the
claims."). As the Examiner correctly notes, claim 1 does not preclude the
recited "like function" from being a recommendation or being directed to
specific recipients. (Ans. 3.) Rather, "[t]he language only appears to require
that a like function indicates that content is liked by a user of the
equipment." (Id. (emphasis added).) It is well settled that the terms of a
claim must be given the broadest reasonable interpretation, consistent with
Appellants' Specification, as they would be interpreted by one of ordinary
skill in this art. In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997); In
re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). As the Examiner further
correctly finds, and we agree, "being able to select 'This song rocks[!]'
would be a reasonable indication that the user likes the song." (Ans. 3.)
In their Reply Brief, Appellants argue, for the first time, the term "like
function" "had a meaning in the art at the time of invention that is clearly
documented in the Specification of the present application and it is not the
meaning the Examiner is attributing to it." (Reply Br. 9.) We find nothing
in the Examiner's Answer that would have prompted this new argument
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raised by Appellants for the first time in the Reply Brief Rather, the
Examiner's stated reasoning in the Final Office Action (Final Act. 2-3, 5---6)
is the same as the reasoning stated in the Answer (Ans. 2-5). Therefore,
Appellants' new argument-that "like function" was a term of art with a
meaning different from the meaning applied by the Examiner-is not
entitled to our consideration. Optivus Tech., Inc. v. Ion Beam Appl 'ns S.A.,
469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the
reply brief that could have been raised in the opening brief is waived);
accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(informative opinion) (absent a showing of good cause, the Board is not
required to address an argument newly presented in the reply brief that could
have been presented in the principal brief on appeal).
Nevertheless, even considering Appellants' new argument, we are not
persuaded of Examiner error. Other than citing to a general description in
the Specification regarding use of "like function[ s ]" on social media sites,
Appellants base their contention of "specific meaning" only on attorney
argument (Reply Br. 8-9), which is entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). Moreover, the description of a "like function" in
Appellants' Specification is general and open-ended, and is not inconsistent
with Nguyen's teachings. (Cf Spec. 1, 11. 24--26: "To 'like' a certain item
on a social network, such as, for example, the F ACEBOOK social network,
it is possible to select, e.g., to click, a 'like button' or icon, for a specific
piece of content" with Nguyen i-fi-144, 46.) Although the example provided
in the portion of the Specification cited by Appellants refers to Facebook's
"like" function (Reply Br. 8-9 (citing Spec. 10:9-13)), we do not read the
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term "like function" as limited to use on or by Facebook. As our reviewing
court has admonished, "limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing Zletz, 893 F.2d at 321). Indeed, Appellants do not appear to argue
that the term "like function" be limited to use on Facebook as described in
the Specification-but Appellants also do not argue how the term should be
construed, other than simply arguing the meaning of the term "is not the
meaning the Examiner is attributing to it." (Reply Br. 9.) Such unsupported
and unfocused arguments are not persuasive of error.
2. "sending from the portable electronic equipment to a social
tw k " ne or ...
The Examiner finds Nguyen teaches all of the limitations of claim 1,
except "posting on a social network." (Final Act. 5---6.) As to that aspect of
claim 1, the Examiner combines Nguyen with Metcalf, finding Metcalf
discloses sharing links to songs "on social media networks." (Final Act. 6
(citing Metcalfi-fi-121, 24).) The Examiner finds "[i]t would have been
obvious to one of ordinary skill in the art at the time of [the] invention to
combine the method of claim 1 as disclosed by Nguyen, with posting on a
social network as disclosed by Metcalf." (Final Act. 6.)
We agree the Examiner's findings regarding the teachings of Nguyen
and Metcalf are supported by the cited disclosures. (Final Act. 5---6; Ans. 4--
5.) We have reviewed Appellants' arguments (App. Br. 9; Reply Br. 2-8),
but do not find them persuasive of error, as Appellants' arguments are
principally based on challenges to aspects of the individual references that
are not relied upon by the Examiner. For example, Appellants argue the
Examiner's findings regarding Metcalf are in error because "Metcalf does
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not disclose sendingfrom the portable electronic equipment to a social
network the unique identifier of the content." (App. Br. 9 (emphasis
added).) Rather, Appellants argue, Metcalf teaches the sharing is performed
by "the Music by Voice Web Server 12, not by the phone 22." (Reply Br. 5
(emphasis added).) Appellants' piecemeal challenge against Metcalf is not
persuasive because the Examiner relies on Nguyen, not Metcalf, for teaching
"sending from the portable electronic equipment ... the unique identifier of
the content .... " (Final Act. 5-6; Ans. 4--5.) The Examiner relies on
Metcalf only for teaching "sending ... to a social network" and "posting on
the social network." (Id.) The Examiner additionally finds Metcalf, like
Nguyen, teaches sharing song links via SMS, and reasons "[o]ne of ordinary
skill in the art would have been motivated" to combine Metcalf' s use of
social media with Nguyen's content sharing because it would have involved
"simple substitution of one known element for another to obtain predictable
results":
Paragraph [0021] of Metcalf discloses a link to the song or
ringtone of the song can be sent to phone 22 as an SMS message
39, in the preferred embodiment, email, shared on social media
networks and the like. Thus, SMS messages and social media are
seen to be known alternatives of each other.
(Final Act. 6 (emphasis added).) We agree. Appellants' additional
piecemeal arguments (App. Br. 9; Reply Br. 2-8) do not rebut the
Examiner's findings regarding the combined teachings of the cited
references and, therefore, are similarly not persuasive.
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of claim 1 as unpatentable over the
combination of Nguyen and Metcalf. We, therefore, sustain that rejection,
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along with the rejection of dependent claims 2, 3, 5-9, and 11-13, which
Appellants do not argue separately from claim 1.
With regard to independent claims 14 and 19, Appellants repeat the
same arguments as presented for claim 1. (App. Br. 9-11.) We, therefore,
sustain the rejection of claims 14 and 19 for the same reasons as for claim 1,
and further sustain the rejection of dependent claims 15-18 and 20, which
are not argued separately.
B. Rejection Under 35 U.S.C. § 112
The Examiner also rejects claim 11 under 35 U.S.C. § 112, second
paragraph. (Final Act. 4.) Appellants do not address this ground of
rejection on appeal. Accordingly, we summarily sustain this rejection. See
Manual of Patent Examining Procedure (MPEP) § 1205.02, 8th ed., Rev. 9,
Aug. 2012 ("If a ground of rejection stated by the examiner is not addressed
in the appellant's brief, that ground of rejection will be summarily sustained
by the Board").
DECISION
For the above reasons, the Examiner's rejections of claims 1-3, 5-9,
and 11-20 are affirmed.
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
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