Ex Parte HERTENSTEIN et al

Patent Trial and Appeal Board

Feb 22, 2019

12632406 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/632,406 12/07/2009 DAVID HERTENSTEIN
73109 7590 02/26/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CHA920090016US1_8134-0ll 7 3738
EXAMINER
JOSEPH, SHAWN S
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID HERSTENSTEIN AND JOSHUA L. PURCELL
Appeal2018-000025
Application 12/632,406
Technology Center 2100
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR.,
and IRVINE. BRANCH, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21--40, which constitute all claims pending in this application. 1 App.
Br. 2. Claims 1-20 have been canceled. Id. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
Introduction
According to Appellants, the claimed subject matter relates to a
method and system for displaying video files (178) not preloaded within a
browser (115) executing in a client computer (110). Spec. i-fl2, Fig. 1. In
1 Appellants identify the real party in interest as International Business
Corporation. App. Br. 2.
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Application 12/632,406
particular, upon receiving a mashup source file (167) from a web server
(160), the client computer (110) renders a mashup application (120) in the
browser (115), and subsequently uses an iWidget-compliant interactive
video player component (130) within the mashup application (120) to access
a video file (178) received at the browser (115). Id. ,r,r 5, 12, 24, 31, 61, Fig.
1. More particularly, a video player (e.g., FLASH) (212) within the video
player component (130) uses an intermediary scripting class file (145) (e.g.,
ACTIONSCRIPT 3 .0) to access scripting functions ( e.g., JA V ASCRIPT)
(155) contained in the source code file (167) in order to play the received
video file (178). Id. ,r,r 33, 37, 46, Fig. 2.
FIG. I
Figure 1 shows a system utilizing an iWidget-compliant interactive video
player component within a mashup application.
2
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Application 12/632,406
iWidgct-Compliant Interactive
\iidco Player Component
Display A.rca
21 () 200 .---i-- Video Playback
FLASH Video
Player
212
Video Dhplay
Handler
2.15
.lnlcrfocc
CuMomization
Component
FIG. 2
Control Cornponcnt
Comn\cni_ Logging
Sysn:m
Figure 2 shows a detailed view of the iWidget-compliant interactive video
component.
Representative Claim
Independent claim 21 is representative, and reads as follows:
Claim 21. A computer-implemented method of
displaying a video file within a browser of a client computer,
compnsmg:
receiving, by the client computer from a server, a mashup
source file;
rendering, using the browser and the mashup source file,
a mashup application;
receiving, by the browser and independent of the mashup
application, the video file; and
accessing, using a video player component within the
mashup application, the video file, wherein the video player
component includes:
a video player,
scripting functions contained within a source code file,
and
an intermediary scripting class file used by the video
player to access the scripting functions.
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Appeal2018-000025
Application 12/632,406
Prior Art Relied Upon
Brichford et al., US 2008/0098296 Al Apr. 24, 2008
Hayosh et al., US 2008/0195692 Al Aug. 14, 2008
Ganesan US 2009/0254745 Al Oct. 08, 2009
Veneziani, Quick Embed Code to Add Comments to Any Site, 2006
C{)llllI1entsn t{)n a11_>1n site/.
Adobe ActionScript 3 .0, Controlling move clip playback, 2008
Rejections on Appeal
Claims 21--40 stand rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 3--4.
Claims 21, 26-28, 33-35, and 40 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Ganesan and
Hayosh. Id. at 4--16.
Claims 22, 29, and 36 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Ganesan, Hayosh, and
Brichford. Id. at 16-20.
Claims 23, 25, 30, 32, 37, and 39 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Ganesan, Hayosh,
and Adobe. Id. at 20-25.
Claims 24, 31, and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ganesan, Hayosh, and
Veneziani. Id. at 25-27.
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Appeal2018-000025
Application 12/632,406
ANALYSIS 2
Written Description Rejection
Appellants argue that the Examiner erred in concluding the originally-
filed written description does not support the recitation of "receiving, by the
browser and independent of the mashup application, the video file;" as
recited currently in independent claim 21. App. Br. 9. In particular,
Appellants argue although the Specification does not recite, verbatim, the
terminology "independent" to describe the relationship between the arrival
of the video file to the browser and the creation of the mashup application
thereto", the ordinarily-skilled artisan would discern that relationship from
the written description. Id. at 10. More particularly, Appellants argue that
the Specification supports the browser receiving the video file separately
from the mashup application. Id. at 10-11 (citing Spec. ,r,r 12, 31, 61).
According to Appellants, put differently, "the claim language requires that
the video file and the mashup application be independent of each other and
arrive ( either by downloading or rendering) within the browser at the same
time." 3 Reply Br. 2 (citing Spec. ,r 12, 61).
This argument, as revised by Appellants, is persuasive. To satisfy the
written description requirement, a Specification must describe the claimed
invention in sufficient detail that one skilled in the art can reasonably
conclude that the inventor had possession of the claimed invention. Moba,
2 We refer to the Final Office Action (mailed June 16, 2016) ("Final Act."),
the Appeal Brief (filed November 16, 2016) ("App. Br."), the Examiner's
Answer ( mailed August 11, 201 7) ("Ans."), and the Reply Brief ( filed
September 29, 2017) ("Reply Br.") for the respective details.
3 Appellants' reference to "independent" as denoting "same time" appears to
be a typographical error. Instead, we construe "independent" as denoting
"different time." See discussion infra.
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Application 12/632,406
B. V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003).
An applicant may show possession of the claimed invention by describing
the claimed invention with all of its limitations using such descriptive means
as words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997). However, our reviewing court guides that "[a]
description which renders obvious the invention for which an earlier filing
date is sought is not sufficient." Lockwood 107 F.3d at 1572 (quoting Jepson
v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). "[I]t is 'not a question of
whether one skilled in the art might be able to construct the patentee's device
from the teachings of the disclosure .... Rather, it is a question whether the
application necessarily discloses that particular device"' (Id., emphasis
added).
At the outset, we note it is indisputable that the term "independent"
appears nowhere in Appellants' originally-filed Specification, drawings or
claims. Although the written description requirement does not impose an
"in haec verba" recitation of the disputed claim language in the original
Specification, it nonetheless requires a sufficient description of the claim
subject matter so as to enable one of ordinary skill in the art to make and use
the invention. In re Wright, 866 F. 2d 422 (Fed. Cir 1989). See also Agilent
Techs., Inc. v. Afjj;metrix,Inc., 567 F. 3d 1366 (Fed. Cir. 2009). Although
the Examiner correctly notes that the Specification does not support
Appellants' argument that the browser receives the mashup application
before the video file, the Examiner does not dispute the Specification
nonetheless supports that the mashup application is already running in the
browser before it can be used to download the video file. Spec. ,r 61, Ans.
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Application 12/632,406
6-7. Therefore, the ordinarily-skilled artisan, having read Appellants'
Specification, would readily understand that Appellants had possession of
the browser rendering the mashup application, which is subsequently used
by the browser to receive video file. Because the meaning of the claim
limitation "independent" is not readily ascertainable, the cited limitation
must be given its broadest reasonable interpretation consistent with
Appellant's disclosure, as explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zietz,
893 F.2d 319,321 (Fed. Cir. 1989) (stating that "claims must be interpreted
as broadly as their terms reasonably allow."). Our reviewing court further
states, "the 'ordinary meaning' of a claim term is its meaning to the ordinary
artisan after reading the entire patent." Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en bane). Consequently, we conclude that
under the broadest reasonable interpretation, in light of the Specification, the
term "independent" denotes two or more events that took place at separate
times. 4 We thus find Appellants' proffered definition of the two
independent events in the browser as two events, which take place in the
browser at different times to be reasonable, and to comport fairly with the
cited portions of the Specification as well as the cited dictionary definition
above. Reply Br. 2. Because Appellants have shown that they had
possession of the mashup application and the video file arriving in contact
4 https:// en.oxforddictionaries.com/ definition/ different
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Application 12/632,406
with the browser at different times, we are persuaded of error in the
Examiner's written description rejection of claim 21. Accordingly, we do
not sustain the written description rejection of claim 21, and well as claims
22--40 which recite commensurate limitations.
Obviousness Rejection
Appellants argue that the Examiner erred in finding that the
combination of Ganesan and Hayosh teaches or suggests "rendering, using
the browser and the mashup source file, a mashup application," as recited
independent claim 21." App. Br. 10. In particular, Appellants argue that
although the Examiner's citation to Ganesan refers to mashup applications,
the Examiner has not established that these alleged mashup applications are
rendered using the browser and the mashup source file as claimed. Id. ( citing
Ganesan ,r,r 88, 89). This argument is not persuasive. As correctly noted by
the Examiner, the cited portions of Ganesan disclose the disputed limitations
as browsers allowing code from Site A to access resources from site B. Ans.
8. That is, the combination of the browser along with source code obtained
from Site A are used to generate the mashup application, which is
subsequently used to access the resources in Site B.
Further, Appellants argue that the cited combination of references
does not teach or suggest "the video player component includes ... scripting
functions contained within a source file," as recited in independent claim 21.
App. Br. 12. According to Appellants, the Examiner's citation to Haserodt5
discusses the security concerns associated with using script, as opposed to
5 Appellants' incorrect reference to Haserodt appears to be directed to
textual portions in Ganesan.
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Appeal2018-000025
Application 12/632,406
the claimed scripting functions being part of a source code file or a video
player as claimed. Id. ( citing Ganesan ,r,r 85, 86). This argument is not
persuasive. As correctly noted by the Examiner, Ganesan's disclosure of a
programming code sent to the browser from a website teaches the scripting
functions (Javascript) being part of a source code. Ans. 10, Final Act. 5
( citing Ganesan ,r,r 85, 86).
Furthermore, Appellants argue that the combination of references
does not teach a "video player component [is] within the mashup
application," as recited in independent claim 21. App. Br. 13. In particular,
Appellants argue Haserodt6 does not teach the mashup application. Id.
(citing Hayosh ,r 34). According to Appellants, while the Examiner has
established that Haserodt 7 's ActionScript file teaches the intermediary
scripting class file, the Examiner has not established that the disclosed
intermediary scripting class file is a used by the video player to access the
scripting functions. Id. at 14. Appellants also argue that the Examiner's
reliance upon Ganesan to teach the scripting function is deficient because it
is based upon the proposed combination of non-analogous references that
lack an adequate rational underpinning to result in using the intermediary
scripting class file to access the scripting functions, as claimed. Id. at 14--16.
As correctly noted by the Examiner, these arguments are not
persuasive because they are tantamount to an individual attack against the
references. Ans. 10. One cannot show non-obviousness by attacking the
references individually where the rejections are based on combinations of
6 Appellants' incorrect reference to Haserodt appears to be directed to
textual portions in Hayosh.
7 Id.
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Application 12/632,406
references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see
also In re Keller, 642 F.2d 413,425 (CCPA 1981). In this case, the
Examiner relies upon Ganesan for its teaching of a browser allowing Site A
to use source code including JavaScript to access resources from Site B.
Final Act. 5-6 (citing Ganesan ,r,r 85, 88, 89). Further, the Examiner relies
upon Hayosh's disclosure of a video player using Adobe Flash including
ActionScript as an intermediary scripting class to play flash files. Id. at 7
(citing Hayosh ,r,r 30, 34). We agree with the Examiner that Ganesan and
Hayosh are analogous art because they pertain to the same field of endeavor,
namely using Flash player to play flash player files. Id. We further agree
with the Examiner that the proposed combination of the cited references
would predictably result in a browser using a source file ( e,g,JavaScript) to
render a mashup application in Site A including a video player component
(e.g. Flash player), which uses ActionScript as an intermediary Scripting
class file to access flash player files at Site B. Id. at 7-8.
We find the Examiner's proposed combination of the cited teachings
of Ganesan and Hayosh is no more than a simple arrangement of old
elements with each performing the same function it had been known to
perform, yielding no more than one would expect from such an arrangement.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). The ordinarily
skilled artisan, being "a person of ordinary creativity, not an automaton,"
would be able to fit the teachings of the cited references together like pieces
of a puzzle to predictably result in a browser using a source file ( e,g,
JavaScript) to render a mashup application in Site A including a video player
component (e.g. Flash player), which uses ActionScript as an intermediary
Scripting class file to access flash player files at Site B. Id. at 420-21.
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Application 12/632,406
Because Appellants have not demonstrated that the Examiner's proffered
combination would have been "uniquely challenging or difficult for one of
ordinary skill in the art," we agree with the Examiner that the proposed
modification would have been within the purview of the ordinarily skilled
artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we are
satisfied that, on the record before us, the Examiner has established by a
preponderance of the evidence that the combination of Ganesan and Hayosh
renders claim 21 unpatentable. Accordingly, we are not persuaded of error
in the Examiner's obviousness rejection of claim 21.
Regarding the rejection of claims 22--40, because Appellants have
either not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claim 21 above, those claims fall therewith. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
DECISION
For the above reasons, we reverse the Examiner's written description
rejection of claim 21--40. However, we affirm the Examiner's obviousness
rejection of claim 21--40.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision 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
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