Ex Parte Kortum et al

Patent Trial and Appeal Board

Apr 25, 2016

11346616 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111346,616 0210212006
84326 7590 04/25/2016
AT & T LEGAL DEPARTMENT-Toler
ATTN: PA TENT DOCKETING
ROOM2A-207
ONEAT&TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Philip T. Kortum
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.
LB1164 1624
EXAMINER
CHACKO, JOE
ART UNIT PAPER NUMBER
2456
MAILDATE DELIVERY MODE
04/25/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP T. KORTUM, MARC A. SULLIVAN,
JAMES L. CANSLER JR.,
and ALYSSA LENORAH NOLL WILLIAMS
Appeal2014-003256
Application 11/346,616
Technology Center 2400
Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing ("Request") under 37 C.F.R.
§ 41.52 seeking reconsideration of the PTAB's decision in this matter dated
February 8, 2016 ("Decision"). We have reviewed and considered
Appellants' Request. We grant the Request only to the extent that
Appellants' arguments in the Request were considered. The Request is
denied with respect to making any changes in the Decision.
Appeal2014-003256
Application 11/346,616
ANALYSIS
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board. 37
C.F.R. § 41.52(a)(l). The Appellants' Request identifies the following point
for reconsideration:
Appellant respectfully submits that the Board has
misapprehended which actions are performed by each party in
the claims. In particular, the Board is confusing actions
performed by a content recipient in the Walker reference (Share-
It ! -A Rights-Managed Network of Peer-to-Peer Set-Top Boxes
- System Architecture, hereinafter "Walker") with actions
performed by a content owner in the claims.
Request 1.
Upon consideration of Appellants' argument in the Request, we
conclude the Board did not misapprehend which actions are performed by
any party in the claims. Rather, Appellants' argument in the Request is not
commensurate with the scope of the claims and fails to persuade us of any
reason to change the Decision. In particular, the claims fail to recite or
contain limitations relating to the content recipient or content owner as
argued by the Appellants.
In the Request, Appellants argue:
as argued in the Appeal Brief, the cited portion of Walker fails to
disclose to "send a message via the wide area network connector
to a share partner . . . wherein the message indicates a desire of
the user to share content corresponding to one or more selected
identifiers in the first list with the share partner; [and] receive an
acceptance response to the message," as in claim 1.
Request 4. As set forth in the Decision, in the Reply Brief, Appellants indicate
their agreement with the interpretation of Walker presented on page 3 of the
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Appeal2014-003256
Application 11/346,616
Examiner's Answer. Decision 4. Appellants cite and rely on this same
interpretation of Walker in the Request. Request 1-2. This passage from the
Examiner's Answer states:
Walker discloses that users may publish content, which may be
of interest to other users or to specific Share It! User groups. (see
page 3, paragraph 2) Further, Walker discloses users can easily
distribute content that they have created such as sending images
or videos to a friend that can be easily uploaded onto the Share
It! box and sent to friends. (see page 3, "Creating, editing and
publishing by consumers")
Further, Walker discloses in Figure 6 that user first sends
a query that is propagated to Box B and then receives a message
back from Box B that shows the matching content and rights
metadata. Then Figure 6 discloses that the user sends a message
that a user selects content to acquire. Further, Figure 6, shows
that after a user selects content there is a message that is
transmitted by the share partner which is equivalent to the
acceptance message.
Decision 4--5 (citing Ans. 3)(emphases added). As discussed in this passage,
Walker teaches a user sends a message to a share partner which message
indicates a desire of the user to share content, i.e., "the user sends a message
that a user selects content to acquire." Id. at 4. We note in this regard the
term "share" as used in the disputed limitations of claim 1 (and the other
independent claims) is not limited to a content owner indicating a desire to
share content with a content recipient but, in its broadest reasonable
interpretation, also covers a content recipient indicating in a message to the
content owner a desire to share content made available through the system.
This passage also states Walker teaches the user receives an acceptance
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Appeal2014-003256
Application 11/346,616
response to the message, i.e., "there is a message that is transmitted by the
share partner which is equivalent to the acceptance message." Id. at 4--5.
For the aforementioned reasons, Appellants' contentions have not
persuaded us of error in our Decision on Appeal dated February 8, 2016.
Thus, we discern no reason to change our Decision.
CONCLUSION
We have considered the argument raised by Appellants in the
Request, but Appellants have not persuaded us that we misapprehended or
overlooked any points in rendering our Decision. Having reviewed and
considered Appellants' arguments, we have granted Appellants' Request to
the extent we have reconsidered our Decision, but we deny Appellants'
Request to make any changes in the Decision.
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).
REHEARING DENIED
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