Ex Parte Lipinski et al

Patent Trial and Appeal BoardApr 22, 2016

11742581 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111742,581 0413012007 22879 7590 04/26/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Gregory J. Lipinski 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. 82223960 5088 EXAMINER SONG,HEEK ART UNIT PAPER NUMBER 2497 NOTIFICATION DATE DELIVERY MODE 04/26/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY J. LIPINSKI and PHILIP M. WALKER Appeal2014-003831 Application 11/742,581 Technology Center 2400 Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and JOHN KENNY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner finally rejecting claims 1-10 and 12-22, all the pending claims in the present application. Claim 11 is canceled. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. The present invention relates generally to searching protected and non-protected digital content and providing a uniform view of search results. See Abstract. Appeal2014-003831 Application 11/742,581 Claim 1 is illustrative: 1. A system, comprising: a plurality of electronic devices, the electronic devices having protected digital content and non-protected digital content; and a server coupled to the plurality of electronic device, wherein the server selectively searches the protected digital content and the non-protected digital content and provides a uniform view of search results. Appellants appeal the following rejections: RI. Claims 1, 2, 4, 6, 10, 12, 17, and 22 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Du (US 2011/0047079 Al, Feb. 24, 2011) and Interlandi (US 2009/0044253 Al, Feb. 12, 2009) (Final Act. 3); R2. Claims 3, 5, 13, 14, 18, and 19 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Du, Interlandi, and Upendran (US 2007/0156719 Al, July 5, 2007) (Final Act. 5); and R3. Claims 7-9, 15, 16, 20, and 21 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Du; Interlandi; and Peterka (US 2006/0242069 Al, Oct. 26, 2006) (Final Act. 7). We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, and the Examiner's response to the Appellants' arguments. We concur with Appellants' conclusion that the Examiner erred in finding that the combination of cited references teaches or suggests providing a uniform view of search results, as set forth in each independent claim. As identified by Appellant, "no disclosure is made [in Interlandi or Du] of providing a uniform view of search results including both the protected and unprotected content" (App. Br. 10-11). For example, 2 Appeal2014-003831 Application 11/742,581 although the Examiner finds in Interlandi "[t]he catalogued playlists from the protected and non-protected content based on the metadata presents to the user [a] view of both protected and non-protected content of what the user is looking for" ( Ans.15) and Du teaches "the search results are for protected content" (id.), the Examiner fails to address or direct our attention to any teaching of a uniform view of search results. The ordinary and usual meaning of "uniform" is having always the same form, manner, or degree. Merriam-Webster's Collegiate Dictionary, p.1290 (9th Edition 1990). This is consistent with Appellants' Specification which states "the search results have a uniform appearance regardless of whether the digital content is protected or non-protected" (see i-f 16; see also i-f 26). Thus, we find that the claims require providing the same view for any search result, albeit protected content or non-protected content. Here, we find that the Examiner's reasoning mainly focuses on the prior art's ability to search/index protected and non-protected content (see Ans. 14--15). We cannot say, nor has the Examiner explained, how this necessarily teaches the specific uniform view of search results. Nor will we speculate in that regard here in the first instance on appeal. Regarding the Examiner's reference to Lambert (US Patent 8,010,800 B2) (see Ans. 14), it is unclear to us why this particular prior art is being introduced here because the Examiner's rejection is underÂ§ 103(a) as being unpatentable over Du and Interlandi (see Final Act 3). 1 Presumably, the Examiner is citing Lambert to show that it is well known to display results in a uniform manner. The cited portions of Lambert, however, at best 1 Appellants have not challenged the introduction of Lambert with the Examiner's Answer. 37 C.F.R. Â§ 41.40(a). 3 Appeal2014-003831 Application 11/742,581 disclose a unified search method that allows end users to locate encrypted content alongside unencrypted content (see Abstract; col. 2, 1. 45 to col. 3, 1. 58), as opposed to a uniform view of results. The Examiner has not found that any of the other references of record teach a uniform view of search results. We are, therefore, constrained by the record before us to find that the Examiner erred in rejecting claim 1, and claims 2-10 and 12-22 for similar reasons. Since we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. Accordingly, we will not sustain the Examiner's obviousness rejection of claims 1-10 and 12-22. DECISION2 The decision of the Examiner to reject claims 1-10 and 12-22 is reversed. REVERSED 2 In the event of further prosecution, we leave it to the Examiner to consider if the computer-readable medium claim, claim 17, should also be rejected under 35 U.S.C. Â§ 101. We are compelled to note that the ordinary and customary meaning of "computer readable medium" to a person of ordinary skill in the art is broad enough to encompass both non-transitory and transitory media. Signals are not patentable eligible subject matter under Â§ 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also MPEP Â§ 2106(!) (8th ed. Rev. 9 Aug. 2012) and Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). 4