Ex Parte McCormack et al

Patent Trial and Appeal BoardMar 9, 2016

12494594 (P.T.A.B. Mar. 9, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/494,594 06/30/2009 Tony McCormack 920673-109951 1370 131442 7590 03/09/2016 RPX Clearinghouse, LLC One Market Plaza, Steuart Tower Suite 800 San Francisco, CA 94105 EXAMINER CHEN, CAI Y ART UNIT PAPER NUMBER 2425 MAIL DATE DELIVERY MODE 03/09/2016 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 TONY MCCORMACK, ALAN DISKIN and NEIL O’CONNOR ____________ Appeal 2014-003102 Application 12/494,594 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR and TERRENCE W. MCMILLIN, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1 – 16, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention The claimed invention on appeal “relates to analysis of packet-based video content” (Spec. ¶ 1). Appeal 2014-003102 Application 12/494,594 2 Representative Claim 1. A method of operating a system for receiving and decoding packet-based video signals, comprising the steps of: (a) receiving a packet-based data stream encoding a video signal; (b) maintaining a set of rules, each rule specifying a content- matching condition and a corresponding action to be taken; (c) providing an interface for a user of the receiving and decoding system to edit said set of rules; (d) analysing the content of the packet-based data stream to determine whether the content thereof matches a condition specified in one of said rules; (e) upon determination of a matching condition in said analysing step, implementing a corresponding action specified in said one of said rules, said action being effective to control a component which is under the control of said receiving and decoding system, and wherein said action comprises adding to the packet-based data stream, at least one of a client-side passive and active element. (Emphasis added regarding contested limitation (e)). Rejection Claims 1–16 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Menard et al. (US 6,061,056; issued May 9, 2000) and Kikinis (US 5,929,849; issued July 27, 1999). Grouping of Claims Based on Appellants’ arguments, we decide the appeal of all claims Appeal 2014-003102 Application 12/494,594 3 on the basis of representative claim 1.1 See 37 C.F.R. § 41.37(c)(1)(iv). Contentions Regarding the obviousness rejection of claim 1, Appellants contest limitation L1. (Appeal Br. 9). Appellants particularly contend, inter alia: From the above passage of Kikinis, it is clear that the data stream received by the receiving and display apparatus already comprises the frame data and the associated URL. The display circuitry displays the display data, e.g., in the embodiment of the car advertisement the data representative of a BMW car is displayed, whilst the control circuitry accesses the Internet web site indicated by the URL. See Kikinis, column 3, lines 49 to 53. Column 3, lines 54 to 55 of Kikinis state "In this receiving and display apparatus the URL is associated with a specific entity image in the display". In the context of both the passages prior to this statement and the subsequent passages, it is clear that this statement simply means that the data received by the receiving and display apparatus comprises an association between the URL and an entity of the image data. There is nothing in Kikinis to suggest that this association is performed at the receiving and display apparatus. Indeed, any such interpretation is entirely contrary to the teaching of Kikinis which explicitly states that the receiving and processing circuitry receives a data stream having image frame data and an Internet Universal resource Locator (URL). See Kikinis column 3, lines 44 to 47. The Examiner finds the contested limitation is taught or suggested by the combination of Menard and Kikinis, and further explains: … the examiner is merely relying on the principle operation of Kikinis of performing to add the URL in the video packet data stream 1 The claims included in Appellants’ Claims Appendix do not reflect the claims as amended prior to the filing of the Notice of Appeal. Specifically, claims 15 and 16 in the Claims Appendix do not include the amendment entered concurrently with the RCE, filed on May 22, 2012, that includes the correct version of claims 1–16 on appeal. Appeal 2014-003102 Application 12/494,594 4 to be applied in the Menard's computer receiver system, mainly the teaching of the Kikinis would be included in the Menard receiver system after the video data stream [is] being received and detected as illustrate[d] in Fig. 2. (Ans. 11, emphasis added). ISSUE Issue: Under § 103, did the Examiner err by finding the cited prior art would have taught or suggested contested limitation: (e) upon determination of a matching condition in said analysing step, implementing a corresponding action specified in said one of said rules, said action being effective to control a component which is under the control of said receiving and decoding system, and wherein said action comprises adding to the packet-based data stream, at least one of a client-side passive and active element[,] within the meaning of representative claim 1? (Emphasis added). ANALYSIS We have considered all of Appellants’ arguments and any evidence presented. We disagree with Appellants’ arguments, 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, and (2) the reasons and rebuttals set forth in the Answer in response to Appellants’ arguments. (Ans. 10–12.) However, we highlight and address specific findings and arguments for emphasis in our analysis below. At the outset, we note Appellants’ argument focuses on the Kikinis reference, and not on the combination of Menard and Kikinis that is the basis for the obviousness rejection. As the Examiner correctly points out (Ans. 11), one cannot show nonobviousness by attacking the references individually where the rejection is based on the combination of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2014-003102 Application 12/494,594 5 Here, Appellants attack Kikinis in isolation. (App. Br. 8–10). Further, Appellants include in their argument an italicized passage that misreads claim 1: “A system for receiving and decoding packet-based video signals implementing an action comprising adding to the packet-based data stream at least one of a client-side passive and active element.” (App. Br. 8, emphasis added). However, claim 1 is directed to a “method of operating a system” and not an apparatus for performing functions. Although the italicized passage (id.) mischaracterizes the action of “adding to the packet-based data stream, at least one of a client-side passive and active element” as being performed by the noted system, method claim 1 does not specify who or what performs the contested “wherein” clause “action” recited in step (e). Appellants urge (App. Br. 9): From the above passage of Kikinis [col. 3, lines 40–49] it is clear that the data stream received by the receiving and display apparatus already comprises the frame data and the associated URL” and “[t]here is nothing in Kikinis to suggest that this association is performed at the receiving and display apparatus.” (App. Br. 9). But claim 1 is silent regarding the contested features (i.e., “this association is performed at the receiving and display apparatus” – id.). We decline Appellants’ invitation to read limitations from the Specification into the claims.2 2 Our reviewing court guides: “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments . . . . [C]laims may Appeal 2014-003102 Application 12/494,594 6 Although the contested “action” portion of step (e) recites: “wherein said action comprises adding to the packet-based data stream at least one of a client-side passive and active element,” claim 1 does not specify or otherwise limit where the action is to be implemented (e.g., client or server), even assuming the recited predicate condition (“upon determination of a matching condition”) is satisfied within the scope of method claim 1. Accordingly, we sustain the Examiner’s obviousness rejection of representative claim 1. Independent claims 15 and 16 are not separately argued. Therefore, the remaining claims 2–16 fall with representative claim 1. See “Grouping of Claims” supra. Reply Brief It is noted that Appellants offer additional arguments in the Reply Brief relating to combinability of the Menard and Kikinis references that were not raised in the Appeal Brief. (Reply 4–6). However, pursuant to 37 C.F.R. § 41.41(b)(2), “Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). A basic canon of claim construction is that one may not read a limitation into a claim from the written description. Renishaw plc v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Appeal 2014-003102 Application 12/494,594 7 examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” No good cause having been shown, we decline to consider the noted additional arguments. DECISION We affirm the Examiner’s rejection of claims 1–16 under §103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED