Ex Parte NAKATA et al

Patent Trial and Appeal BoardApr 27, 2016

13005087 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/005,087 01112/2011 27562 7590 04/29/2016 NIXON & V ANDERHYE, P,C 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR TetsuyaNAKATA 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. LB-723-2980 1807 EXAMINER HU, JENSEN ART UNIT PAPER NUMBER 2169 NOTIFICATION DATE DELIVERY MODE 04/29/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TETSUY A NAKATA and HIROAKI ADACHI Appeal2014-006729 Application 13/005,087 Technology Center 2100 Before JOHN A. EV ANS, TERRENCE W. MCMILLIN, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-14. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellants, the real party in interest is Nintendo Co., Ltd. App. Br. 3. Appeal2014-006729 Application 13/005,087 INVENTION Appellants' invention relates to efficiently preventing output of inappropriate contents to a recipient. See Spec 1. Claim 1 is illustrative and reads as follows: 1. An information processing apparatus which is capable of transmitting and receiving data which includes a content created by a user and which is assigned user information indicating the user that has created the content, the information processing apparatus comprising: a creation unit for, when a content is created, creating a piece of the data including the content, such that a piece of the user information is assigned to the piece of the data; an identification information registration unit for registering, as identification information, at least a piece of the user information which is assigned to a piece of the data including a specific content; a reception unit for receiving the data from another information processing apparatus; a determination unit for determining whether or not the user information which is assigned to the data received by the reception unit at least agrees with the piece of the user information registered as the identification information; and an output unit for not outputting a content included in a piece of the data which is assigned a piece of the user information which is determined to at least agree by the determination unit, and outputting a content included in a piece of the data which is assigned a piece of the user information which is determined not to at least agree by the determination unit, wherein the creation unit creates a piece of the data which is assigned a piece of the user information indicating a user that has newly created a content and which includes the content, and the identification information registration unit registers, as the identification information, a piece of the user information indicating a user that has newly created the specific content. 2 Appeal2014-006729 Application 13/005,087 REJECTIONS Claims 1-3 and 6-14 stand rejected under 35 U.S.C. Â§ 102(e) as anticipated by Ellis (US 2010/0115559 Al; published May 6, 2010). Claims 4 and 5 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Ellis and Pratley et al. (US 2004/0267871 Al; published Dec. 30, 2004). ANALYSIS We have reviewed the rejections of claims 1-14 and the evidence of record in light of Appellants' arguments that the Examiner erred. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We have considered Appellants' arguments, but do not find them persuasive of error. We provide the following explanation for emphasis. Claims 1-3 and 6--14-35U.S.C.Â§102(e) In rejecting claim 1, the Examiner relied on Ellis as teaching all of the claimed limitations. Final Act. 3--4 (citing Ellis Fig. 8, i-fi-f 124--26, 128, 168-70); Ans. 10-11 (citing Ellis Fig. 8, i-fi-f 126, 128). Appellants contend the cited portions of Ellis do not disclose the limitations "the creation unit creates a piece of the data which is assigned a piece of the user information indicating a user that has newly created a 3 Appeal2014-006729 Application 13/005,087 content and which includes the content," and "the identification information registration unit registers, as the identification information, a piece of the user information indicating a user that has newly created the specific content." App. Br. 13. In particular, Appellants argue that Ellis does not teach explicitly that the sender of a message is also the creator of the message. Id. at 15. Appellants' arguments are not persuasive because Appellants rely on functional language to distinguish claim 1 from Ellis. Appellants argue that, because the interactive television application in Ellis indicates that a user has newly sent content, rather than newly created it, Ellis does not teach the disputed limitations. See App. Br. 15. However, it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Appellants have not argued that the prior art apparatus is not capable of performing the claimed function. Nor have Appellants identified, nor do we find, any description of how the recited function may be achieved other than by the claimed structure, which is met by the structure disclosed in the prior art. For example, Figure 2 of Appellants' Specification depicts an information processing section 31, which Appellants identify as the claimed "creation unit" and the claimed "identification information registration unit." App. Br. 6-7. Figure 7B and paragraphs 95 and 113-14, also relied on by Appellants (id.) as supporting the disputed limitations, describe data. As the Examiner found, in Ellis, a television newsgroup messaging set-top box application "creates a piece of the data which is assigned a piece of the user information" and "registers, as the identification information, a piece of the 4 Appeal2014-006729 Application 13/005,087 user information." Final Act. 4 (citing Ellis iii! 126,128, Fig. 8). Thus, even if the data in Ellis indicates that a user has newly sent content, rather than newly created it, this difference is not sufficient to establish error in the Examiner's anticipation rejection of claim 1. Accordingly, we sustain the 35 U.S.C. Â§ 102(e) rejection of independent claim 1, as well as the 35 U.S.C. Â§ 102(e) rejection of claims 12-14, which Appellants argue are patentable for similar reasons. App. Br. 17. We also sustain the 35 U.S.C. Â§ 102(e) rejection of dependent claims 2 and 6-11, for which Appellants make no arguments other than those for claim 1, from which those claims depend. Id. We also sustain the 35 U.S.C. Â§ 102(e) rejection of dependent claim 3, not argued separately. Claims 4 and 5 In rejecting claim 4, which depends from claim 1, the Examiner relied on the combination of Ellis and Pratley to meet the recited limitations. Final Act. 8-9 (citing Pratley iii! 2---6, 38, 67, 68); Ans. 11-12 (citing Pratley iii! 2- 6, 67, 168). The Examiner concluded that it would have been obvious to an artisan of ordinary skill to modify the method of filtering messages for inappropriate content, disclosed in Ellis, with the method of attributing changes to a document by a respective user, disclosed in Pratley, because doing so would allow users viewing the updated content to track aspects of its revision history. Final Act. 8-9; Ans. 11-12. Appellants contend that Pratley does not disclose the limitations "when the content is changed, the creation unit assigns the data a piece of the user information indicating a user that has changed the content" and "the identification information registration unit registers, as the identification information, a piece of the user information indicating a user that has 5 Appeal2014-006729 Application 13/005,087 changed the specific content." App. Br. 18. Appellants argue that, because "[t]here is no collaborated editing going on in the news group message forum of Ellis," one of ordinary skill in the art would not have looked to Pratley to modify Ellis by creating and registering the association between the user's ID and newly changed content. Id. at 19. Appellants' arguments are not persuasive of error. The Examiner has articulated reasons with some rational underpinning, sufficient to justify the combination. See Ans. 11-12. Specifically, the Examiner explained that Ellis teaches editing of message content by a user, which "is readily modified by the teachings of Pratley to include an indication of the user editing message content in order to provide other viewing users a detailed revision history of a message." Ans. 11-12 (citing Ellis i-f 168). Appellants present no persuasive explanation or evidence to establish that "collaborated editing" is a prerequisite for one of ordinary skill in the art to have wanted to provide the revision history of edited messages. Accordingly, we sustain the 35 U.S.C. Â§ 103(a) rejection of claim 4, as well as the 35 U.S.C. Â§ 103(a) rejection of claim 5, not argued separately. Id. at 18-19. DECISION The decision of the Examiner to reject claims 1-14 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv)(2010). AFFIRMED 6