Ex Parte Noreen et al

Patent Trial and Appeal BoardMar 18, 2014

10149341 (P.T.A.B. Mar. 18, 2014)

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. 10/149,341 06/08/2002 Gary Keith Noreen 088245-3331 5189 23524 7590 03/18/2014 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER GENACK, MATTHEW W ART UNIT PAPER NUMBER 2644 MAIL DATE DELIVERY MODE 03/18/2014 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 GARY KEITH NOREEN, STEPHEN P CROSBY, CARL A. KUKKONEN III, and DANIEL C. KUKKONEN ____________________ Appeal 2011-008081 Application 10/149,341 Technology Center 2600 ____________________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008081 Application 10/149,341 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 69-73, 75-82, and 84-94. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to interactive system and method for use with broadcast media. Claim 69, reproduced below, is illustrative of the claimed subject matter: 69. A method comprising: receiving information via at least one signal from a mobile unit including indicia from which a broadcast segment received at the mobile unit and for which a selection to receive information pertaining to the broadcast segment via the mobile unit can be identified and indicia from which at least one of a subscriber or the mobile unit can be identified, wherein the mobile unit automatically generates the information in response to a user selection; processing the information to identify the broadcast segment and the subscriber; and making information pertaining to the broadcast segment available to the subscriber via sending an e-mail to an e-mail account associated with the subscriber. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Giovannoli U.S. Patent No. 5,842,178 Nov. 24, 1998 Chen U.S. Patent No. 5,991,737 Nov. 23, 1999 Tso U.S. Patent No. 6,047,327 Apr. 4, 2000 Hsu U.S. Patent No. 6,295,058 B1 Sep.25, 2001 Appeal 2011-008081 Application 10/149,341 3 REJECTIONS The Examiner made the following rejections: Claims 94-98 are rejected under 35 U.S.C. § 112, first paragraph, as based on a disclosure which is not enabling. It is unclear what the phrase “tangible computer readable medium” in the Specification refers to. See In re Mayhew, 527 F.2d 1229 (CCPA 1976). Claims 69-71, 76, 78-80, 85, 87-89, and 94-96 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen in view of Hsu. Claims 72, 73, 77, 81, 82, 86, 90, and 97 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen in view of Hsu, further in view of Tso. Claims 75, 84, 91, 93, and 98 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen in view of Hsu, further in view of Giovannoli. Claim 92 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen in view of Hsu, further in view of Giovannoli, further in view of Tso. ANALYSIS 35 U.S.C. §112, First Paragraph, Enablement The PTO bears the initial burden when rejecting claims for lack of enablement. When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient Appeal 2011-008081 Application 10/149,341 4 reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The Examiner maintains that “[i]t is unclear what the phrase ‘tangible computer readable medium’ in the specification refers to.” (Ans.3). The Examiner further maintains: the specification does not provide any examples of tangible computer readable media that could be used with the invention. Indeed, the specification lacks any instance of the words “media”, “medium”, and “tangible”, and also lacks the phrase “computer-readable”. Nowhere does the specification describe a tangible computer readable medium that stores instructions for execution a particular method. Since 35 U.S.C. 112, first paragraph, is intended to prevent one from claiming subject manner that is not disclosed in the specification, Appellant’s inclusion of “tangible computer readable medium” in Claims 94-98 is impermissible. (Ans. 9-10). The Examiner has made a rejection based upon a lack of enablement, but the Examiner has not made any finding that undue experimentation would be required to embody the claimed invention on a computer readable medium. Therefore, we do not sustain the lack of enablement rejection. We make no findings regarding a lack of written description support. 35 U.S.C. §103 Appellants contend that the Hsu reference is directed towards a system that a user can use to create a greeting card or e-mail message. (App. Br. 14-16). Appellants contend that the Hsu reference: Appeal 2011-008081 Application 10/149,341 5 further discloses that the television receiver can receive television broadcasts through an antenna, from a cable television provider, or from a satellite television provider. Thus, Hsu is directed toward a television receiver that also allows a user to create and send/receive a greeting card or e- mail message. Conversely, Claim 69 recites “making information pertaining to the broadcast segment available to the subscriber via sending an e-mail to an e-mail account associated with the subscriber.” (App. Br. 16) (emphasis omitted). Appellants conclude that “[n]owhere does Hsu disclose such ‘information pertaining to a broadcast’ as claimed.” (App. Br. 17). The Examiner responds: On the contrary, Hsu et al. states “A user composes a multimedia greeting card or multimedia email message by selecting a design template, which has previously been created and stored on the system. The design template contains one or more slots, into which the user may simply drag and drop any desired text, video, or audio data. The user may also edit and add enhancements to the multimedia greeting card or email message. If desired, the user may electronically mail the resulting product to another user.” . . . (Abstract). Therefore, a given user may receive (from another user), an email containing any desired text, video, or audio information. This information may pertain to a broadcast: “Attached to processor 410 is an analog input 490 and a digital input 440. Input 490 may receive television broadcast information from, for example, a television antenna or a cable television system.” . . . (Column 5 Lines 5- 8). Information pertaining to a broadcast may be received by a first user, and then emailed to a second user. The second user therefore receives information pertaining to a broadcast via an email. (Ans. 10) (emphasis omitted). This is the totality of the Examiner’s response with respect to the prior art rejection of independent claim 69. We find the Examiner’s position to be strained. The Examiner further maintains Appeal 2011-008081 Application 10/149,341 6 that “[i]nformation pertaining to a broadcast may be received by a first user, and then emailed to a second user. The second user therefore receives information pertaining to a broadcast via an email.” Id. We find that this teaching does not address the claimed limitation concerning “making information pertaining to the broadcast segment available to the subscriber via sending an e-mail to an e-mail account associated with the subscriber.” We find the Examiner is picking and choosing teachings to reconstruct Appellants’ claimed invention. Furthermore, the Examiner speculates, from the mere fact that broadcast information is received, as to the content of the information sent to another user via e-mail without any suggestion in the prior art. “The review authorized by 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). We decline and will not resort to speculation, unfounded assumptions, or hindsight reconstruction to make up for this deficiency in the Examiner’s rejection. From our review of the two prior art references relied upon by the Examiner, the use of e-mail appears only to be used in the negotiating process, but not in the providing the content. Therefore, we cannot sustain the Examiner’s rejection of independent claim 69 and its associated and dependent claims. Independent claims 79, 88, and 94, although of differing scope, recite similar claimed elements and Appellants submit that the combination of Chen and Hsu fails to teach, suggest, or describe such elements. (App. Br. 14). Therefore, we cannot sustain the Examiner’s rejection of independent claims 79, 88, and 94 and their associated dependent claims. Appeal 2011-008081 Application 10/149,341 7 Dependent Claims With respect to the dependent claims rejected over the additional references to Tso and Giovannoli, we do not address these arguments (App. Br. 17-24) since we have reversed based upon our review of the independent claims and the Examiner has not identified how the teachings of Tso and Giovannoli remedy the noted deficiency. CONCLUSIONS OF LAW The Examiner erred in rejecting claims 94-98 under 35 U.S.C. § 112, first paragraph, for a lack of enablement. The Examiner erred in rejecting claims 69-73, 75-82, and 84-98 based upon obviousness. DECISION For the above reasons, the Examiner’s rejections of claims 94-98 under 35 U.S.C. § 112, first paragraph and claims 69-73, 75-82, and 84-98 under 35 U.S.C. § 103(a) are reversed. REVERSED msc