Ex Parte OstroverDownload PDFPatent Trial and Appeal BoardNov 9, 201812950213 (P.T.A.B. Nov. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/950,213 11/19/2010 22440 7590 11/14/2018 GOTTLIEB RACKMAN & REISMAN PC 270 MADISON A VENUE 8THFLOOR NEW YORK, NY 10016-0601 FIRST NAMED INVENTOR Lewis S. Ostrover 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. 3053/092 7311 EXAMINER TORGRIMSON, TYLER J ART UNIT PAPER NUMBER 2165 NOTIFICATION DATE DELIVERY MODE 11/14/2018 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): patenteaction@grr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEWIS S. OS TROVER Appeal2018-003670 Application 12/950,213 1 Technology Center 2100 Before ERIC S. FRAHM, DENISE M. POTHIER, and JUSTIN BUSCH, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, Warner Brothers Home Entertainment Inc. is the real party in interest (Br. 2). Appeal2018-003670 Application 12/950,213 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § I34(a) from the Final Rejection of claims 1, 5, 6, 23-28, and 35--40. Claims 2--4, 7-22, and 29-34 have been canceled. We reverse. The Examiner rejected claims 1, 5, 6, 23-28, and 35--40 under 35 U.S.C. § I03(a) as being unpatentable over Mercer (US 7,136,874 B2; issued Nov. 14, 2006) and Swart (US 2003/0028890 Al; published Feb. 6, 2003) (Final Act. 6-16; Ans. 2-7). We have reviewed Appellant's arguments in the Brief (Br. 6-11 ), the Examiner's rejection (Final Act. 6-16), and the Examiner's response (Ans. 2-7) to Appellant's arguments. We agree with Appellant's argument that Swart, and thus the combination of Mercer and Swart, fails to teach or suggest a mediator adapted to reject a program as recited in all of the claims on appeal (see, e.g., independent claims 1, 24, 40). Claim 1 is illustrative, and is reprinted below with emphasis added to the disputed and dispositive portion of the claim: 1. A user device providing content to one or more users as one of an audio, audio/visual or text program, via a rendering system, said rendering system including a plurality of rendering devices, each rendering device being associated with a respective set of rendering device characteristics defining the presentation format in which content is presented to a user by each said rendering device, said user device comprising: a receiver receiving a program having a program format; a mediator connected to said receiver and said rendering system and being responsive to a user command to select at least one of said rendering devices of said rendering system, wherein said mediator is adapted to reject said program if 2 Appeal2018-003670 Application 12/950,213 said program is incompatible with the respective presentation format of said one of said rendering devices ; and an output receiving said program from said mediator, and providing said program to said one rendering device. The Examiner relies upon Swart (see Final Act. 7 ( citing Swart ,r,r 4 7, 80-83, Figs. 9a-9c); see also Ans. 6 (citing Swart, Figs. 9b, 9c, steps 811- 814, 819-822)) as teaching "wherein said mediator is adapted to reject said program if said program is incompatible," as recited in each of independent claims 1, 24, and 40 ( emphasis added). However, for the reasons that follow, we find no teaching or suggestion in Swart of any rejection of a program, as recited in independent claims 1, 24, and 40, and as similarly recited in dependent claims 5, 6, 23, 25-28, and 35-39. Swart teaches the opposite of what Appellant claims, namely keeping the information for further processing (e.g., reformatting to make the information compatible), not rejecting, discarding, or ignoring the information when it is found to be incompatible. This is evident from Figures 9b and 9c of Swart, which "show a flowchart describing programming content delivery" (Swart ,r 32). As shown in steps 811-814 of Figure 9b, as well as steps 819-822 of Figure 9c, programming content is analyzed to determine compatibility of the format and coding scheme (Swart ,r,r 80, 82). If the content is determined to meet the format requirements for delivery to the user, processing moves to routine 814. If the content does not meet the format criteria, the content stream and/or files are routed to the decoder and content formatter 252 by (routine 812) along with the required formatting and coding parameters. At routine 813, the decoder and content formatter 252 decodes the incoming data ... and its metadata. The decoder and content formatter 252 then reformats the content 3 Appeal2018-003670 Application 12/950,213 into the required formats and coding schemes for delivery to the user. Processing then moves to routine 823 for delivery .... Swart ,r 80 ( describing Fig. 9b ); see also Swart ,r 82 ( describing Fig. 9c similarly). In other words, when the content is incompatible, Swart teaches sending the content to content formatter 252 which then keeps the information and further processes the information, namely reformatting/recoding (see Swart, Figs. 9b, 9c, ,r,r 80, 82). This process differs from the process Appellant discloses in the Specification and claims, which specifically calls for ignoring, discarding, or rejecting incompatible programs/content (see Br. 4--5 (citing Fig. 3, step 312 (ignoring the content)); Fig. 5, step 518 ( discarding the content); see also Fig. 6, step 356 ("ignore/discard"); Spec. 13 (describing an embodiment where "incompatible content may be filtered out or rejected"); Spec. 26 ("[i]f there is no match then in one embodiment the content is discarded or ignored ( step 514 )"); Spec. 2 7 ("the content is discarded ( step 518) or ignored"); Spec. 28 ("[i]fthe content is not proper subject matter, then [sic] it is discarded or ignored in step 356")). Although the Specification also discloses alternative embodiments including transformations and conversions (Spec. 9, 27), these embodiments do not include "rejecting" the content. Rather, these alternative embodiments receive the content, but transform the content into a format compatible with the respective presentation format before storing or present the content to the user (Spec. 9, 26-27). Thus, embodiments that do not initially accept the content, but accept the content after it has been transformed ( or otherwise changed) into a format compatible with the respective presentation format are not within the scope of Appellant's claims. 4 Appeal2018-003670 Application 12/950,213 Thus, the key issue in the case before us is how to interpret "reject" as the term is used in claims 1, 24, and 40. During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted). We presume that claim terms have their ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) ("The ordinary and customary meaning 'is the meaning that the term would have to a person of ordinary skill in the art in question."' ( citation omitted)). The plain meaning of "reject" is "to discard as useless or unsatisfactory."2 This interpretation of "reject" used in claims 1, 24, and 40 is bolstered by Appellant's Specification, which describes "rejecting" as analogous to "ignoring/discarding" (see Fig. 3, step 312 (ignoring the content), Fig. 5, step 518 (discarding the content), Fig. 6, step 356 ("ignore/discard"); see also Spec. 13, 26, 27, 28). In this light, we do not agree with the Examiner (see Ans. 5-6), and the Examiner has not sufficiently articulated how or why one of ordinary skill in the art at the time of Appellant's invention would have understood, that the claim language does not exclude the process of Swart (Swart ,r,r 80, 82), which keeps incompatible information for further processing. Moreover, the Examiner's determination that "even if Swart did not provide 2 DICTIONARY.COM, https://www.dictionary.com/browse/reject (last visited Nov. 4, 2018) (defining "reject" as: "4. to discard as useless or unsatisfactory"). 5 Appeal2018-003670 Application 12/950,213 a teaching, suggestion, or motivation for this limitation ... the art is replete with examples that clearly do" (Ans. 6 citing three new references for support), does not cure Swart's (or Mercer's) failure to teach or suggest rejecting incompatible programming. We have not considered these references since they are not part of the rejection. "Where a reference is relied on to support a rejection, whether or not in a 'minor capacity,' there would appear to be no excuse for not positively including the reference in the statement of the rejection." In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970). Thus, we conclude the Examiner's interpretation that "the claims do not preclude action occurring after the rejection of content" (Ans. 6), and thus, the term "reject" can be interpreted as "keeping for further processing," is unreasonably broad in light of Appellant's Specification. As a result, we concur with Appellant's arguments (Br. 7-11) that the Examiner erred in finding that Swart, and thus the combination of Mercer and Swart, teaches or suggests "wherein said mediator is adapted to reject said program if said program is incompatible" as recited in independent claim 1, and as similarly recited in independent claims 243 and 40. 3 We note that claim 24 recites "wherein said mediator is adapted to reject said program if said program is incompatible [sic] said rendering devices: operating in said one of said operating modes" (Br. 13, Claims Appendix). Based on our review of claims 1 and 40 which contain similar limitations, we understand claim 24 to recite "wherein said mediator is adapted to reject said program if said program is incompatible with the respective representation format of said rendering device operating in said one of said operating modes" (claim 24 (emphasis added)). We consider this harmless error. However, Appellant and/or the Examiner should consider correcting this issue with claim 24 upon further prosecution or allowance of this application. 6 Appeal2018-003670 Application 12/950,213 Accordingly, we do not sustain the Examiner's obviousness rejection of claims 1, 5, 6, 23-28, and 35--40. CONCLUSION Appellant has persuaded us of error in the Examiner's obviousness rejection of claims 1, 5, 6, 23-28, and 35--40. DECISION The decision of the Examiner to reject claims 1, 5, 6, 23-28, and 35- 40 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation