Ex Parte Ostrover

Patent Trial and Appeal Board

Nov 9, 2018

12950213 (P.T.A.B. Nov. 9, 2018)

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