Ex Parte Shintani et al

Patent Trial and Appeal Board

Nov 30, 2016

13034093 (P.T.A.B. Nov. 30, 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.
13/034,093 02/24/2011 Peter Shintani 201003695.01 1124
36738 7590 12/02/2016
ROrTTT7 fr ASSOPTATRS
EXAMINER
750 B STREET WINTER, JOHN M
SUITE 3120
SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
Noelle@rogitz.com
eofficeaction @ appcoll.com
John@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SHINTANI and LUDOVIC ETIENNE DOUILLET
Appeal 2015-0022201
Application 13/034,0932
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 1—9. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
July 9, 2014) and Reply Brief (“Reply Br.,” filed Nov. 13, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed May 7, 2014) and
Answer (“Ans.,” mailed Nov. 12, 2014).
2 According to Appellants, the real party in interest is Sony Corp. (Appeal
Br. 4).
Appeal 2015-002220
Application 13/034,093
Introduction
Appellants’ disclosure relates to “to activating a licensable component
using an aggregating device in a home network.” (Spec. 1,11. 7—8).
Claim 1, reproduced below, is the sole independent claim on appeal
and is illustrative of the subject matter on appeal:
1. Aggregation device for a system comprising the
aggregation device and at least one other audio video
apparatus communicating with the aggregation device,
the aggregation device comprising:
processor;
computer readable storage medium bearing
instructions executable by the processor to configure the
processor by executing the instructions to:
determine that at least one licensable
component of the audio video apparatus requires
activation; and
responsive to the determination that
the licensable component requires activation,
communicate to a server using a network that a license
event has occurred.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the
following rejections:
I. Claims 1—9 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject
matter. (Ans. 2).
2
Appeal 2015-002220
Application 13/034,093
II. Claims 1—6, 8 and 9 stand rejected under pre-AIA 35
U.S.C. § 102(e) as being anticipated by Houng (US
2011/0166968 Al, pub. July 7, 2011). (Final Act. 6).
III. Claim 7 stands rejected under pre-AIA 35 U.S.C.
§ 102(e) as being unpatentable over Houng and Official
Notice. (Final Act. 11).3
ANALYSIS
Rejection I (Unpatentable Subject Matter)
Claims 1—9
The Examiner determines that claims 1—9 are directed to an abstract
idea of “activating a device” and that additional claim limitations do not
provide meaningful limitations to transform the abstract idea into a patent
eligible application (Ans. 2).
We are persuaded by Appellants’ argument that the claims are not
directed to an abstract idea such as an economic activity or a method of
organizing human behavior. See Reply Br. 2—7 (citing Alice Corp. Pty. Ltd.
v. CLSBankInt’l, 573 U.S.__ (2014); Buysafe, Inc. v. Google, Inc., No.
2013-1575 (Fed. Cir. Sept. 3, 2014)). While the Court in Alice made a direct
finding as to what the claims were directed to, we find that this case’s claims
themselves and the Specification provide enough information to inform one
as to what they are directed to. We determine that the claims are directed to
a method of validating a device over a network that is “designed to achieve
an improved technological result in conventional industry practice,” whether
3 A rejection under 35 U.S.C. § 112, paragraph two, and an older version of
the rejection under 35 U.S.C. § 101 have been withdrawn.
3
Appeal 2015-002220
Application 13/034,093
or not the claimed invention is new or nonobvious over the prior art of
record. See Mcro, Inc. v. Bandai Namco Games America, No. 2015-1080
(Fed. Cir. Sept. 13, 2016). Thus, we do not sustain the Examiner’s rejection
under § 101 of claims 1—9.
Rejection II (Anticipation)
Dependent claim 3
We are persuaded by Appellants’ argument that paragraphs 69 and 70
of Houng fail to disclose “data format,” as recited in dependent claim 3, i.e.,
“determine that at least one licensable component of the audio video
apparatus requires activation by inference based on a format of data received
from the audio video apparatus” (Appeal Br. 4). Appellants assert that
Houng only provides a code or key such as a serial number of the display
device (id.). The Examiner relies on the registration code in paragraph 69 of
Houng (Ans. 5).
Appellants assert that the Specification (p. 8) distinguishes between
serial numbers and data formats (Reply Br. 8). The Specification states that
the request identifies the component with a serial number regardless of how
the request is made (Spec. 8,1. 10). We are persuaded by Appellants that the
Specification distinguishes between a request for activation and the serial
number that identifies the unit being activated, and that it would be
inconsistent with the Specification to rely on a serial number as both a
unique identifier and as a data format for requesting activation. As such, we
agree with Appellants that Houng’s registration code, which is a unique
identifier of the display device, does not meet the limitation “determine that
at least one licensable component of the audio video apparatus requires
activation by inference based on a format of data received from the audio
4
Appeal 2015-002220
Application 13/034,093
video apparatus.” Therefore, we do not sustain the Examiner’s rejection
under § 102(e) of claim 3.
Dependent claim 6
We are unpersuaded by Appellants’ argument that paragraphs 50 and
51 of Houng fail to disclose that codes are provided immediately upon
establishing a network connection, as recited in dependent claim 6, i.e.,
“wherein the processor of the device is configured by the instructions to
inform the server of the license event immediately upon establishing a
network connection with the network” (Appeal Br. 5). Appellants assert that
the mere capability is not enough to satisfy the claim requirement which
requires more than an intended use (Reply Br. 9). Whether or not there is a
difference between “configured to” and a “capable of,” as argued, we agree
with the Examiner that the limitation is amply met by paragraphs 50 and 51
of Houng, which discloses that the activation process includes a
notification. Therefore, we sustain the Examiner’s rejection under § 102(e)
of claim 6.
Dependent claim 8
Appellants argue that paragraphs 69 and 72 of Houng fail to disclose
identification of an aggregation device, as recited in dependent claim 8, i.e.,
“wherein the processor of the aggregation device is configured by the
instructions to communicate to the server using the network that the license
event has occurred along with an identification of the aggregation device
only.” (Appeal Br. 5). The Examiner states that Houng is “silent in regard to
what other information is transmitted” but reasons that the “Houng’s
teaching could be implemented by sending a serial number only.” (Ans. 7).
5
Appeal 2015-002220
Application 13/034,093
Appellants assert that the mere capability is not enough to satisfy the claim
requirement which requires more than an intended use (Reply Br. 10).
We find that although paragraphs 69 and 72 of Houng describe
notification sent to the user, this portion of Houng does not adequately
describe notification sent “to the server,” as recited. Therefore, we do not
sustain the Examiner’s rejection under § 102(e) of claim 8.
Independent claim 1 and dependent claims 2, 4, 5, and 9
Appellants do not contest the Examiner’s rejection under § 102(e) of
claims 1, 2, 4, 5, and 9. As such, the arguments are waived. 37 C.F.R.
§ 41.37(c)(l)(iv). We, therefore, sustain the Examiner’s rejection under
§ 102(e) of claims 1, 2, 4, 5, and 9.
Rejection III (Obviousness)
Dependent claim 7
We are unpersuaded by Appellants’ argument that the Examiner has
failed to provide evidence of Official Notice that it was known in the art to
have a processor configured to inform the service of the license event after a
predetermined quiescent period of time, as recited in dependent claim 7, i.e.,
“wherein the processor of the device is configured by the instructions to
inform the server of the license event after a predetermined period of
quiescent time.” (Appeal Br. 6). The Examiner points to Vijay (US
2014/0013449 Al, pub. Jan. 9, 2004) (Abstr., 124) as evidence thereof
(Ans. 10). Appellants assert that Vijay does not disclose a “predetermined”
period and only teaches validation internal to a device during off-peak hours
(Reply Br. 10). Vijay (124) states that validation may be delayed, and
provides an example in which validation is performed at midnight in order to
6
Appeal 2015-002220
Application 13/034,093
be performed at off-peak hours. We determine that delaying validation until
midnight is within the broadest reasonable interpretation of waiting “a
predetermined period of quiescent time” and that Vijay adequately supports
the Examiner’s taking of Official Notice that it would have been known to
delay validation for “a predetermined period of quiescent time.”
Accordingly, we sustain the Examiner’s rejection under § 103 of claim 7.
DECISION
The Examiner’s decision to reject claims 1, 2, 4—7, and 9 is affirmed.
The Examiner’s decision to reject claims 3 and 8 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
7