Ex Parte Svendsen

Patent Trial and Appeal BoardApr 27, 2016

13647049 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/647,049 10/08/2012 Hugh Svendsen 71739 7590 04/28/2016 Concert Technology Corporation 5400 Trinity Road, Suite 303 Raleigh, NC 27607 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. CT-REC-OOlC/US (P002C) 5086 EXAMINER LIAO, JASON G ART UNIT PAPER NUMBER 2156 MAILDATE DELIVERY MODE 04/28/2016 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 HUGH SVENDSEN Appeal2014-003977 Application 13/647,049 Technology Center 2100 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We Affirm. The Invention Appellant's disclosed and claimed invention "relates to an archiving system that refines media recommendations made to a user from an e- commerce service based on an archive of the user's media collection." (Spec. ii 2). Appeal2014-003977 Application 13/647,049 Representative Claim 1. A system comprising: a communication interface for receiving communications from an e-commerce service; and a control system associated with the communication interface and adapted to: store information identifying a media collection in an associated storage unit; receive information identifying media purchased from the e-commerce service; generate the purchased media based on a corresponding reference media file and a desired encoding algorithm; update the information identifying the media collection to include information identifying the generated media; and provide the generated media to a computing system associated with the media collection. (Contested limitation emphasized). Rejections RI. Claim 16 stands rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellant regards as his invention. R2. Claims 1, 6, and 11-19 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Palmer (US 2002/0108115 Al, publ. Aug. 8, 2002). 2 Appeal2014-003977 Application 13/647,049 R3. Claims 2-5 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings and suggestions of Palmer and Hosken (US 6,438,579 Bl, iss. Aug. 20, 2002). R4. Claims 7 and 8 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings and suggestions of Palmer, Hosken, and Thomas (US 2007/0162502 Al, publ. July 12, 2007). RS. Claims 9 and 10 stand rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings and suggestions of Palmer, Hosken, and Chung (US 2006/0277098 Al, publ. Dec. 7, 2006). Claim Grouping Based on Appellant's arguments (App. Br. 8-13), we decide the appeal of anticipation Rejection R2 of claims 1, 6, and 11-19 on the basis of representative independent claim 1. We decide the Â§ 112, second paragraph, Rejection RI of dependent claim 16 separately. We addressÂ§ 103 Rejections R3 through R5, not separately argued, infra. See 37 C.F.R. Â§ 41.37(c)(l)(iv). ANALYSIS Rejection RI of Dependent Claim 16 underÂ§ 112, second paragraph For essentially the same reasons argued by Appellant in the Briefs (App. Br. 10; Reply Br. 4--5), as further discussed below, we reverse the Examiner's rejection RI of claim 16 underÂ§ 112, second paragraph. In particular, Appellant argues "the phrase 'an encoding algorithm' can be construed to cover the singular and plural such as the term 'a desired encoding algorithm' [ (claim 1 ),] while claim 16 requires the term 'plurality of encoding algorithms' to be construed in the plural." Appellant correctly 3 Appeal2014-003977 Application 13/647,049 notes '"a' and 'the' in a claim can generally be construed to cover both the singular and the plural, unless otherwise indicated in an application or clearly contradicted by context." (Reply Br. 4). Appellant's argument is persuasive. See SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348, 1360 (Fed. Cir. 2012) (citing Baldwin Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1342 (Fed.Cir.2008)): [T]his court has repeatedly emphasized that an indefinite article "a" or "an" in patent parlance carries the meaning of "one or more" in open-ended claims containing the transitional phrase "comprising." That "a" or "an" can mean "one or more" is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must "evince[] a clear intent" to limit "a" or "an" to "one. " The subsequent use of definite articles "the" or "said" in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non- singular meaning. This reasoning is applicable here. The Examiner's conclusion that claim 16 requires "every version to correspond to a single encoding algorithm" (Ans. 4, emphasis added) is contrary to the guidance of Sandisk. Therefore, we reverse the Examiner's rejection of dependent claim 16 under Â§ 112, second paragraph. Rejection R2 of Claims 1, 6, and 11-19 under 35 U.S.C. Â§ 102(b) We have considered all of Appellant's arguments and any evidence presented. Appellant contests the following limitation recited in representative claim 1: "generate the purchased media based on a corresponding reference media file and a desired encoding algorithm." (Emphasis added). 4 Appeal2014-003977 Application 13/647,049 Appellant disagrees with the Examiner's finding that Palmer's transcoding inherently discloses the "desired encoding algorithm" recited in claim 1. (App. Br. 11 ). Appellant contends in the Briefs: [T]he high resolution format could be in any of the formats listed above, and encoded based on any suitable encoding algorithm and could change periodically without the knowledge of the user. This is simply not the same as a "desired encoding algorithm." The specification makes clear that the "desired encoding algorithm" is user specific in that it is either selected by the user or based on user preferences. There is no such disclosure in Palmer. (App. Br. 11, emphasis added). It is clear from the specification that the "desired" in "desired encoding algorithm" indicates user specific in that the encoding algorithm is either selected by the user or based on user preferences. (Reply Br. 5, emphasis added). However, claim 1 is silent regarding the argued user selection or user preferences. (App. Br. 11 ). Moreover, we conclude the contested claim term "desired" is a subjective word, under a broad but reasonable interpretation. Therefore a question arises regarding how and to what degree (if any) the claim term "desired'' limits the scope of system (apparatus) claim 1. Our reviewing court guides: When a claim term "depend[ s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention," without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) 5 Appeal2014-003977 Application 13/647,049 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014). See also Manual of Patent Examining Procedure (MPEP) Â§ 2173.05(b)(IV) (9th Ed., Mar. 2014). We find Appellant's arguments unpersuasive, because we conclude the scope of the contested "desired encoding algorithm" (claim 1) is a subjective term that relates to a mental state or "wish" of an unclaimed user. Therefore, the argued "desired encoding algorithm" cannot distinguish the system of claim 1 over the corresponding encoder (i-f237) that transcodes video in the Palmer reference, as found by the Examiner. (See Final Act. 12; Ans. 8). 1 To the extent the claim term "desired" reads on Palmer's user's wishes, we find the recited "a desired encoding algorithm" broadly but reasonably reads on Palmer's client receiver 350 (i-f300, Fig. 14), that "determines whether the user wishes to purchase a high resolution version (STEP 1416)" (id.), and, if so, the client sends a request to OSM 320 (STEP 1420), which then sends ("provides") "the requested high resolution version of the object." (Palmer i1300, emphasis added). 1 In the event of further prosecution, we leave it to the Examiner to consider whether at least claim 1 should be rejected under 35 U.S.C. Â§ 112, second paragraph for being indefinite. "[I]f a claim is amenable to two or more plausible claim constructions, the US PTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite." Ex parte Miyazaki, 89 USPQ2d 1207, 1211(BPAI2008) (precedential). Although the Board is authorized to reject claims under 37 C.F.R. Â§ 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) Â§ 1213.02. 6 Appeal2014-003977 Application 13/647,049 Appellant also contends "the office has improperly relied on two different systems in Palmer." (App. Br. 12). We are unpersuaded by Appellant's argument and agree with the Examiner's finding that Figure 3A, element 210 contains all of elements 310 ("NCS"), 320 ("OSM") and 330 ("Media Servers") that generate the media according to the desired resolution ("desired encoding algorithm"). (Ans. 12; Claim 1 ). Appellant's argument is not persuasive because Palmer describes the block diagram depicted in Figure 3A, which includes the components 310, 320, 330, 340, as a single embodiment. (See Palmer i-f 234, citing "In this embodiment ... ") (Emphasis added). Figure 3A depicts these numbered components described in Palmer's paragraph 237, which is the paragraph cited by the Examiner in rejecting claim 1. (Final Act. 12). Therefore, we find Figure 3A describes a single embodiment relied on by the Examiner in support of the rejection. For at least these reasons, and on this record, we find a preponderance of the evidence supports the Examiner's finding of anticipation regarding representative claim 1. Because Appellant has not persuaded us the Examiner erred, we sustain anticipation rejection R2 of representative claim 1, and anticipation rejection R2 of grouped claims 6 and 11-19, which fall with claim 1. See Claim Grouping, supra. Rejections R3, R4, and R5 of claims 2-5, 7-10, and 20 underÂ§ 103 (a) Appellant advances no substantive, separate arguments regarding the remaining claims on appeal. (App. Br. 13). Arguments not made are considered waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). 7 Appeal2014-003977 Application 13/647,049 DECISION We reverse the Examiner's Rejection RI of claim 16 under 35 U.S.C. Â§ 112, second paragraph. We affirm the Examiner's Rejection R2 of claims 1, 6, and 11-19 under 35 U.S.C. Â§ 102(b). We affirm the Examiner's Rejections R3, R4, and R5 of claims 2-5, 7-10, and 20 under 35 U.S.C. Â§ 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision. See 3 7 C.F.R. Â§ 41.50(a)(l). 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). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 8