Ex Parte Wang

Patent Trial and Appeal Board

Apr 19, 2016

11960164 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111960,164 12/19/2007
105219 7590 04/21/2016
GARLICK & MARKISON (SW)
ATTN: MELANIE MURDOCK
P.O.Box 160727
Austin, TX 78716
FIRST NAMED INVENTOR
Feng Chi Wang
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.
MOR005 4017
EXAMINER
THOMAS, ERIC M
ART UNIT PAPER NUMBER
3714
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
MMURDOCK@texaspatents.com
ghmptocor@texaspatents.com
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FENG CHI WANG
Appeal2014-004657
Application 11/960,1641
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Feng Chi Wang (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's Final decision rejecting claims 1---6 and 10-15. Claims 7-9 and
16-24 are withdrawn. Appeal Br. 2. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 According to the Appellant, the real party in interest is Morega Systems,
Inc. Appeal Br. 2.
Appeal2014-004657
Application 11/960, 164
SUMMARY OF INVENTION
The Appellant's "invention relates to transfer of media content and
related methods used in devices such as set-top boxes and other home media
gateways." Spec. 1, 11. 6-7. Claims 1 and 10, reproduced below from pages
8-10 (Claims Appendix) of the Appeal Brief, are illustrative of the claimed
subject matter:
1. A portable game console comprising:
an interface module for receiving a video signal from an
external device;
an optical disc drive for loading a universal media disc
that stores a plurality of operational instructions including a
video player application and a plurality of advertising data;
a processing module, coupled to the interface module and
the optical disc drive, that executes the video player application
that decodes the video signal and produces a decoded video
signal that includes at least one advertisement from the plurality
of advertising data; and
a display device, coupled to the processing module, that
displays that decoded video signal.
10. A method comprising:
receiving a video signal from an external device;
loading an optical storage disc that stores a plurality of
operational instructions including a video player application
and a plurality of advertising data;
executing the video player application to decode the
video signal and produce a decoded video signal that includes
at least one advertisement from the plurality of advertising data;
and
displaying that decoded video signal.
THE REJECTION
Claims 1---6 and 10-15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Parry (US 2004/0078484 Al, pub. Apr. 22, 2004).
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Appeal2014-004657
Application 11/960, 164
ANALYSIS
Claims 1--4 and 6
The Examiner finds that Parry discloses all of the elements of claim 1.
Final Action 2-3. The Appellant disagrees, arguing that Parry does not
disclose loading both advertising data and a video application via optical
disc. Appeal Br. 4--5. Rather, the Appellant argues, the Parry system
downloads advertising data from a remote source rather than from a disc,
and further Parry does not disclose that its video application is loaded from a
disc. Id. The Examiner responds by finding that the claimed invention is
not a disc that stores a video player application but rather a portable gaming
console having an optical disc drive, and as such the language regarding the
contents of the optical disc is an expression of an intended use rather than a
positive claim limitation. Answer 4--5. The Examiner further responds that
because the Parry system is capable of loading such an optical disc, Parry
anticipates the claim. Id. Similarly, the Examiner responds that the
language regarding the video player application is not a positive limitation,
and Parry anticipates because its system is capable of loading such an
application via optical disc. Id. at 5. The Appellant replies that the
Examiner's reasoning is flawed because: 1) the claim language in question
is presented in the body of the claim rather than in the preamble, 2) the
source of the advertising data and video player application affect the
operation of the optical disc drive, and 3) providing the advertising data and
video player application on a disc precludes the need for a network interface,
the need for a network connection, and the need to store a plurality of
different video players on the game console. Reply Br. 2-3.
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Appeal2014-004657
Application 11/960, 164
It is well established that claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function,
and in order to satisfy the functional limitations in an apparatus claim the
prior art apparatus must be capable of performing the claimed function. See,
e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
Here, the Examiner found Parry to disclose a portable game console
having an interface module, an optical disc drive, a processing module, and a
display device, as claimed. Final Action 2-3; see also Answer 2-3. The
Examiner further found "Parry's optical disc drive as being fully capable of
loading a universal media disc that may comprise advertising data." Answer
5. Similarly, the Examiner found the Parry disc drive as being capable of
loading a disc having a video player application loaded thereon. Id.
The Examiner having established a prima facie case of anticipation,
"the burden shifted to [the Appellant] to show that the prior art structure did
not inherently possess the functionally defined limitations of his claimed
apparatus." Schreiber, 128 F.3d at 1478. The Appellant, however, has not
provided any persuasive reasoning or evidence to show why the Parry
system, its optical drive in particular, cannot work with a disc having stored
thereon a plurality of operational instructions, including a video player
application and a plurality of advertising data. For example, the Appellant
argues that "the claim elements in question are not presented in the preamble
of the claim." Reply Br. 3. Although "[s]uch statements often ... appear in
the claim's preamble," a statement of intended use or purpose can appear
elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). The
Appellant's other arguments regard the intended operation of the claimed
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Appeal2014-004657
Application 11/960, 164
console rather than its structure (see Appeal Br. 4--5; see also Reply Br. 3),
and are therefore also unpersuasive.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1 as being anticipated by Parry. The
Appellant does not make any other substantive argument regarding the
rejection of dependent claims 2--4 and 6. See Appeal Br. 3---6; see also
Reply Br. 2--4. Therefore, we likewise sustain the anticipation rejection of
dependent claims 2--4 and 6.
Brief:
Claim 5
Claim 5 is reproduced below from the Claims Appendix of the Appeal
5. The portable game console of claim 1 wherein the video
signal includes video content and a content attribute and
wherein the video player application selects the at least one
advertisement based on the content attribute.
The Examiner finds that Parry discloses all of the elements of claim 5.
Final Action 4. The Appellant argues that Parry fails to set forth that its
advertisement is selected based on a content attribute present in the received
video signal. Appeal Br. 5---6. The Examiner counters that Parry discloses
basing the selection of advertisement content on the movie loaded in the
Parry system via the content source network address included with the
movie, and thus satisfies the requirements of claim 5. Answer 5---6. The
Appellant replies that the Examiner has improperly identified the Parry
movie as being both the video content and the content attribute recited in
claim 5. Reply Br. 4.
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Appeal2014-004657
Application 11/960, 164
The Examiner finds that Parry storage medium 106 stores both the
movie and "the network address" (i.e., the Parry content source network
address), and that the Parry system uses the network address to select the
advertisements to include in the video displayed to the user. See Answer 5-
6. Thus, it is the network address portion of the movie that the Examiner
relies upon as the recited content attribute, and the Appellant's argument is
therefore misplaced.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 5 as being anticipated by Parry.
Claims 10-15
With respect to independent claim 10, the Examiner's findings and the
Appellant's arguments are similar to those discussed supra with respect to
claim 1. See Final Action 2-3; see also Appeal Br. 6; Answer 4--5; and
Reply Br. 4.
Where claim 1 is an apparatus claim, however, claims 10-15 are
method claims. While we find the Examiner's "intended use" position
viable with respect to the rejection of the apparatus claims, "intended use"
generally has no place in the determination of the patentability or
unpatentability of method claims. The limitation requiring the step of
"loading an optical storage disc that stores a plurality of operational
instructions including a video player application and a plurality of
advertising data" is an operative step of the method, not mere intended use,
and cannot be dispensed with under a principle appropriate for apparatus
claims that permits statements of intended use to be given no patentable
weight.
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Appeal2014-004657
Application 11/960, 164
The Examiner has not identified within Parry the claimed step of
loading an optical storage disc that stores a plurality of operational
instructions including a video player application and a plurality of
advertising data. On the record before us, we therefore reverse the
Examiner's rejection of claim 10. Because claims 11-15 depend from claim
10, and the Examiner's application of Parry to those claims does not remedy
the foregoing error for claim 10, we likewise reverse the Examiner's
rejection of claims 11-15.
DECISION
The Examiner's decision to reject claims 1---6 is affirmed.
The Examiner's decision to reject claims 10-15 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).
AFFIRivIED-IN-PART
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