Ex Parte Xue et al

Patent Trial and Appeal Board

Aug 29, 2013

10666888 (P.T.A.B. Aug. 29, 2013)

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.
10/666,888 09/17/2003 Xin Xue SONY-26400 9089
7590 08/29/2013
Jonathan O. Owens
HAVERSTOCK & OWENS LLP
162 North Wolfe Road
Sunnyvale, CA 94086
EXAMINER
BLAIR, DOUGLAS B
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
08/29/2013 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 XIN XUE, NAOYUKI SATO, and QUAN VU
____________________

Appeal 2012-010481
Application 10/666,888
Technology Center 2400
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/666,888

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11, 13-20, and 29-51. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellants’ claimed invention is generally related to" the field of
content distribution and synchronization systems and methods." (Spec. 1:5-
6). Specifically, the invention relates to "methods and systems that
distribute and synchronize version based content from a syndicator to a
subscriber." (Spec. 1:6-7).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A version based content distribution system comprising:

a. content comprising a version number;

b. a syndicator, wherein the syndicator is configured to
transmit the version number;

c. subscriber content comprising a subscriber content
version number; and

d. a subscriber configured to store the subscriber
content, to compare the version number with the subscriber
content version number, and to receive the content from the
syndicator and increase the subscriber content version number
if the version number is larger than the subscriber content
version number;

wherein the syndicator is remote from the subscriber,
wherein the subscriber receives the content based on
preferences set by a user of the subscriber.
REFERENCES
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Application 10/666,888

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Kullick US 5,764,992 Jun. 9, 1998
Nakagawa US 5,835,911 Nov. 10, 1998
Fletcher US 6,009,274 Dec. 28, 1999
Li US 6,119,165 Sep. 12, 2000
Nakayama US 6,493,748 B1 Dec. 10, 2002
Fenton US 6,990,498 B2 Jan. 24, 2006
(Filed Jul. 26, 2001)

REJECTIONS
Claims 29-34 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-14, 29-31, 34-41, and 44-49 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fletcher, Kullick, and Nakagawa.
Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fletcher, Kullick, Nakagawa, and Fenton.
Claims 18, 19, 32, 33, 42, 43, 50, and 51 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Fletcher, Kullick, Nakagawa,
and Nakayama.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fletcher, Kullick, Nakagawa, and Li.

ANALYSIS
35 U.S.C. § 112
Claims 29-34 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. The Examiner
clarifies in the responsive arguments that "[i]t is the Examiner's contention
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that the [Appellants] never disclose[] a comparison of signals as claimed."
(Ans. 12).
We disagree with the Examiner and find the portion of the
Specification identified by the Examiner clearly evidences the circuit
operates on signals. Additionally, we note original claim 29 recited
"signals" and original claim 34 recites "an output signal generation circuit
electronically coupled to the server and the subscriber and configured to
detect a difference between the version identifier and the subscriber version
identifier and generate a control output signal . . . ." Therefore, we find
Appellants were in possession of the claimed invention at the time of filing.
Thus, we cannot sustain the rejection of claims 29-34 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. .

35 U.S.C. § 103
Appellants set forth an "Outline of Arguments" or general contentions
with respect to the prior art references. (App. Br. 7-12).
With respect to independent claim 1, Appellants generally repeat the
claim limitations and contend the combination does not teach "wherein the
subscriber receives the content based on preferences set by a user of the
subscriber." (App. Br. 12). The Examiner persuasively responds to this
contention. (Ans. 17-24, "Explanation of the Prior Art Rejections").
We observe the Examiner has performed a detailed correlation of the
prior art teachings in the statement of the rejection (Ans. 5-11) and in the
responsive arguments (Ans. 17-24, "Explanation of the Prior Art
Rejections") which thoroughly responds to each of Appellants' contentions.
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We find the Examiner's responses persuasive and adopt them as our own
with respect to the prior art rejection. We note Appellants did not file a
reply brief to respond to the Examiner's further clarifications in the
statement of the rejection and the responsive arguments. Therefore,
Appellants have not shown error in the Examiner's conclusion of
obviousness of representative independent claim 1 and claims 2-11, 13, and
14 grouped therewith.
With respect to independent claim 29, Appellants set forth similar
arguments advanced with respect to independent claim 1. (App. Br. 13).
Since we found Appellants' arguments unpersuasive with respect to
independent claim 1, we similarly find them unpersuasive with respect to
representative claim 29 and claims 30, 31, and 34 grouped therewith.
With respect to independent claim 35, Appellants set forth similar
arguments advanced with respect to independent claim 1. (App. Br. 13-14).
Since we found Appellants' arguments unpersuasive with respect to
independent claim 1, we similarly find them unpersuasive with respect to
representative claim 35 and claims 36-41 grouped therewith.
With respect to independent claim 44, Appellants set forth similar
arguments advanced with respect to independent claim 1. (App. Br. 14-15).
Since we found Appellants arguments unpersuasive with respect to
independent claim 1, we similarly find them unpersuasive with respect to
representative claim 44 and claims 45-49 grouped therewith.
With respect to claims 15-20, 32, 33, 42, 43, 50, and 51, Appellants
rely upon the arguments advanced with respect to the respective base claim.
(App. Br. 15-16). Since we found those arguments unpersuasive, we group
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these claims with their respective base claim since Appellants have not set
forth separate arguments for patentability. See 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
The Examiner erred in rejecting claims 29-34 under 35 U.S.C. § 112,
first paragraph.
The Examiner did not err in rejecting claims 1-11, 13-20, and 29-51
under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 29-34 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The Examiner’s decision rejecting claims 1-11, 13-20, and 29-51
under 35 U.S.C. § 103(a) is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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