Ex parte Jung

• Decision Date: 22 March 2017
• Docket Number: Appeal 2016-008290
• Parties: Ex Parte DONG-SHIN JUNG, JOO-YEOL LEE, SE-HEE HAN, JE-YOUNG MAENG, FEI FEI FENG, and RUSSELL BERKOFF Application 12/541, 524 Technology Center 2400
• Court: Patent Trial and Appeal Board

Ex Parte DONG-SHIN JUNG, JOO-YEOL LEE, SE-HEE HAN, JE-YOUNG MAENG, FEI FEI FENG, and RUSSELL BERKOFF Application 12/541, 524 Technology Center 2400

Appeal 2016-008290

United States Patent and Trademark Office, Patent Trial and Appeal Board

March 22, 2017

FILING DATE: 08/14/2009

Before ALLEN R. MacDONALD, LINDA E. HORNER, and MICHAEL J. ENGLE, Administrative Patent Judges.

DECISION ON APPEAL

MacDONALD, Administrative Patent Judge.

STATEMENT OF CASE

Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 2, 4-11, and 13-18. Final Act. 1. Claims 3 and 12 have been cancelled. App. Br. 14, 17. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claim

Exemplary claim 1 under appeal reads as follows (emphasis, formatting, and bracketing added):

1. A method for playing back a scene using Universal Plug and Play (UPnP), comprising

[A.] sending, by a control point, a request for a scene to be played back to a media server that stores Audio/Video (AV) content

[B.] receiving, by the control point, one or more scene objects comprising the scene to be played back from the media server in response to the request, each scene object including metadata representing at least one of

[L] a precedence relation indicating the scene object's location in a sequence of scene objects and

[ii.] a connection relation indicating one or more scene objects capable of replacing the scene object, the connection relation including at least one of

[1.] a connection branch and

[2.] a contents connection list having a first group identification

[a.] the connection branch configured to move to and play back a scene object at a playback time of a scene object including inter-object connection relation information, which is represented by designating scene objects in a connection list having a second group identification, and

[b.] the contents connection list configured to access a scene object in a precedence relation list

[C] [i.] receiving, by the control point, information about supportable protocol and file format from a media renderer that will play back content, and

[ii.] determining a content resource, a protocol and a file format to be used for playback based on the information;

[D.] composing, by the control point, the scene to be played back based on the received one or more scene objects; and

[E.] playing back, by the media renderer, the composed scene.

Rejections

1. The Examiner rejected claims 1, 2, 4-8, 10, 11, and 13-17 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Encarnacion et al. (US 2005/0138137 A1; June 23, 2005) and Ryu (US 2008/0050096 A1; Feb. 28, 2008).

2. The Examiner rejected claims 9 and 18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Encarnacion, Ryu, and Hlasny et al. (US 2005/0108766 A1; May 19, 2005).

Appellants' Contentions

1. Appellants contend the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because

Encarnacion. . . does not disclose, teach, or suggest that the directory 600 includes at least one of a connection branch and a contents connection list ... as recited in Claim 1. Therefore, Encarnacion does not render obvious Claim 1.

App. Br. 9 (emphasis added).

2. Appellants also contend the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because

[t]he Examiner relies on Ryu for teaching that "each scene object [represents] at least one of precedence relation indicating the scene object's location in a sequence of scene objects and... scene object representing connection relation". (See Final Office Action p. 5.) However, Ryu does not disclose, teach, or suggest a connection relation including at least one of a connection branch and a contents connection list... as recited in Claim 1.

App. Br. 9 (emphasis added).

Issue on Appeal

Did the Examiner err in rejecting claim 1 as being obvious?

CLAIM CONSTRUCTION

Independent claim 1 recites "each scene object including metadata representing at least one of a precedence relation . . . and a connection relation" and "the connection relation including at least one of a connection branch and a contents connection list." (Emphasis added.) Independent claims 9, 10, and 18 recite analogous limitations using the same format of "at least one of [A] and [B]."

The Federal Circuit Addressed "at least one of A and B " in SuperGuide

Our reviewing court has held that the plain meaning of "at least one of A and B" is the conjunctive phrase "at least one of A and at least one of B." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 885-86 (Fed. Cir. 2004). In support of this conclusion, the Federal Circuit explained, "A common treatise on grammar teaches that 'an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term.'" Id. at 886 (quoting William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed. 2000)). "Thus, 'in spring, summer, or winter' means 'in spring, in summer, or in winter.'" Id. (quoting Strunk, The Elements of Style 27). The ordinary meaning therefore compelled a difference in meaning between a list separated by "and" versus the same list separated by "or."

Upon consideration of the parties' opposing constructions and evidence, the court in SuperGuide also pointed out that neither the specification nor the prosecution history in that case "enlarge[d] the claim scope from its plain and ordinary meaning." Id. at 887-88.

Subsequent Cases Applying SuperGuide

Although numerous courts have followed SuperGuide, ^[1] some courts and administrative bodies at times have distinguished SuperGuide on the basis that the normal conjunctive meaning of "at least one of. . . and" does not apply when the patent's claims, specification, or prosecution history necessitate a broader meaning.^[2] Instead, given the specific facts in those cases, these tribunals applied a disjunctive meaning to "at least one of A and B, " effectively reading the conjunctive "and" as a disjunctive "or."

For example, in Ex parte Concha, the issue focused on the construction of a limitation in the "at least one of A and B" format. Ex parte Concha, No. 2012-008364, 2015 WL 397716 (PTAB Jan. 28, 2015). Upon consideration of the application's specification and the positions of the applicants and the Examiner, the panel distinguished SuperGuide in the same way as the cases discussed above. Id. at *3. The panel in that case agreed with the examiner's reasoning, and found "Superguide is not pertinent here" because the claims and specification suggested only a single item should be selected rather than a plurality. Id.

However, in Ex parte Gardner, the panel reached the opposite result and followed SuperGuide. The claim construction was not directly disputed on the initial appeal, but when raised in a request for rehearing, the panel concluded "providing at least one of a data sources portion and a processes portion" required "providing access to a 'processes portion' (as well as a 'data sources portion')." Ex parte Gardner, No. 2009-010298, 2011 WL 180106, at *l (BPAI Jan. 12, 2011) (emphasis added).

Applying SuperGuide to the Application on Appeal

In the appeal before this panel, neither Appellants nor the Examiner directly address the appropriate construction of the "at least one of A and B" phrases. The Examiner's Answer states, for the first time we find in the record, the "claim only requires either 'a precedence relation . . .' OR 'a connection relation.'" Ans. 5. However, we find no supporting analysis from the Examiner on why this disjunctive claim construction should be the case instead of the plain meaning of "and." Rather, without further support, the Examiner merely presents that conclusory statement which, without more, is in conflict with SuperGuide. Appellants' Reply Brief is also silent as to the issue.

For claims written in the format of "at least one of A and B, " the Federal Circuit made clear in SuperGuide that the plain and ordinary meaning is the conjunctive phrase "at least one of A and at least one of B." 358 F.3d at 887. An Examiner may adopt a different meaning if called for based upon the usual claim construction considerations, including analyzing the specification for any definition or disavowal. See id. (examining the specification to determine whether it supports the plain and ordinary meaning); id. at 888 ("Lastly, we decline to enlarge the claim scope from its plain and ordinary meaning based on the prosecution history in this case because the '211 patentee did not clearly and explicitly define the term 'and' in the covered criteria list as 'or.'"); see generally Phillips v. AWH Corp., 415 F.3d 1303, 1313-19 (Fed. Cir. 2005) (en banc) (holding claim terms should be read in the context of the claims, the rest of the specification, the prosecution history, and in some cases extrinsic evidence). However, like any claim construction straying from the ordinary meaning, the Examiner should set forth the reasoning for such an interpretation, including citations and explanations of relevant portions of the claims, specification, or prosecution history. See, e.g., Manual of Patent Examining Procedure § 211...