Amro Shihadah et al.

Patent Trials and Appeals Board

Sep 27, 2019

13840893 - (D) (P.T.A.B. Sep. 27, 2019)

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.
13/840,893 03/15/2013 Amro SHIHADAH AC-5756-5 7686
23117 7590 09/27/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AMRO SHIHADAH, MOHAMMAD SHIHADAH,
and HASSAN SAWAF
____________________

Appeal 2018-005419
Application 13/840,893
Technology Center 3600
____________________

Before BETH Z. SHAW, NORMAN H. BEAMER, and JOYCE CRAIG,
Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. In the Appeal Brief, Appellant did not identify a real party
in interest.
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STATEMENT OF THE CASE
The Invention
Appellant’s disclosed embodiments and claimed invention relate to
providing users with ways of interacting with (e.g., capturing) media content
and providing, for example, purchasing opportunities based on the
interaction. Spec. ¶ 3.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to contested prior-art limitations, letters in
parentheses added for reference):
1. A mobile computing apparatus for recognizing and
interacting with video content displayed on a remotely located
display apparatus, the mobile computing apparatus comprising:
(a) a camera configured to acquire video;
(b) an integrated display device that is layered with a
touch screen configured to receive input from a user of the
mobile computing apparatus;
(c) a transceiver configured to communicate with a
remote computing apparatus; and
(d) a processing system that includes at least one
processor, the processing system configured to:
(e) cause the camera to begin acquisition of a first video
of video content being displayed on the remotely located
display apparatus;
(f) transmit, using the transceiver and to the remote
computing apparatus, first data that is based on the acquired
first video, the remote computing apparatus configured to use
the first data to perform a synchronization process that
synchronizes the first video, based on the first data, with at least
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one of plural different video streams being independently
received by the remote computing apparatus,
(g) output, to the integrated display device, a second
video that corresponds to the acquired video content and is
based on the synchronization process performed on the remote
computing apparatus;
(h) while the second video is displayed on the integrated
display device, receive, via the touch screen, a touch input from
the user that indicates a location within the display screen or
the second video content that is displayed;
(i) responsive to reception of the touch input, transmit, to
the server computing system, the location of the touch input
within the display screen or the second video content that is
displayed;
(j) receive, from the remote computing apparatus,
dynamic informational content that is based on identification,
by the remote computing apparatus, of an object within the
identified and independently received video stream that
corresponds to the location; and
(k) output, to the integrated display device, the dynamic
informational content.
Rejections on Appeal2
Claims 1–5 and 7–14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ando (US 8,458,038 B2; issued June
4, 2013), Mallinson (US 9,264,785 B2; issued Feb. 16, 2016), Hamilton et
al. (US 8,799,951 B1; issued Aug. 5, 2014) (“Hamilton”), and Rodriguez
(US 8,175,617 B2; issued May 8, 2012). Final Act. 7–23.
Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ando, Mallinson, Hamilton,

2 In the Answer, the Examiner withdrew the rejections of claims 1–15 under
35 U.S.C. §§ 101 and 112, first paragraph. See Ans. 3.
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Rodriguez, and Salinas et al. (US 8,108,342 B2; issued Jan. 31, 2012)
(“Salinas”). Final Act. 24–26.
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–3,
5–8, and 10–15 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner’s Answer in response to Appellant’s
arguments. We highlight and address specific findings and arguments for
emphasis as follows.
Rejection of Claims 1–3, 5, 7, 8, and 10–14 Under § 103(a)
Appellant contends (App. Br. 33–42; Reply Br. 2–7) the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a). Appellant first argues
that the prior art references do not teach or suggest the limitations
while the second video is displayed on the integrated
display device, receive, via the touch screen, a touch input from
the user that indicates a location within the display screen or the
second video content that is displayed;
responsive to reception of the touch input, transmit, to the
server computing system, the location of the touch input within
the display screen or the second video content that is displayed.

App. Br. 34–35. Specifically, Appellant argues that none of Ando,
Mallinson, Hamilton, and Rodriguez teaches or suggests “transmitting (to a
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server) the location of the touch input that the user provides to the touch
screen on their mobile computing device.” App. Br. 35.
We are not persuaded that the Examiner erred. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Here, Appellant attacks Ando and Rodriguez individually, even
though the Examiner relied on the combination of Ando, Mallinson,
Hamilton, and Rodriguez in rejecting claim 1. See In re Mouttet, 686 F.3d
1322, 1332 (Fed. Cir. 2012) (citing Keller, 642 F.2d at 425) (“The test for
obviousness is what the combined teachings of the references would have
suggested to those having ordinary skill in the art.”). Specifically, the
Examiner found that Ando teaches “transmit, to the server computing
system, an electronic message.” Final Act. 13 (citing Ando col. 24:56-67).
The Examiner also found that Ando suggests pressing on an image on a
screen. Final Act. 12; Reply Br. 5 (citing Ando cols. 16:43–62, 24:31–38,
28:37–48). The Examiner further found that Rodriguez teaches “responsive
to reception of the touch input ... the location of the touch input within the
display screen or the second video content that is displayed.” Id. at 12
(citing Rodriguez cols. 3:44–52, 6:42–46, 12:15–24, 46:10–58, 47:65–67,
49:3–12, and 50:9-28), 13.
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Appellant has not persuasively rebutted the Examiner’s findings. For
example, in the Appeal Brief, Appellant does not address any of the portions
of Rodriguez relied on by the Examiner. App. Br. 36. Nor does Appellant
address the combined teachings of Ando and Rodriguez, or of Ando and the
other cited references.
In the Reply Brief, Appellant for the first time addresses the portions
of Rodriguez cited by the Examiner in the Final Action, arguing that those
portions do not teach or suggest transmitting a touch location to a server.
See Reply Br. 4. Appellant, however, has waived this argument because it
was presented for the first time in the Reply Brief, without a showing of
good cause. See 37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden,
93 USPQ2d 1473, 1473–74 (BPAI 2010 (informative opinion) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.”). We note, however, that Appellant’s arguments are unpersuasive
because they do not address the rejection actually made by the Examiner,
which is based on the combined teachings of at least Ando and Rodriguez,
as cited by the Examiner.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Ando, Mallinson, Hamilton, and Rodriguez
teaches or suggests the disputed limitations.
Appellant next contends that the Examiner erred because “[t]he FOA
also contains no explanation or relevant reasoning as to why a person of
ordinary skill in the art would have decided to transmit the location of a
touch input instead of the transmitting an image (e.g., as is performed by
Ando).” App. Br. 37.
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We are not persuaded of Examiner error. A rejection based on
obviousness only needs to be supported by “some articulated reasoning with
some rational underpinning” to combine known elements in the manner
required by the claim. See KSR Int’l Co., v. Teleflex Co., 550 U.S. 398, 418
(2007). We find the Examiner (Final Act. 13) provides “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Thus, we are not persuaded that the Examiner erred in combining the
teachings of Ando and Rodriguez.
Appellant further contends the Examiner erred because the references
fail to teach or suggest the limitation “output, to the integrated display
device, a second video that corresponds to the acquired video content and is
based on the synchronization process performed on the remote computing
apparatus.” App. Br. 37. In particular, Appellant argues the cited references
fail to teach displaying a video on a mobile device based on synchronizing
two independently received videos, as claim 1 requires. Id.
Appellant again attacks the references individually. See Keller, 642
F.2d at 425. For example, Appellant argues that “[t]here is no discussion in
Mallinson or other references of displaying a video in the above claimed
manner – much less in combination with the features related to receiving and
transmitting the location of a touch input that is within this displayed video.”
App. Br. 37. As explained above, the Examiner relied on the combined
teachings of at least Ando and Rodriguez, not Mallinson alone, for
transmitting the location of a touch input. Appellant has not presented
sufficient persuasive argument or objective evidence to rebut the findings
actually made by the Examiner.
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For these reasons, and the reasons stated above with regard to the
“location of the touch input,” we are not persuaded that the Examiner erred
in finding that the combination of Ando, Mallinson, Hamilton, and
Rodriguez teaches or suggests the disputed “output” limitation.
Appellant next contends that the cited portions of the prior art do not
teach or suggest the limitation “dynamic informational content that is based
on identification, by the remote computing apparatus, of an object within the
identified and independently received video stream that corresponds to the
location.” App. Br. 38.
We are not persuaded by Appellant’s argument at least because it
depends on Appellant’s earlier argument regarding the location of the touch
input not being transmitted to a server. See id. Because we do not find the
earlier arguments persuasive, we also do not find Appellant’s argument
regarding the “dynamic informational content” persuasive.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Ando, Mallinson, Hamilton, and Rodriguez
teaches or suggests the disputed “dynamic informational content” limitation.
With regard to dependent claims 5, 10, and 13, Appellant argues that
the Examiner provided no explanation “for how Mallinson’s disclosure
relates to receiving, from the remote computing apparatus (e.g., the server),
a video that is based on the synchronization process performed on the
server.” App. Br. 40.
The Examiner responded that the subject matter claimed as part of
claims 5, 10, and 13 is encompassed by the claim 1 limitations (c) and (f) per
claims 5 and 10; and encompassed by the cited claim 1 limitations (c), (f),
and (g) per claim 13. Ans. 16; see also Final Act. 21–22.
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Appellant’s arguments are not persuasive because Appellant has not
persuasively shown that Hamilton’s teaching of “a transceiver configured to
communicate with a remote computing apparatus” in limitation (c) of claim
1, combined with Ando and Mallinson’s teachings of limitation (f) in claim
1:
(f) transmit[ting], using the transceiver and to the remote
computing apparatus, first data that is based on the acquired
first video, the remote computing apparatus configured to use
the first data to perform a synchronization process that
synchronizes the first video, based on the first data, with at least
one of plural different video,
would not have suggested to an artisan or ordinary skill the limitation
recited in claim 5:
receive, from the remote computing apparatus, the second
video, wherein the second video is subsequently displayed on
the integrated display device, the second video being
transmitted from the remote computing apparatus based on the
performed synchronization process,
as recited in claim 5, and similarly in claims 10 and 13.
Based on the record before us, we are not persuaded that the above
limitation recited in claim 5 would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–19 (2007).
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Ando, Mallinson, Hamilton, and Rodriguez teaches or
suggests the disputed limitations of claims 5, 10, and 13.
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Turning to dependent claims 11 and 14, Appellant argues that the
cited portions of Ando do not teach or suggest the limitations recited in
claim 11, and similarly recited in claim 14:
determining, within a display frame of the acquired video,
where the video content in the acquired video is being
displayed, wherein the first data is based on where the video
content is determined to be within the display frame of the
acquired video.
App. Br. 41. Appellant argues that Ando does not teach or suggest
identifying where “a television (or other display) is located with a video
stream being acquired by a user device” and “sending that data to the server
for further analysis.” Id. Appellant further argues that Ando sends the
whole frame to the server for analysis. Id.
We are not persuaded by Appellant’s arguments. First, the plain
language of the claims does not require identifying where a television is
located in a video stream or require sending data to a server for further
analysis. Nevertheless, the Examiner found that Ando teaches extracting a
feature from a frame of video and transmitting only the extracted feature
data to a server. Final Act. (citing Ando figs. 8A, 8B, cols. 12:31–64,
19:27–36). The Examiner further found that Ando teaches obtaining image
data for individual frames. Final Act. 23 (citing Ando col. 24:31–38).
Appellant has not persuasively rebutted the Examiner’s findings or
persuaded us that the cited teachings of determining image data within a
frame of video are insufficient to teach or suggest the disputed limitation.
Thus, we are not persuaded the Examiner erred in finding the
combination of Ando, Mallinson, Hamilton, and Rodriguez teaches or
suggests the disputed limitations of claims 11 and 14.
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Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combinations to
teach or suggest the disputed limitation of claims 1–3, 5, 7, 8, and 10–14.
Nor do we find error in the Examiner’s resulting legal conclusions of
obviousness. Accordingly, we sustain the Examiner’s § 103(a) rejections of
claims 1–3, 5, 7, 8, and 10–14.
Rejection of Dependent Claims 4 and 9 Under § 103(a)
Claim 4 depends from independent claim 1 and further recites:
wherein the dynamic informational content is determined by the
remote computing apparatus by mimicking, within the
identified and independently received video stream, the location
indicated by the touch input.
App. Br. 45.
Claim 9 depends from independent claim 7 and further recites:
wherein identification of the at least one object in the
independently received video stream accomplished by
mimicking, within the independently received video stream, the
location indicated by the touch input.
Id. at 47.
Appellant argues that the cited portions of Mallinson, relied on by the
Examiner, do not teach or suggest that “the identification of an object is
accomplished by ‘mimicking’ the location indicated by the user on their
mobile device within the independently received video stream.” App. Br.
39. Appellant argues that the Examiner’s interpretation of the term
“mimicking” (Ans. 15) is unreasonable. Reply Br. 5. Appellant notes that
“mimic” means “to copy or imitate closely, especially in speech, expression,
and gesture.” Id. at 6 (citing https://www.thefreedictionary.com/mimicked).
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We agree with Appellant that the Examiner erred. We give contested
claim limitations their broadest reasonable interpretation consistent with the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Here, the Examiner interpreted the term “mimicking” as “receiving user
input which is acknowledged/registered to match or identify independently
received content.” Final Act. 21. The Examiner’s interpretation is overly
broad, unreasonable, and is not consistent with Appellant’s Specification for
the following reasons.
Paragraph 117 of the Specification, for example, describes that, after a
device determines what portion of a display has been touched and sends that
information to a remote server, the remote service mimics the touch action to
determine the location of the touch with respect to recognized objects in the
displayed content. Spec. ¶ 117. Appellant’s use of the term “mimic” in the
Specification is consistent with the ordinary meaning of the term. The
Examiner’s interpretation does not correspond with what and how the
inventor describes his invention in the Specification and is, thus, overly
broad. Merely acknowledging or registering an input as matching content is
significantly broader than copying or imitating that input in a virtual session,
as paragraph 117 describes.
Because we conclude the Examiner’s construction is overly broad,
unreasonable, and inconsistent with the Specification, on the record before
us, we reverse the Examiner’s § 103(a) rejection of dependent claims 4 and
9.3

3 Appellant raises additional arguments with respect to claims 4 and 9.
Because the identified issue is dispositive of the appeal of the rejection of
claims 4 and 9, we do not reach the additional arguments.
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Rejection of Claims 6 and 15 Under § 103(a)
Appellant does not argue dependent claims 6 and 15 separately with
particularity, but rather relies on the arguments made for independent claims
1 and 12. See App. Br. 41. For the same reasons discussed above with
respect to claim 1, we are not persuaded that the Examiner erred in rejecting
claims 6 and 15 under § 103(a) over the combination of Ando, Mallinson,
Hamilton, Rodriguez, and Salinas.
Accordingly, we affirm the Examiner’s § 103(a) rejection of claims 6
and 15.
CONCLUSION
The Examiner’s decision rejecting claims 1–3, 5–8, and 10–15 is
affirmed. The Examiner’s decision rejecting claims 4 and 9 is reversed.
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–5, 7–14 § 103(a)
Ando, Mallinson,
Hamilton, Rodriguez
1–3, 5, 7, 8,
10–14
4, 9
6, 15 § 103(a)
Ando, Mallinson,
Hamilton, Rodriguez,
Salinas
6, 15
Overall
Outcome
1–3, 5–8,
10–15
4, 9

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). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART