Amro Shihadah et al.Download PDFPatent Trials and Appeals BoardSep 27, 201913840893 - (D) (P.T.A.B. Sep. 27, 2019) Copy Citation 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. Appeal 2018-005419 Application 13/840,893 2 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 Appeal 2018-005419 Application 13/840,893 3 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. Appeal 2018-005419 Application 13/840,893 4 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 Appeal 2018-005419 Application 13/840,893 5 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. Appeal 2018-005419 Application 13/840,893 6 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. Appeal 2018-005419 Application 13/840,893 7 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. Appeal 2018-005419 Application 13/840,893 8 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. Appeal 2018-005419 Application 13/840,893 9 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. Appeal 2018-005419 Application 13/840,893 10 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. Appeal 2018-005419 Application 13/840,893 11 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). Appeal 2018-005419 Application 13/840,893 12 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. Appeal 2018-005419 Application 13/840,893 13 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 Copy with citationCopy as parenthetical citation