Ex Parte Blanchard et al

Patent Trial and Appeal Board

May 27, 2014

11608755 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT BLANCHARD and PETER SHINTANI
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Appeal 2011-011206
Application 11/608,755
Technology Center 2400
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Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS,
JEFFREY S. SMITH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 1-23, all the claims pending in the application. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to controlling video output in
response to parental control settings. Spec. ¶ [0007].
Claim 1 is illustrative:
1. An apparatus, comprising:
means for generating a video output from a video content
source;
means for preventing the output of selected video content
in response to detecting that its rating is incompatible with a parental
control restriction setting;
means for automatically detecting the presence of an
individual and determining the identity of the individual without
requiring the individual to enter a password or traverse a menu tree;
and
means for temporarily changing parental control
restrictions in response to identifying the presence of at least one
supervisory individual, or a device associated with the presence of
said at least one supervisory individual;
wherein said means for automatically detecting the
presence of an individual and determining the identity of the
individual comprises a remote control device configured for wireless
communication with said apparatus; and
wherein said remote control is configured to directly and
automatically detect the presence of an individual and determine the
identity of the individual from among a plurality of individuals via a
physical characteristic of the individual.

Appellants appeal the following rejections:

R1. Claims 1-7, 9, 10, and 17-20 are rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over Kuhn (US 2005/0240959 A1, Oct. 27,
2005) and Lynch (WO 01/50741 A1, July 12, 2001);
R2. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kuhn, Lynch, and Long (US 2006/0277565 A1, Dec. 7,
2006);
R3. Claims 11-14, 21, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kuhn, Lynch, and Smith (US 2006/0197676 A1,
Sept. 7, 2006); and
R4. Claims 15, 16, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kuhn, Lynch, and Milovanovic (US 2003/0028872
A1, Feb. 6, 2003).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 1, as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Claims 1-3, 5-7, 9, 10, and 17-20
Issue: Did the Examiner err in finding that the combined teachings of
Kuhn and Lynch teach and/or suggest detecting the presence of an individual
and determining the identity of the individual, as set forth in claim 1?
Appellants contend that in Lynch “entry of a password only identifies
that a password has been entered, and teaches nothing as to identifying the
presence of a supervisory individual. A password may be entered by anyone
(including the child which the restriction is to apply to)” (App. Br. 15).
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The Examiner finds that Kuhn teaches “[r]emote controls may include
biometric identification capability for passively or actively identifying users,
and location technology . . .” (Ans. 29). The Examiner concedes that Kuhn
“does not explicitly teach means for temporarily changing parental
restriction” but instead replies upon Lynch for this feature, as Lynch
discloses “a rating control system with temporary override capability” (id. at
30). We agree with the Examiner.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis. We note that Appellants’ arguments do
not take into account what the collective teachings of the prior art would
have suggested to one of ordinary skill in the art and is therefore ineffective
to rebut the Examiner’s prima facie case of obviousness. Our reviewing
court points out:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.

See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(citations omitted,
emphasis added). This reasoning is applicable here.
Appellants highlight that Lynch’s entry of a password only identifies
that a password has been entered and that such a disclosure teaches nothing
as to identifying the presence of a supervisory individual (see App. Br. 15).
While we agree that Lynch’s entering of a password does not in itself detect
the presence of a particular individual, we point out that the Examiner uses
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Kuhn, not Lynch, for disclosing automatically detecting the presence of an
individual and determining the identity of the individual (see Ans. 4-6)(see
also Kuhn ¶¶ [0015] – [0017]). The Examiner uses Lynch to teach means
for temporarily changing parental control restrictions in response to
obtaining information (Ans. 6) (see also Lynch p.5, l. 16 to p.6, l. 9). In
other words, it is the combined teachings of Kuhn and Lynch that the
Examiner is relying on to teach and/or suggest to those of ordinary skill in
the art temporarily changing parental control restrictions in response to
identifying the presence of at least one supervisory individual (see Ans. 31-
32). Here, Appellants’ arguments are merely attacking the teachings of
Lynch, without regard to the teachings in Kuhn and the combination thereof.
Furthermore, the Examiner has found equivalent structures for purposes of
section 112, paragraph 6, as the Examiner has shown identical functions, in
substantially the same way, with substantially the same result in the
combined teachings of Kuhn and Lynch. Kemco Sales, Inc. v. Control
Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000).
Appellants further contend that “[t]he recitation of the benefit of the
combination as provided by the Examiner is ostensibly applicable to any
combination and thus lacks probative value” and “the Examiner has not
made out a proper rationale for these combinations . . .” (App. Br. 18-19)
(emphasis omitted) . The Examiner finds because Kuhn and Lynch describe
comparable devices “one of ordinary skill at the time the invention was
made, given the teachings of Kuhn and Lynch, would have recognized the
benefit or advantage of enhanced functionality as an apparent reason to
combine the two teachings . . .” (Ans. 37). We agree with the Examiner.
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A benefit gained from a combination is a motivation to make such a
combination. See Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1262
(Fed. Cir. 2012); cf. Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n. 8 (Fed. Cir. 2000) (explaining that a Court can examine the benefits
gained and lost by making the combination in finding a motivation to
combine). Here, the Examiner emphasizes how one having ordinary skill
would have recognized the benefits of enhancing the functionalities in Kuhn
(i.e., parental control and monitoring systems) by including the capability of
temporarily changing parental control restrictions. Thus, the Examiner has
found actual teachings in the prior art and has provided a rationale for the
combination. Further, the teachings suggest that the combination involves
the predictable use of prior art elements according to their established
functions. Accordingly, we find that the Examiner has provided sufficient
motivation for modifying Kuhn with the teachings of Lynch.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
combined disclosures of Kuhn and Lynch, the Examiner’s 35 U.S.C. §
103(a) rejection of representative independent claim 1, as well as claims 2,
3, 5-7, 9, 10, and 17-20 not separately argued by Appellants, is sustained.

Claims 4, 8, 11-16, 21-23
Regarding claim 4, Appellants argue the references individually (see
App. Br. 23). As such, our analysis supra relating to arguing references
individually is equally applicable here.
Regarding claims 8, 11-16, and 21-23, Appellants contend that “the
only rationale provided for their combination is again the supposed benefits
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of the modification . . .” (see App. Br. 25-28). As noted supra, a benefit
gained from a combination is indeed a motivation to make such a
combination and our analysis supra relating thereto is equally applicable
here.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
combined cited art, the Examiner’s 35 U.S.C. § 103(a) rejections of claim 1-
23 is sustained.

DECISION
We affirm the Examiner’s § 103 rejections.
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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