Ex Parte Burgess et al

Patent Trial and Appeal Board

Jun 27, 2016

13053548 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/053,548 03/22/2011 John Townsend BURGESS III
113648 7590 06/29/2016
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404-7999
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0320-138 8431
EXAMINER
JOSHI, SURAJ M
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
Mailroom@ppblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN TOWNSEND BURGESS III, NEEL GOYAL,
and FRANK A. HUNLETH
Appeal2014-005214
Application 13/053,548 1
Technology Center 2400
Before ELENI MANTIS MERCADER, JEFFREY A. STEPHENS, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
THE CLAIMED INVENTION
Appellants' claimed invention relates to selectively remapping inputs
to a TV Internet Browser to enable proper operation of the browser.
1 According to Appellants, the real party in interest is Hillcrest Laboratories
Inc. App. Br. 2.
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Application 13/053,548
Abstract. Claim 1 is illustrative of the subject matter of the appeal and is
reproduced below.
1. A system comprising:
a television;
a TV Internet browser using said television to display web
pages from said Internet;
a processor associated with said television and configured
to receive inputs for controlling said TV Internet browser;
wherein when said processor receives a button press input
associated with a predetermined command, said processor
determines whether a currently viewed web page on said TV
Internet browser is running a predetermined plug-in in a
predetermined mode and, if so, remapping said button press input
from said predetermined command to another command which
is intended to terminate said predetermined plug-in and
sending said another command to said TV Internet browser,
otherwise, if not, sending said predetermined command to said
TV Internet browser.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1--4, 6-10, 12-16, and 18-20
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Nadalin (US 2007/0262952 Al; publ. Nov. 15, 2007), Liberty et al. (US
7,239,301; iss. July 3, 2007) (hereinafter "Liberty"), and LeBlanc et al. (US
2003/0189589 Al; publ. Oct. 9, 2003) (hereinafter "LeBlanc"), collectively
referred to herein as "the combination."
(2) The Examiner rejected claims 5, 11, and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination ofNadalin, Liberty,
LeBlanc, and Brewer et al. (US 2009/0307602 Al; publ. Dec. 10, 2009)
(hereinafter "Brewer").
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants' arguments, and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in (1) the May 20, 2013 Final Office Action (Final Act. 2-12),
(2) the August 1, 2013 Advisory Action (Adv. Act. 2), and (3) the January
17, 2014 Examiner's Answer (Ans. 2-15). We highlight and address,
however, specific findings and arguments below for emphasis.
(1) Determining whether a predetermined plug-in is running
Appellants argue each ofreferences-Nadalin, Liberty, and LeBlanc
- in the combination fails to teach or suggest "determin[ing] whether a
currently viewed web page on [a] TV Internet browser is running a
predetermined plug-in," as recited in claim 1 and similarly recited in claims
9 and 15. See App. Br. 8-10. As to Nadalin, Appellants argue it merely
teaches that "a media player [can] chang[ e] the button configuration for a
mouse based on an operating mode of [the] media player." App. Br. 9
(citing Nadalin i-fi-f 15, 29; Fig. 6); Reply Br. 2. As to Liberty, Appellants
argue although it teaches having "a TV Internet browser using a television to
display a web page from the Internet[,] ... it say[ s] nothing about a
determination being made whether a webpage on a TV browser is running a
predetermined plug-in." App. Br. 9 (citing Liberty 2:49-54; 3:25-55; Fig.
3); Reply 2. As to LeBlanc, Appellants argue it "makes no mention
whatsoever of a TV Internet browser," and instead teaches "streaming
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content to a user's 'portable access device' such as a table PC." App. Br. 10
(citing LeBlanc i-fi-15, 62, 82); Reply Br. 2-3.
The Examiner finds the combination teaches or suggests the disputed
limitation. Ans. 11. As to Nadal, the Examiner finds it teaches "remapping
of input device commands dependent upon a change in the operating mode,
and ... [thus] must determine whether it is running in a predetermined mode
(whether or not the media play application is running)." See id. (citing
Nadalin i-f 15, Fig. 6). As to Liberty, the Examiner finds it teaches a TV
Internet browser system upon which a media application can be
implemented. Ans. 12 (quoting Liberty 2 :49-54 ("This trend is likely to
continue, potentially with an end result that most if not all of the
communication devices currently found in the household will be packaged
together as an integrated unit, e.g., a television/VCR/DVD/internet
access/radio/stereo unit.")). As to LeBlanc, the Examiner finds it teaches an
internet browser can be used to stream multimedia content, including video,
"which is well known in the prior art to use specialized software such as
various plug-ins (essentially media play applications) to stream the media
content." See id. (citing LeBlanc i-fi-162, 82). The Examiner concludes that
one of ordinary skill in the art would find the disputed limitation obvious in
light of the combined teachings of the references. Ans. 12.
We are not apprised of any error in the Examiner's finding that the
combination teaches or suggests this disputed limitation. See Nadalin i-f 15,
Fig. 6; Liberty 2:49-54; LeBlanc i-fi-162, 82. Appellants incorrectly focus on
the references individually. The combination, and its combined teachings,
must be considered as a whole, rather than attacking individual references in
isolation. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
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(finding each reference "must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole"); see also In re Keller,
642 F.2d 413, 425 (CCPA 1981) (finding the relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of the references).
(2) Remapping said button press input
Appellants argue the combination, and Nadalin in particular, fails to
teach or suggest "if so, remapping said button press input from said
predetermined command to another command which is intended to terminate
said predetermined plug-in and sending said another command to said TV
internet browser," as recited in claim 1 and similarly recited in claims 9 and
15. See App. Br. 11-12; Reply Br. 3. According to Appellants, although
Nadalin teaches that a media player can include a close application function,
Nadalin fails to teach "'remapping a button press input from a predetermined
command' (e.g., a back button) 'to another command which is intended to
terminate said predetermined plug-in and sending said another command
to said TV internet browser.[']" App. Br. 12. Appellants also argue with
respect to Nadalin's teachings that (i) the "media application cannot
correspond [at] the same time to both the TV Internet browser and to the
plug-in" and (ii) "there is no TV Internet browser running the media player."
Reply Br. 4. As to LeBlanc, Appellants also assert "the 'back' command ...
refers to replay and NOT to returning to a previous page." See id.
The Examiner finds the combination teaches the disputed limitation.
See Ans. 13. The Examiner finds Nadalin teaches a media player having
functions, such as a close application function 432, which can be mapped to
standard mouse messages (e.g., roller ball click, left button click) so that
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when a user issues a re-mapped command (e.g., left button click) on a user
device (e.g., a four button mouse) the re-mapped media player function
occurs (e.g., close application). See id. (citing Nadalin i-f 29). The Examiner
additionally finds LeBlanc also teaches having a "Back" function that
terminates a display of a full-screen video feed and returns to a previous
video, low resolution display screen. See id. (citing LeBlanc i-f 82).
We agree with the Examiner that the combination teaches or suggests
the disputed limitation. For example, we agree that the teachings ofNadalin
and LeBlanc teach remapping a button press input (e.g., a mouse button
click) from its standard command to another command that is intended to
terminate the media player application (i.e., the predetermined plug-in) and
sending the close application command to the TV internet browser. See
Nadalin i-fi-115, 29 (teaching standard pointing devices can support
remapping the close application function for the media player application),
Fig. 6; Adv. Act. 2; see also supra (finding the combination teaches a media
player application can comprise a TV internet browser with a plug-in). We
also disagree with Appellants' arguments that the media player application
cannot refer to both the TV Internet browser and the plug-in, as well as that
there is no TV Internet browser running the media player. Appellants'
arguments fail to reflect it is the combined teachings of the references -
including Liberty's teaching of a TV internet browser and LeBlanc's
teaching of an internet browser with a plug-in for streaming multimedia
content - that is the relevant inquiry for obviousness. See supra; Liberty
2:49-54; LeBlanc i-fi-162, 82; Keller, 642 F.2d at 425.
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(3) Whether the references are properly combined
Appellants argue that the Examiner did not provide sufficient
reasoning for combining the references. App. Br. 12-13 (citing Final Act. 7
(arguing "in order to simplify user controls" is insufficient)). Appellants
further argue "the references teach away from being combined." App. Br.
13. Specifically, Appellants argue Nadalin "teaches remapping of
conventional mouse buttons to work with a media player in a conventional
computer environment while Liberty is concerned with innovative 3D
pointing devices being used with browsers in less conventional
environments." See id.
The Examiner finds that the references are properly combined. See
Final Act. 7-8. Specifically, the Examiner finds it would have been obvious
to one having ordinary skill in the art to combine the teachings (i) ofNadalin
and Liberty to simplify user controls and (ii) ofNadalin, Liberty, and
LeBlanc to better control and view video content. Final Act. 7-8.
We find Appellants' arguments unpersuasive and find the Examiner
provides "articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed.
Cir. 2006). The Examiner reasons a person of ordinary skill in the art would
have been motivated to combine the references to simplify user controls and
to better control and view video content. See Final Act. 7-8; KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill."). We also
find Nadalin does not teach away from making the combination. Teaching
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away requires a reference to actually criticize, discredit, or otherwise
discourage investigation into the claimed solution. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). We find Nadalin does not do so. See
Nadalin i-fi-f 15, 29.
(4) Processor within an input device
Appellants argue the combination, and Liberty in particular, fails to
teach or suggest that the "processor is disposed within an input device," as
recited in claim 2. App. Br. 13-14. Specifically, Appellants argue Liberty
fails to teach that "it is the processor associated with the television that
determines whether a currently viewed web page on said TV Internet
browser is running a predetermined plug-in in a predetermined mode that is
disposed within an input device." App. Br. 14. According to Appellants,
although Liberty teaches having a processor within an input device, Liberty
fails to teach that this processor "' determin[ es] whether a currently viewed
web page on said TV Internet browser is running a predetermined plug-in in
a predetermined mode.'" See id. (citing Liberty Fig. 7).
The Examiner finds the combination, and Liberty in particular,
teaches a processor within an input device, which can process the mapping
of movements and inputs of the input device. See Ans. 14 (citing Liberty
col. 4, 11. 37-50; Fig. 7). The Examiner further finds these teachings from
Liberty, when combined with the teachings ofNadalin and LeBlanc, teach or
suggest that the processor could perform Nadalin and LeBlanc's teachings,
rendering obvious the disputed limitation.
We agree with the Examiner that the combination teaches or suggests
the disputed limitation. We also agree that one of ordinary skill in the art
would have found it obvious that the processor could be used to perform all
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of the processing for the system. See Liberty (Fig. 7 (teaching a processor));
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability."); see also id. at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."). In addition, we are not
persuaded that combining Nadalin, Liberty, and LeBlanc in the manner
proffered by the Examiner is "uniquely challenging or difficult for one of
ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
(5) Back command
Appellants argue the combination, and LeBlanc in particular, fails to
teach or suggest that the "predetermined command is a back command
which is intended to return said TV Internet browser to a previously viewed
web page," as recited in claim 4. App. Br. 14--15. Appellants argue claim 4
depends from claim 2, which depends from claim 1, and thus, it is the
processor associated with the television and within the input device that
(i) determines whether a currently viewed web page on the TV internet
browser is running a predetermined plug-in in a predetermined mode and
(ii) remaps a button press input from a back command. See App. Br. 15.
Appellants also argue LeBlanc fails to teach a TV internet browser. Id.
The Examiner finds the combination teaches the disputed limitation.
See Ans. 14. The Examiner finds LeBlanc teaches remapping the "Back"
command, which normally returns the browser to the previous web page, in
accordance with the disputed limitation. See id. (citing LeBlanc i-f 82). The
Examiner further finds LeBlanc's teachings combined with Nadalin and
Liberty teach or suggest the disputed limitation, including a processor within
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the input device that, inter alia, determines whether a viewed web page on
the TV internet browser is running a predetermined plug-in in a
predetermined mode and remaps the back command. See id.
We agree with the Examiner that the combination teaches or suggests
the disputed limitation, including based on our above findings. Appellants'
arguments fail to reflect that it is the combined teachings of the references
-including Nadalin's remapping of input device buttons, Liberty's TV
internet browser, and LeBlanc's internet browser with a plug-in for
streaming multimedia content - that is the relevant inquiry for obviousness.
See supra; Nadalin i-fi-115, 29; Liberty 2:49-54; LeBlanc i1i162, 82; see also
Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425.
(6) FLASH or SIL VERLIGHT plug-ins
Appellants argue the combination ofNadalin, Liberty, LeBlanc, and
Brewer fails to teach or suggest determining "whether a web page on a TV
Internet browser is running FLASH or SILVERLIGHT," in accordance with
claim 5, and claim 1 from which it depends. App. Br. 16. Specifically,
Appellants contend "[ n Jo citation is offered to any of the four references for
the determination being made with respect to a FLASH or SIL VERLIGHT
plug-in." See id.
The Examiner finds Brewer teaches using the Silverlight or Flash for
plug-ins for delivering media content. Ans. 15 (citing Brewer i-f 15). The
Examiner also finds, in accordance with the above findings, "N adalin,
Liberty[,] and LeBlanc teach the elements of Claim 1." Id. The Examiner,
thus, finds the combination, when combined with the additional features
taught in Brewer, teaches or suggests the disputed limitation "as it would be
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obvious that a video plug-in used in an internet browser, (which could be
implemented on a TV) could be Flash or Silverlight." Id.
We agree with the Examiner that the combination teaches or suggests
the disputed limitation, including based on our above findings. Appellants'
arguments again fail to reflect that it is the combined teachings of the
references -including N adalin' s remapping of input device buttons,
Liberty's TV internet browser, LeBlanc's internet browser with a plug-in for
streaming multimedia content, and Brewer's Flash and Silverlight media
plug-ins -that is the relevant inquiry for obviousness. See supra; Nadalin
i-fi-115, 29; Liberty 2:49-54; LeBlanc i1i162, 82; Brewer i-f 15; see also Merck,
800 F.2d at 1097; Keller, 642 F.2d at 425.
CONCLUSION
Based on our findings above, we sustain the Examiner's rejection of
claims 1, 2, 4, and 5. We also sustain the Examiner's rejection of claims 3
and 6-20 for which Appellants did not provide separate arguments for
patentability.
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DECISION2
We affirm the Examiner's rejections of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
2 In the event of further prosecution, we suggest that the Examiner consider
whether at least one of the conditional steps of method claim 9 need not be
performed under the broadest reasonable interpretation of the claim.
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