Ex Parte Castano

Patent Trial and Appeal Board

Sep 14, 2016

12107215 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/107,215 04/22/2008 Guillermo Castano
36738 7590 09/16/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
50X9140.0l 9317
EXAMINER
LEWIS, JONATHAN V
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUILLERMO CASTANO
Appeal2015-005368
Application 12/107 ,215
Technology Center 2400
Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-005368
Application 12/107 ,215
ILLUSTRATIVE CLAIM
Claims 1 and 9, reproduced below, are illustrative of the claimed
subject matter:
1. A method for controlling a display device comprising:
accessing a data signal, wherein said data signal is a
portion of a content signal received by an audio/video display
device;
extracting encoded information from said data signal;
interpreting said encoded information to determine a
corresponding display device control code wherein said control
code causes a navigation through options to invoke features of a
display device; and
issuing said display device control code to said
audio/video display device to implement an operation thereof,
wherein the audio/video display device responsive to the control
code, automatically establishes at least one video and/or audio
setting of the display device according to the control code such
that no human interaction is required to establish the at least one
video and/or audio setting, the at least one video and/or audio
setting being a setting from a group including audio volume,
video channel, brightness, contrast, white balance, zoom, color
mode, sound mode, surround sound on, surround sound off,
resolution, and selection of letter box of wide screen mode.
9. A system for controlling a presentation system
compnsmg:
a data signal receiver for receiving a data signal
comprising encoded control information, said data signal being
part of a content signal received by said presentation system;
an interpretation module for interpreting said encoded
control information and determining display device control
information corresponding to said encoded control information
wherein said display device control information causes at least
one setting to be automatically established without human
interaction on the presentation system; and
a control signal communication module operable to
transmit said display device control information to the
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Application 12/107 ,215
presentation system for control thereat: the setting being at least
one setting selected from audio volume, video channel,
brightness, contrast, white balance, zoom, color mode, sound
mode, surround sound on, surround sound off, resolution, and
selection of letter box of wide screen mode.
THE REJECTIONS
Claims 9-16 stand rejected under 35 U.S.C. § 112, second paragraph
as indefinite.
Claims 1--4, 6, 7, and 9-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of Carlucci (US 2004/0040035 Al; Feb. 26,
2004), Park (US 8,006,278 B2; Aug. 23, 2011), and Pollack (US 5,153,580;
Oct. 6, 1992).
Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Carlucci, Park, Pollack, and Lee (US 2005/0177856
Al; Aug. 11, 2005).
ANALYSIS
The Indefiniteness Rejection of Claims 9-16
Appellant argues the Examiner erred in interpreting claims 9-16 as
means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph
based on the terms "interpretation module," "control signal communication
module," and "interface module." App. Br. 5---6. Specifically, Appellant
argues claim 9 does not recite the word "means" and the Examiner did not
rebut the presumption that§ 112, sixth paragraph does not apply. App. Br.
5---6. In addition, Appellant argues the Examiner erred in rejecting claims 9-
16 as indefinite because the Specification recites sufficient structure with its
disclosures of a computer system with registers and memories (App. Br. 7-8
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(citing Spec. iii! 19-20) ), "a circuit board with a small microprocessor"
(App. Br. 8 (citing Spec. if 35)), and additional (unidentified) structures
disclosed in paragraphs 36 and 37 of the Specification (App. Br. 8).
We disagree with Appellant and agree with the Examiner that claims
9-16 are indefinite as means-plus-functions limitations that lack adequate
corresponding disclosures of structure. While a claim limitation that does
not include the word "means" is presumed to not invoke § 112, sixth
paragraph, the limitation will still invoke § 112, sixth paragraph if "the claim
term fails to 'recite sufficiently definite structure' or else recites 'function
without reciting sufficient structure for performing that function.'"
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349-50 (Fed. Cir. 2015)
(en bane in relevant part) (quoting Watts v. XI Sys., Inc., 232 F.3d 877, 880
(Fed. Cir. 2000)).
To determine whether§ 112, sixth paragraph applies, we consider the
limitation as a whole, not merely the terms "interpretation module," "control
signal communication module," and "interface module." See id. at 1350
(describing "distributed learning control module" as an "introductory
phrase" and considering it as part of the entire passage in which it appears).
Similar to the limitation at issue in Williamson, neither the recited
"interpretation module," "control signal communication module," and
"interface module" nor the passages in which the terms appear recite
structures for performing the modules' associated functions. See id.
("'Module' is a well-known nonce word that can operate as a substitute for
'means' in the context of§ 112, para. 6."). Further, as our reviewing court
has held, "the fact that one of skill in the art could program a computer to
perform the recited functions cannot create structure where none otherwise
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Application 12/107 ,215
is disclosed." Id. at 1351 (citing Function Media, L.L.C v. Google, Inc., 708
F.3d 1310, 1319 (Fed. Cir. 2013)). Accordingly, we conclude the
presumption against means-plus-function claiming is rebutted and agree
with the Examiner that claims 9-16 invoke § 112, sixth paragraph.
We next consider whether Appellant's Specification discloses
sufficient structure that corresponds to the claimed functions. Id. at 1352.
"Structure disclosed in the specification qualifies as 'corresponding
structure' if the intrinsic evidence clearly links or associates that structure to
the function recited in the claim." Id. For computer-implemented means-
plus-function claim limitations, the corresponding structure must be more
than simply a general purpose computer or microprocessor. Id.; Aristocrat
Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed. Cir.
2008). The specification must disclose at least an algorithm for performing
the claimed function. Williamson, 792 F.3d at 1352.
Here, Appellant does not cite an algorithm for performing the
functions associated with the claimed modules. Having reviewed the
structures cited by Appellant (e.g., a computer with registers and memory
and a circuit board with a microprocessor) (see App. Br. 7-8) and
Appellant's Specification, we agree with the Examiner that the Specification
does not disclose adequate structures corresponding to the claimed
"interpretation module," "control signal communication module, or
"interface module." Accordingly, we sustain the Examiner's indefiniteness
rejection of claims 9-16 under 35 U.S.C. § 112, second paragraph.
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The Obviousness Rejections of Claims 1-20
Addressing the obviousness rejections of claims 1-20 collectively (see
App. Br. 9), Appellant argues the Examiner erred by using improper
hindsight to combine the teachings of disparate references (App. Br. 9-10).
Specifically, Appellant argues the Examiner's combination requires
improper hindsight because, "adhering to [the reference'] teachings, the
skilled artisan would simply use Carlucci' s segmentation messages to insert
ads and record programs, add close captioning to Carlucci' s content as
taught by Park, and control the display using the conventional IR signaling
from the remote control of Pollack." App. Br. 10; see also Reply Br. 2-3.
Having reviewed the Examiner's rejections in view of Appellant's
arguments and the evidence of record, we disagree with Appellant.
Appellant's arguments mischaracterize the substance of Examiner's
rejections and the cited prior art as a whole by suggesting that Carlucci's
teachings are limited to "inserting 'segmentation messages' into a video
stream," that Park is merely directed to closed captioning, and "Pollack has
nothing to do with control signals carried in content signals." App. Br. 9-
10; Reply Br. 2-3. The Examiner cites Carlucci, not for its disclosures of
segmentation messages, but as evidence of known data signals that include
encoded messages in the Extended Data Services ("XDS") portion of a
closed captioning signal. Ans. 4 (citing Carlucci i-fi-19, 47, 70, 121-123,
136-137). Notably, Appellant's Specification similarly describes that the
XDS portion of a closed captioning signal can include encoded control
information. Spec. i141; accord App. Br. 13 (claim 3 reciting "[t]he method
of claim 1 wherein said data signal is a closed captioning (CC) signal";
claim 4 reciting "[t]he method of claim 3 wherein an Extended Data Service
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(XDS) portion of said closed captioning (CC) signal comprises said encoded
information")).
Further, the Examiner cites Park and Pollack as evidencing control
codes in signals that change audio and video settings. Specifically, the
Examiner cites Park's teachings regarding control codes that automatically
establish a video setting as described in Park's disclosure of style options
that are "Set By Program," (see Final Act. 6-7 (citing, e.g., Park col. 6, 1.
50-col. 7, 1. 8, col. 8, 1. 59---col. 9, 1. 24)) and Pollack's teachings of
automatic changes of audio settings (e.g., decreasing volume or returning
volume to previous settings) (Final Act. 8 (citing Pollack Figs. 2, 3, col. 4, 11.
32--48).
The Examiner's rejections explain, and we agree, that it would have
been an obvious modification of Carlucci' s disclosures of XDS signals to
include control codes such as those evidenced by Park and Pollack. See
Final Act. 5---6; Ans. 17-18. Appellant offer no persuasive evidence or
reasoning to establish that the combined teaches would have been "uniquely
challenging or difficult for one of ordinary skill in the art." 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 (2007)).
Accordingly, we adopt as our own the Examiner's findings,
conclusions, and reasons and sustain the Examiner's rejections of claims 1-
20.
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DECISION
We affirm the Examiner's rejection of claims 9-16 under 35 U.S.C.
§ 112, second paragraph, and the Examiner's rejection of claims 1-20 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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