Ex Parte Eyer et al

Patent Trial and Appeal Board

Sep 29, 2016

12168052 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/168,052 07/03/2008
102824 7590 09/29/2016
HAVERSTOCK & OWENS, LLP
162 N. WOLFE ROAD
SUNNYVALE, CA 94086
FIRST NAMED INVENTOR
Mark Eyer
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.
SONY-68300 6712
EXAMINER
TELAN, MICHAEL R
ART UNIT PAPER NUMBER
2427
MAILDATE DELIVERY MODE
09/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK EYER and ROBERT BLANCHARD
Appeal2015-001422
Application 12/168,052
Technology Center 2400
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-20, which constitute all the
claims pending in this application. (Final Act. l; App. Br. 5.) 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellants' Specification ("Spec."), filed July 3, 2008; Appeal
Brief ("App. Br.") filed Apr. 22, 2014; and Reply Brief ("Reply Br.") filed
Oct. 14, 2014. We also refer to the Examiner's Answer ("Ans.") mailed
Aug. 11, 2014, and Final Office Action (Final Rejection) ("Final Act.")
mailed Feb. 4, 2014.
Appeal2015-001422
Application 12/168,052
Appellants' Invention
The invention concerns communication systems and methods for
providing information (display preferences) from a display device to a
source device and utilizing the data by the source device. (Spec. i-fi-1 2, 11,
14; Abstract.)
Representative Claim
Independent claim 1, reproduced below with and the key disputed
limitations emphasized, further illustrates the invention:
1. A method of operation of a communication system
compnsmg:
providing preferences;
sending the preferences from a display device for
controlling a source device; and
receiving data with the preferences for displaying on the
display device.
Rejections on Appeal
1. The Examiner rejects claims 1, 3-5, 11, and 13-15 under
35 U.S.C. § 102(a) as being anticipated by Son et al. (US 2007/0271522 Al;
pub. Nov. 22, 2007) ("Son").
2. The Examiner rejects claims 2, 12, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Son.
3. The Examiner rejects claims 6, 7, 9, 10, 16, 17, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Son and Stone et al. (US
2005/0073608 Al; pub. Apr. 7, 2005) ("Stone").
2
Appeal2015-001422
Application 12/168,052
4. The Examiner rejects claims 8 and 18 under 35 U.S.C. § 103(a)
as being unpatentable over Son, Stone, and Safadi et al. (US 2002/0122136;
pub. Sept. 5, 2002) ("Safadi").
ISSUE
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding that Son discloses "sending the
preferences from a display device for controlling a source device" (claim 1)
within the meaning of Appellants' claim 1 and the commensurate limitations
of claim 11?
ANALYSIS
The Anticipation Re} ection of Claims 1, 3-5, 11, and 13-15
Appellants argue independent claims l and 11 together (App. Br. 10-
12) and do not separately argue dependent claims 3-5 and 13-15 (App. Br.
12). Accordingly, we select independent claim 1 as representative of
Appellants' arguments and grouping with respect to claims 1, 3-5, 11, and
13-15. 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed the rejection of claims 1, 3-5, 11, and 13-15 in
light of Appellants' arguments. In reaching this decision, we have
considered all evidence and all arguments made by Appellants. We are not
persuaded that Appellants identify reversible error. We agree with and
adopt the Examiner's findings, reasoning, and conclusions as set forth in the
Final Office Action (Final Act. 2-17) and the Examiner's Answer (Ans. 2-
11 ). We highlight the following for emphasis.
3
Appeal2015-001422
Application 12/168,052
Appellants contend that Son does not disclose the disputed features of
representative claim 1, namely, "sending the preferences from a display
device for controlling a source device" (claim 1) (See App. Br. 9-13; Reply
Br. 4--8.) Specifically, Appellants contend that Son does not disclose a
"source" device and that "there is no support for the idea that the Son device
Bis a source device." (See App. Br. 11; Reply Br. 3---6.) Appellants further
contend that Son does not disclose "controlling" the source device and that
"Son shows only that individual devices have their own user-interface-tree-
management unit 150, which self-detects its own device information in order
to fit a user interface to the screen size and orientation." (See App. Br. 11-
12; Reply Br. 6-8.)
We find Appellants' contentions unpersuasive of Examiner error. As
an initial matter, we find the "source" device recited in the disputed claim
limitation is merely a label or name of the device. Nothing in the claim
delineates how the device functions as a "source" and Appellants do not
point to an explicit definition for a "source device" in their Specification.
The label applied to a claim element (device) - what the element is named
- is irrelevant. Such labeling does not distinguish one "type" of device
from another and does not further limit the claimed invention either
functionally or structurally. See Ex parte Nehls, 88 USPQ2d 1883, 1889
(BP AI 2008) (precedential). See also Ex parte Curry, 84 USPQ2d 1272,
1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003), affd,
(Rule 36) (June 12, 2006) ("wellness-related" data in databases and
communicated on distributed network did not functionally change either the
data storage system or the communication system used in the claimed
method); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88
4
Appeal2015-001422
Application 12/168,052
USPQ2d at 1887-90 (discussing non-functional descriptive material).
Similarly, we find Appellants' intention that the preferences be utilized "for
controlling a source device" does not further limit the claimed invention
either functionally or structurally. The intended use or purpose of the data
(preferences) sent from the display device - for controlling a source device
- does not distinguish the disputed limitation from the prior art. Our
reviewing court guides that patentability does not depend "on the use or
purpose" of a recited claim element. Catalina Marketing Int 'l., Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Such an
intended use or purpose "usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). That is the case here.
Furthermore, the Examiner has provided a detailed explanation of
how the disclosure of Son describes a "source" device (Ans. 3---6), as well as
how Son describes "controlling" device B (Ans. 6). We give claim language
its "broadest reasonable interpretation consistent with the [S]pecification" in
accordance with our mandate that "claim language should be read in light of
the [S]pecification as it would be interpreted by one of ordinary skill in the
art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations and internal quotation marks omitted). We broadly but reasonably
construe "source" as a "starting point" or "that from which something comes
into existence." (See Webster's New World College Dictionary, 4th Ed.
(1999), available at http://www.yourdictionary.com/) Likewise, we also
construe "control" (to control or controlling) to mean to "regulate,"
"operate," or "direct" - i.e., to cause or direct. (See Webster's New World
5
Appeal2015-001422
Application 12/168,052
College Dictionary, 4th Ed. (1999), available at
http://www.yourdictionary.com/)
As found by the Examiner, "a person of ordinary skill in the art
would construe a source device as a device from which data is moved" (Ans.
6). Son describes "device B request[ing] information on device A" (Son i-f
77) - in other words device B is the source of the data request. Therefore,
Son discloses a source device (device B). Further, the data (preferences)
found on device A are utilized to synchronize the user interface and
information displayed on device B. (Son i-fi-177-82.) In other words the
preferences from device A are utilized to control synchronization of the
interface of device B. Therefore, we find the preferences are utilized to
control device B. Accordingly, we agree with the Examiner's findings that
Son discloses "sending the preferences from a display device for controlling
a source device" (claim 1 ).
Thus, Appellants do not persuade us of error in the Examiner's
anticipation rejection of representative independent claim 1. Accordingly,
we affirm the Examiner's rejection of representative claim 1, independent
claim 11, and dependent claims 3-5 and 13-15, not separately argued with
particularity (supra).
The Obviousness Rejections of Claims 2, 6--10, 12, and 16--20
Appellants reiterate the same arguments made with respect to claim 1
(supra) with respect to independent claim 6. (App. Br. 13-16; see Reply Br.
8-11.) Appellants do not separately argue with particularity the patentability
of dependent claims 2, 7-10, 12, and 16-20. (See App. Br. 13-18; Reply Br.
8-11.) Thus, Appellants do not persuade us of error in the Examiner's
obviousness rejections of independent claim 6 and dependent claims 2, 7-
6
Appeal2015-001422
Application 12/168,052
10, 12, and 16-20 for the reasons set forth with respect to claim 1 (supra).
Son describes (teaches) controlling the source device. Accordingly, we
affirm the Examiner's obviousness rejections of claims 2, 6-10, 12, and 16-
20.
CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1, 3-5, 11, and 13-15 under 35 U.S.C. § 102(a).
Appellants have not shown that the Examiner erred in rejecting claims
2, 6-10, 12, and 16-20 under 35 U.S.C. § 103(a).
DECISION
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
7