Ex Parte Eytchison et al

Patent Trial and Appeal Board

Jun 24, 2013

10763701 (P.T.A.B. Jun. 24, 2013)

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.
10/763,701 01/22/2004 Edward Eytchison Sony-05200 7666
7590 06/24/2013
Jonathan O. Owens
HAVERSTOCK & OWENS LLP
162 North Wolfe Road
Sunnyvale, CA 94086
EXAMINER
LONG, ANDREA NATAE
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
06/24/2013 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 EDWARD EYTCHISON, DAN M. PHAN, NISHA
SRINIVASAN, and GANESH B. GOPALAKRISHANAN
____________________

Appeal 2010-009105
Application 10/763,701
1

Technology Center 2100
____________________

Before MARC S. HOFF, DENISE M. POTHIER, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 2, 4-14, 16-25, and 27-29.
2
We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1
The real party in interest is Sony Corporation.
2
Claims 3, 15, and 26 have been cancelled.
Appeal 2010-009105
Application 10/763,701

2
Appellants’ invention is a method and apparatus for organizing
audio/visual content and prefetching selected audio/visual content items
configured to be displayed to a user. The method and apparatus identifies a
preference corresponding to a user; detects a current display window; and
prefetches at least one audio/visual content in response, in part, to the
current display window and the preference (Spec. 2).
Claim 1 is exemplary of the claims on appeal:
1. A method comprising:
identifying a preference and a use pattern corresponding to a user;
detecting a current display window;
triggering prefetching at least one audio/visual content into an
application buffer in response to detecting the current display window, the
preference and the use pattern; and
setting a prefetch parameter for a frequency of prefetching in response
to the preference.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Nash US 2001/0021994 A1 Sept. 13, 2001
Janik US 2002/0013852 A1 Jan. 31, 2002
Claims 1, 2, 4-14, 16-25, and 27-29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Janik in view of Nash.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Oct. 30, 2009) and the Examiner’s Answer (“Ans.,”
mailed Dec. 28, 2009) for their respective details.

ISSUE
Appellants argue that neither Janik nor Nash teach detecting a current
display window and prefetching content in response (App. Br. 9-11).
Appeal 2010-009105
Application 10/763,701

3
According to Appellants, Janik does not teach application prefetch buffers
and does not detect the content of the current display window; Janik teaches
only time-based automation of providing content to a user (App. Br. 10).
Appellants’ contentions present us with the following issue:
Does the combination of Janik and Nash teach or fairly suggest
prefetching audio/visual content into an application buffer in response to
detecting the current display window, the preference and the use pattern?

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)

Appeal 2010-009105
Application 10/763,701

4
ANALYSIS
Independent claims 1 and 12 recite “prefetching at least one
audio/visual content into an application buffer in response to detecting the
current display window, the preference and the use pattern.” Independent
claims 13 and 27 recite “prefetching a content item into an application buffer
based on the prefetch parameter, the current display window and a use
pattern.” Independent claim 23 recites “a presentation layer configured for
transmitting the prefetched audio/visual content item to the prefetch buffer
based on a user’s preference, a current display window and a use pattern.”
The Examiner finds that Janik teaches detecting the current display
window (Ans. 4). Janik illustrates content preference selection web page 24
(Fig. 22). “The user uses the mouse to click on the boxes next to desired
content types . . . . Thereafter upon returning to content selection web page
22, only content object 20 that relate to the selected content types are
displayed to the user” (¶ [0082]). According to the Examiner, “[t]he
detecting is taught by the system recognizing selections by the user for
filtering information” (Ans. 14-15).
We do not agree with the Examiner’s finding that this disclosure
corresponds to detecting the current display window. At most, Janik teaches
accepting user input, on one particular window (i.e., web page), to indicate
which content types are to be displayed to the current user. Whenever
Janik’s preference selection window is not the detected “current” display
window (for example, when the preference selection window is closed, or
minimized, or not in the foreground), Janik fails to teach the limitation at
issue. A “system recognizing selections by the user for filtering information”
Appeal 2010-009105
Application 10/763,701

5
(Ans. 14-15) does not correspond to a determination or detection of which
display window is “current.”
We find that the combination of Janik and Nash does not teach all the
limitations of claims 1, 2, 4-14, 16-25, and 27-29. We will not sustain the
Examiner’s § 103 rejection.
CONCLUSION
The combination of Janik and Nash does not teach or fairly suggest
prefetching audio/visual content into an application buffer in response to
detecting the current display window, the preference and the use pattern.
ORDER
The Examiner’s rejection of claims 1, 2, 4-14, 16-25, and 27-29 is
reversed.

REVERSED

kis