Ex Parte Gray et al

Patent Trial and Appeal Board

Aug 22, 2018

13790777 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/790,777 03/08/2013
84326 7590 08/22/2018
AT & T LEGAL DEPARTMENT-Toler
ATTN: PA TENT DOCKETING
ROOM2A-207
ONEAT&TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
James Harold Gray
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.
030075 Con 5480
EXAMINER
HUERTA, ALEXANDER Q
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
08/22/2018 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 JAMES HAROLD GRAY,
THOMAS JEFFERSON BROTHERS, and
WILLIAM RANDOLPH MATZ
Appeal2017-004381
Application 13/790,777
Technology Center 2400
Before JOSEPH L. DIXON, CARLL. SILVERMAN, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7 and 10-22, which are all of the claims pending
in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is AT&T Intellectual
Property I, L.P. App. Br. 1.
2 Claims 8 and 9 have been canceled. App. Br. 21.
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Application 13/790,777
INVENTION
Appellants' invention relates to an interactive content with enhanced
network operator control. Abstract. Claim 1 is illustrative and reads as
follows:
1. A method comprising:
demultiplexing, at a media device, a multiplexed content signal to
produce a first content stream corresponding to a first channel, a second
content stream corresponding to a second channel, and a hot key signal,
wherein the hot key signal indicates availability of alternate content
identified based at least in part on a search for content related in subject
matter to a program of the first content stream;
sending the first content stream from the media device to a display
device; and
sending, via the media device, a hot key associated with the hot key
signal to the display device to be displayed with the program of the first
content stream in response to a determination indicating that a genre of the
alternate content is a particular genre.
REJECTIONS
Claims 1, 2, 4, 6, 7, 17, 20, and 22 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over the combination of Zigmond et al.
(US 7,849,226 B2, issued Dec. 7, 2010) ("Zigmond"), Freeman et al. (US
Pat. 7,079,176 B 1, issued July 18, 2006) ("Freeman"), and Goldschmidt Iki
et al. (US 2003/0088612 Al, published May 8, 2003) ("Goldschmidt").
Final Act. 5-9.
Claims 3, 18, and 19 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over the combination of Zigmond, Freeman, Goldschmidt,
and Wagner et al. (US 2005/0132291 Al, published June 16, 2005)
("Wagner"). Final Act. 9-11.
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Claim 5 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Zigmond, Freeman, Goldschmidt, and
McKissick et al. (US 2006/0190966 Al, published Aug. 24, 2006)
("McKissick"). Final Act. 11.
Claims 10, 11, and 16 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Zigmond, Freeman,
Goldschmidt, and Ismail et al. (US 7,146,627 Bl, issued Dec. 5, 2006)
("Ismail"). Final Act. 12-14.
Claim 12 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Zigmond, Freeman, Goldschmidt,
Ismail, and Barone, JR. et al. (US 2005/0005303 Al, published Jan. 6, 2005)
("Barone"). Final Act. 14.
Claims 13-15 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Zigmond, Freeman, Goldschmidt,
Ismail, and Wagner. Final Act. 14--15.
Claim 21 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Zigmond, Freeman, Goldschmidt, and
Newton (WO 2004/053732 A2, published June 24, 2004) ("Newton"). Final
Act. 15-16.
ANALYSIS
We have reviewed the rejections of claims 1-7 and 10-22 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2-8) and in the Action (Final Act. 5-16) from
which this appeal was taken. We provide the following explanation for
emphasis.
Rejection of Claims 1, 2, 4, 5, 7, and 17-22 under 35 US.C. § 103(a)
Appellants contend the cited portions of Zigmond, Freeman, and
Goldschmidt fail to teach or suggest the limitation "sending, via the media
device, a hot key associated with the hot key signal to the display device to
be displayed with the program of the first content stream in response to a
determination indicating that a genre of the alternate content is a particular
genre," as recited in claim 1. App. Br. 5. Appellants argue that, in
Goldschmidt, the genre of the entry (i.e., sports) is associated with the genre
of the program, not with the genre of the supplemental content (i.e., a song),
as claim 1 requires. Id.
We are not persuaded of error. Appellants attack Goldschmidt
individually, even though the Examiner relied on the combination of
Zigmond, Freeman, and Goldschmidt in rejecting claim 1. In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425
( CCP A 1981)) ("The test for obviousness is what the combined teachings of
the references would have suggested to those having ordinary skill in the
art.").
The Examiner found the combination of Zigmond and Freeman fails
to teach that alternate content is identified based at least in part on a search
for content related in subject matter to a program of the first content stream,
and displaying supplemental content in response to a determination that a
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Application 13/790,777
genre of the alternate content is a particular genre. Final Act. 6; Ans. 3--4.
The Examiner found Goldschmidt, when combined with the cited teachings
of Zigmond and Freeman, teaches or suggests the missing limitation. Id.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See Keller, 642 F.2d at 425.
Here, Appellants have not addressed persuasively 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.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Zigmond, Freeman, and Goldschmidt
teaches or suggests the disputed limitations of claim 1.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 1, as well as the Examiner's§ 103(a) rejection of
independent claim 17, which Appellants argue are patentable for similar
reasons. App. Br. 7. We also sustain the Examiner's rejection of dependent
claims 2, 4--7, and 18-22, not argued separately with particularity. Id. at 4--
1 1.
Rejection of Claim 3 under 35 USC§ 103(a)
Appellants contend the Examiner erred because the cited portions of
Zigmond, Freeman, Goldschmidt, and Wagner do not teach or suggest the
limitation "returning to display of the first content stream after receipt of an
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indication that viewing of the alternate content is complete," as recited in
dependent claim 3. App. Br. 11.
We are not persuaded of error. We agree with the Examiner that
Figure 4 and paragraphs 27 and 39 of Wagner at least suggest using a remote
control device to return to the first content stream once viewing of the
alternate content is complete. Ans. 5---6. The disputed limitation of claim 3
is broad enough to encompass a user indicating that viewing of the alternate
content is complete by requesting to return to the display of the first content
stream. 3 Appellants point to nothing in the claim or Specification that limits
the "indication that viewing of the alternate content is complete" to a
particular type of indication. See, e.g., Spec. ,r 7 6.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Zigmond, Freeman, Goldschmidt, and Wagner teaches or
suggests the disputed limitation of claim 3. Accordingly, we sustain the
Examiner's§ 103(a) rejection of dependent claim 3.
Rejection of Claim 6 under 35 USC§ 103(a)
Appellants contend the Examiner erred because the cited portions of
Zigmond, Freeman, and Goldschmidt do not teach or suggest the limitation
"wherein the determination [indicating that a genre of the alternate
content is a particular genre] is based on information from a content type
field of the hot key signal," as recited in claim 6. App. Br. 12.
We are not persuaded of error because Appellants attack the prior art
references individually. As discussed above in the context of claim 1,
3 We give the claim limitations the broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997).
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nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See Merck, 800 F .2d at 1097.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Zigmond, Freeman, and Goldschmidt teaches or suggests
the disputed limitation of claim 6. Accordingly, we sustain the Examiner's
§ 103(a) rejection of dependent claim 6.
Rejection of Claims 10-16 under 35 US.C. § 103(a)
Appellants contend the Examiner erred because the cited portions of
Zigmond, Freeman, Goldschmidt, and Ismail do not teach or suggest the
limitations "in response to the determination indicating that the alternate
content is the particular genre, sending a hot key associated with the hot key
signal [that indicates availability of alternate content] to the display device to
be displayed with the program of the first content stream" and "in response
to the determination indicating that the alternate content is not the particular
genre, ignoring the hot key signal," as recited in independent claim 10. App.
Br. 13.
We are not persuaded of error because Appellants attack the prior art
references individually. As discussed above in the context of claim 1,
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See Merck, 800 F .2d at 1097. The Examiner found Zigmond
teaches providing a hot key signal ( a TV signal with an embedded logical
address) wherein the hot key signal indicates the availability of alternate
content (an associated Internet web page) and Goldschmidt teaches
determining that the alternate content is of a particular genre. See Ans. 7.
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The Examiner further relied on Ismail as teaching the ignoring of the hot key
signal when the alternate content is not of the particular genre. See id.
Appellants' arguments do not address the combination of prior art
disclosures on which the Examiner relied, but rather address each reference
individually.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Zigmond, Freeman, Goldschmidt, and Isamil teaches or
suggests the disputed limitation of claim 10. Accordingly, we sustain the
Examiner's§ 103(a) rejection of independent claim 10. We also sustain the
Examiner's§ 103(a) rejection of dependent claims 11 and 16, not argued
separately. See App. Br. 17. We also sustain the Examiner's§ 103(a)
rejection of claims 12-15, not argued separately with particularity. See id. at
17-19.
DECISION
We affirm the Examiner's decision rejecting claims 1-7 and 10-22.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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