Ex Parte Guarin et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612045152 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/045, 152 03/10/2008 SANDRA GUARIN 36738 7590 06/01/2016 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. 50X9135.0l 8744 EXAMINER RYAN, PATRICK A ART UNIT PAPER NUMBER 2427 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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 SANDRA GUARIN, MANISH GUPTA, YUKO NISHIKAWA, EDGAR ALLAN TU, and SABRINA TAI-CHEN YEH Appeal2014-007929 Application 12/045,152 Technology Center 2400 Before MAHSHID D. SAADAT, TERRENCE W. McMILLIN, and MELISSA A. RAAP ALA, Administrative Patent Judges. RAAP ALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 7, 9-11, 13, and 14, which are all of the claims currently pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. Appeal2014-007929 Application 12/045,152 INVENTION Appellants' invention is directed to allowing viewers to select a position for subtitle display on a TV screen. Claim 7 is exemplary of the subject matter on appeal: 7. A system, comprising: a display; a processor associated with the display, the processor configured for receiving programming including subtitle text from a channel to be presented on the display; the processor configured to change a screen position at which the subtitle text is displayed in response to a viewer command, wherein the processor is configured to present an upper level user interface (UI) with plural subtitle-related selection options and selecting an onscreen position of subtitles, wherein by means of selecting a subtitle position selector on the upper level UI, the processor, responsive to selection of the subtitle position selector, is configured for subsequently presenting a lower level UI showing user-selectable position options permitting a user to select a position option from a predetermined set of subtitle position options listed on the lower level UI, at least a first position option being to overlay subtitles on video and at least a second position option being to present subtitles in a subtitle pane and not overlaid on video, wherein responsive to a user selecting the first position option in which subtitles are displayed on screen but not overlaid on video, the processor is configured to display subtitles in a subtitle pane in which no video appears and a video pane in which video appears is squeezed to be smaller from what would otherwise be a full screen display when no subtitles appear, wherein responsive to the second position option being selected, the processor is configured to present subtitles overlaid on video such that the processor is configured to respond to selection of at least one position option such that subtitles are overlaid on video and is also configured to respond 2 Appeal2014-007929 Application 12/045,152 to at least one pos1t10n option to such that subtitles are displayed on screen but not overlaid on video. REJECTIONS ON APPEAL Claims 7, 9-11, 13, and 14 stand rejected under 35 U.S.C. § 112, i-f 2, as being indefinite. Act. 3--4. Claims 7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Yang (US 2009/0027552 Al; Jan. 29, 2009), Bowser (US 2003/0189669 Al; Oct. 9, 2003), and Johnson (US 2006/0170824 Al; Aug. 3, 2006). Act. 5-10. Claims 11, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Yang, Bowser, Johnson, Miller (US 6,661, 437 Bl; Dec. 9, 2003), and Modi (WO 2005/057920 Al; June 23, 2005). Act. 10-12. ANALYSIS We have reviewed the Examiner's rejections in consideration of Appellants' contentions and the evidence of record. We disagree with Appellants' conclusions that the Examiner's rejections of the claims are in error. 35 US. C. § 112 Rejection Appellants do not present any arguments contesting the indefiniteness rejection, but instead acknowledge there is a scrivener error in independent claim 7. App. Br. 6. Accordingly, we summarily sustain the 35 U.S.C. § 112, i-f 2 rejection of claim 7, and its dependent claims 9-11, 13, and 14. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) ("When the 3 Appeal2014-007929 Application 12/045,152 appellant fails to contest a ground of rejection to the Board, ... the Board may treat any argument with respect to that ground of rejection as waived."). 35 US.C. § 103(a) Rejections Appellants contend Johnson does not teach overlaying text from a channel to be displayed onto video as required by claim 7, but rather describes on-screen text generated by the device itself (e.g., volume control). App. Br. 5. Appellants further contend Yang teaches away from claim 7 because Yang's purpose is to avoid overlaying the text onto video. App. Br. 3-5; Reply Br. 1-2. We are not persuaded by these arguments. Appellants do not dispute the Examiner's findings that Johnson teaches a first position option to overlay subtitles on video and a second position option to present subtitles not overlaid on video. Ans. 3 (citing Johnson i-fi-132-34). The Examiner further finds, and Appellants do not dispute, that Yang, not Johnson, is relied upon to teach "subtitle text from a channei." Id. Therefore, we are not persuaded by AppeUants' arguments that Johnson's text is on-screen text, because it is the combination of Yang and Johnson that teaches overlaying text from a channel to be displayed onto video. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references."). We are also not persuaded that Yang teaches away from claim 7. To teach away, a reference must actually "criticize, discredit, or otherwise discourage" investigation into the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, the claim solution is not to overlay text onto video, but to permit a user to select from a position option to overlay subtitles and a position option to not overlay subtitles. Appellants fail to 4 Appeal2014-007929 Application 12/045,152 establish that Yang criticizes, discredits, or otherwise discourages permitting the user to select to overlay or not overlay the text. Both options have disadvantages, in that either the video is obstructed by the text or the video is squeezed to be smaller. A given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. Medichem, S.A. v. Rolabo, S.L.~ 437 F.3d 1157, 1165 (Fed. Cir. 2006) For the reasons stated above, Appellants' arguments do not persuade us of error in the rejection of claim 7. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 7, and its dependent claims 9--11, 13, and 14, which are not argued separately. DECISION We affirm the Examiner's decision to reject claims 7, 9--11, 13, and 14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±). AFFIRMED 5 Copy with citationCopy as parenthetical citation