Ex Parte Gulli et al

Patent Trial and Appeal Board

Dec 12, 2013

11297840 (P.T.A.B. Dec. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANTONINO GULLI, ANTONIO SAVONA, and
MARIO VERI
____________________

Appeal 2011-006721
Application 11/297,840
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-4, 6, 11-15, 17, and 22. Claims 5, 7-10, 16, and 18-21 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention pertains to information
management and retrieval in general, and more particularly, to preview
video content (Spec. 2, [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method, comprising:
in response to a search request, (i) receiving at a network
interface device of a computer system one or more objects
associated with video content, and (ii) presenting via a display
of the computer system one or more static images each
corresponding to an object from the one or more objects,
wherein the one or more static images are derived from one or
more frames of video signals;
while the one or more static images are being presented,
detecting by a sensor of the computer system whether a pointer
is positioned over a static image associated with a first object
from the one or more objects; and
in response to detecting the pointer positioned over the
static image associated with the first object, substituting a
presentation of the static image associated with the first object
with a presentation of a video signal associated with the first
object.

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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Duhault US 6,456,334 B1 Sep. 24, 2002
Hayward US 2004/0045040 A1 Mar. 4, 2004

Claims 1-4, 6, 11-15, 17, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Duhault and Hayward.

II. ISSUE
The main issue before us is whether the Examiner has erred in
concluding that Duhault and Hayward are properly combinable.

III. ANALYSIS
Appellants contend that the “[m]otivation to combine Duhault with
Hayward is flawed” (App. Br. 7, emphasis omitted) since “the reasoning
provided by the Examiner does not, in fact, motivate the combination. . .”
(App. Br. 8). Appellants also contend that the “[m]otivation to combine
Duhault with Hayward is indefinite” (App. Br. 8, emphasis omitted) since
the Examiner’s rationale “does not permit Appellants a clear understanding”
of why it would have been obvious to combine the references (App. Br. 10).
According to Appellants, the “[m]otivation to combine Duhault with
Hayward is arbitrary” (App. Br. 10, emphasis omitted) since “it is not
specifically connected with the present claims” (App. Br. 11).
Appellants further contend that “[t]he proposed combination would
not arrive at the present invention” (App. Br. 11, emphasis omitted).
Appellants contend that although the Examiner “appears to believe that it
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would have been likely for a person of ordinary skill in the field of Internet
search to have considered references in the field of television art. . .” (App.
Br. 13), “the Examiner has not resolved the level of ordinary skill in the
pertinent art. . . ” (App. Br. 14). According to Appellants, “the Examiner
does not support his claim that the evaluation of obviousness is being
performed at the time the invention was made” (App. Br. 15).
However, the Examiner maintains that “[o]ne of ordinary skill in the
art wishing to use the video interface taught by Duhault would have been
motivated to modify Duhault to include a search interface, such as that
taught by Hayward in order to provide a user-friendly interface for searching
a large amount of media” (Ans. 9). The Examiner concludes that
“[p]roviding a more user-friendly interface promotes increased consumer
satisfaction and increased sales numbers of a product” (Ans. 10). The
Examiner explains that “[a] motivating factor for improvements in industry
is to provide a more user-friendly interface in order to improve user
satisfaction, increased sales numbers of the product, etc.” (Id.).
The Examiner also explains that “[g]iven the fact that Duhault
displays videos from URL addresses, and Hayward retrieves URL address
links to videos,… the video interface of Duhault could be modified to
retrieve the videos from URL sources returned from a search, such as that
taught by Hayward” (Ans.11). According to the Examiner, “Appellants’
invention is directed towards a video interface for displaying a plurality of
videos that are returned from a search” whereas “Duhault is also directed
towards a video interface for displaying a plurality of videos. . . ,” and thus
the Examiner “maintains that Duhault is reasonably pertinent to the
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particular problem with which the [A]ppellant[s] w[ere] concerned” (Ans.
12).
The Examiner points out that “it has been held that an invention may
be held to have been obvious without a specific finding of a particular level
of skill where the prior art itself reflects an appropriate level” (Ans. 13,
citing Chore-Time Equipment, Inc. v. Cumberland Corp., and Okajima v.
Bourdeau). The Examiner then explains that since “Appellant[]s[’]
specification states that it was well-known to provide still picture video
objects in response to a search,” “Hayward discloses providing URL links in
response to a search,” and “Duhault discloses displaying videos from URLs
as still images and allowing the user to play one of the videos. . .,” the level
of ordinary skill “was sufficient in 2005” that the ordinarily skilled artisan
“would have been motivated to combine the teachings of Duhault and
Hayward” (Ans. 14).
We find the weight of the evidence supports the Examiner’s findings
and conclusions.
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Although Appellants contend that the Examiner’s motivation to
combine the references is “flawed,” “indefinite,” and “arbitrary” (App. Br.
7-11), we find no error in the Examiner’s articulated reasoning to support a
conclusion of obviousness (Ans. 9-13). That is, we are of the view that the
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Examiner has provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR at 418.
In particular, we find no error with the Examiner’s finding that “[o]ne
of ordinary skill in the art wishing to use the video interface taught by
Duhault would have been motivated to modify Duhault to include a search
interface, such as that taught by Hayward in order to provide a user-friendly
interface for searching a large amount of media” (Ans. 9). That is, we find
no error with the Examiner’s rationale that “[p]roviding a more user-friendly
interface promotes increased consumer satisfaction and increased sales
numbers of a product” (Ans. 10). We find the articulated rationales to be
sufficient to justify the Examiner’s proffered combinations .
Thus, we find no error in the Examiner’s conclusion that it would
have been obvious to the ordinary skilled artisan to apply the well-known
teachings of Duhault and Hayward. The skilled artisan would “be able to fit
the teachings of multiple patents together like pieces of a puzzle” since the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR at
420-21.
Further, we are not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” at the time of Appellants’ invention. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR at 418).
Although Appellants contend that “[t]he proposed combination would
not arrive at the present invention” (App. Br. 11, emphasis omitted), (App.
Br. 16), Appellants appear to have viewed the references from a different
perspective than the Examiner. The issue here is not whether the entire
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system of Duhault when bodily incorporated with the entire system of
Hayward would have arrived at Appellants’ invention, but rather whether a
person of ordinary skill, upon reading Hayward, would have been motivated
to applyHayward’s teachings to that of Duhault to arrive at the claimed
invention.1 We find no error with the Examiner’s rationale that “[g]iven the
fact that Duhault displays videos from URL addresses, and Hayward
retrieves URL address links to videos,… the video interface of Duhault
could be modified to retrieve the videos from URL sources returned from a
search, such as that taught by Hayward” (Ans.11). As the Examiner
explains, “Duhault is reasonably pertinent to the particular problem with
which the [A]ppellant was concerned” (Ans. 12).
Although Appellants also argue that “the Examiner has not resolved
the level of ordinary skill in the pertinent art. . .” (App. Br. 14), as the
Examiner points out that “it has been held that an invention may be held to
have been obvious without a specific finding of a particular level of skill
where the prior art itself reflects an appropriate level” (Ans. 13). (See

1 "[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v.
United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). "The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981).

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Chore-Time Equipment, Inc. v. Cumberland Corp., and Okajima v.
Bourdeau).
Nevertheless, we find no error with the Examiner’s rationale, as
pointed out by Appellants, “that it would have been likely for a person of
ordinary skill in the field of Internet search to have considered references in
the field of television art. . .” (App. Br. 13). That is, a skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR at 420-21. We also
find no error with the Examiner’s explanation that since “Appellant[]s[’]
specification states that it was well-known to provide still picture video
objects in response to a search,” “Hayward discloses providing URL links in
response to a search,” and “Duhault discloses displaying videos from URLs
as still images and allowing the user to play one of the videos. . .,” the level
of ordinary skill “was sufficient in 2005” that the ordinarily skilled artisan
“would have been motivated to combine the teachings of Duhault and
Hayward” (Ans. 14).
Accordingly, Appellants have not shown that the Examiner erred in
rejecting claims 1-4, 6, 11-15, 17, and 22 over Duhault and Hayward.

IV. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-4, 6, 11-15, 17, and 22 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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