Ex Parte Henry

Patent Trial and Appeal Board

Jan 12, 2017

12308315 (P.T.A.B. Jan. 12, 2017)

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.
12/308,315 12/12/2008 Jean-Baptiste Henry PF060085 4020
24336 7590 01/17/2017
TUTUNJIAN & BITETTO, P.C.
401 Broadhollow Road, Suite 402
Melville, NY 11747
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
01/17/2017 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):
patents@tb-iplaw.com
sandy@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-BAPTISTE HENRY
Appeal 2016-001749
Application 12/308,3151
Technology Center 2400
Before JUSTIN BUSCH, JOHN P. PINKERTON,
and SCOTT B. HOWARD, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 2, 3, 6—10, and 13—15, which constitute all of the claims
pending in this application. Claims 1, 4, 5, 11, and 12 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We have reviewed Appellant’s arguments in the Appeal Brief and
Reply Brief, and the Examiner’s response to Appellant’s arguments. We
concur with Appellant’s contention that the Examiner erred in rejecting
1 Appellant identifies Thomson Licensing as the real party in interest. App.
Br. 3.
Appeal 2016-001749
Application 12/308,315
independent claims 6, 8, and 13 under 35 U.S.C. § 103(a) because Martin2
and Gonzalez,3 alone or in combination, do not teach or suggest “wherein
said generating and transmitting are performed in response to a user’s
launching of a mosaic application at the receiver,” as recited in claim 6, and
as similarly recited in claims 8 and 13.4 App. Br. 12—13; Reply Br. 5.
The Examiner finds that the disputed limitation of claim 6 is taught by
Martin in view of Gonzalez. Ans. 4. In particular, the Examiner finds
paragraph 35 of Gonzalez “teaches an application program executed on a
television services set-top box (receiver) generates a matrix of still images
representing multiple video sources presently being broadcast in the
television services system.” Id. The Examiner also finds “Appellant makes
the argument that Gonzalez generates a matrix of still images.'''’ Id. (citing
App. Br. 11).
In the Reply Brief, Appellant argues, and we agree, the Examiner
misinterprets claim 6 because “the feature of, ‘generating and transmitting’
is ‘of a list containing at least two identifiers,’ rather than ‘of a matrix of
images.’” Reply Br. 5. Although Gonzalez teaches the receiver generates a
matrix of still images, we agree with Appellant that the Examiner has not
shown that Gonzalez, or the combination of Martin and Gonzalez, teaches or
suggests “generating and transmitting (of the list)... in response to a user’s
launching of a mosaic application at the receiver.” Id. Accordingly, the
Examiner’s finding that Martin in view of Gonzalez teaches the disputed
2 US 2002/0067376 Al; published June 6, 2002.
3 US 2007/0204297 Al; published Aug. 30, 2007.
4 Although Appellant makes other arguments in the Briefs, we do not
address them because we find this issue is dispositive.
2
Appeal 2016-001749
Application 12/308,315
limitation is in error because it is not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(Examiner’s burden of proving non-patentability is by a preponderance of
the evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
Thus, we do not sustain the rejection of claims 6, 8, and 13. For the
same reasons, we do not sustain the rejection of claims 2, 3, 7, 9, 10, 14, and
15, which depend from one of claims 6, 8, and 13.
DECISION
We reverse the Examiner’s decision rejecting claims 2, 3, 6—10, and
13-15.
REVERSED
3