Ex Parte HenryDownload PDFPatent Trial and Appeal BoardJan 12, 201712308315 (P.T.A.B. Jan. 12, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation