Ex Parte Henshaw et al

Patent Trial and Appeal Board

Aug 8, 2016

12586923 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/586,923 09/28/2009 Jeffrey David Henshaw
98783 7590 08/10/2016
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
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.
111094-8004.USOO 2703
EXAMINER
ULRICH, NICHOLAS S
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY DAVID HENSHAW, ALEXANDER IRVIN
HOPMANN, CHRISTOPHER ANDREW EV ANS, and
DANIEL EV AN SOCOLOF
Appeal2015-002235
Application 12/586,923
Technology Center 2100
Before LINZY T. McCARTNEY, MELISSA A. HAAPALA, and
MATTHEW J. McNEILL, 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 final
rejection of claims 1, 2, and 5-7, which are all of the claims currently
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2015-002235
Application 12/586,923
REJECTION ON APPEAL
Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Abrams (US 2006/0104600 Al; May 18,
2006), Glaser (US 2005/0060751 Al; Mar. 17, 2005), and Keener (US
2008/0270541 Al; Oct. 30, 2008).
ISSUE
Appellants' contentions present us with the following dispositive
issue: Did the Examiner set forth sufficient articulate reasoning, with
rational underpinnings, to support combining the teachings of Abrams,
Glaser, and Keener?
ANALYSIS
We have reviewed the Examiner's rejection in consideration of
Appellants' contention and the evidence of record. We agree with
Appellants that the Examiner has failed to establish the claims are
unpatentable over the cited prior art.
The Examiner relies on Keener to teach transmitting user initiated
feedback messages to an object of the selected stream and not to objects of
non-selected streams, as recited in the claims. Final Act. 4. The Examiner
concludes it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the teachings of Abrams and
Glaser to include Keener's teachings of transmitting feedback "in order to
obtain transmitting user initiated feedback messages to an object of a
selected stream and not to objects of non-selected streams." Final Act. 4.
The Examiner finds "[i]t would have been advantageous for one to utilize
such a combination as providing enhancements to traditional approaches of
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Appeal2015-002235
Application 12/586,923
providing live content over the internet, as suggested by Keener and would
provide a mechanism for a user to provide feedback to a performer in their
current focus. Final Act. 4 (citing Keener i-fi-1 4--5). See also Ans. 6.
Appellants contend the Examiner has not identified a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the prior are elements in the manner claimed, but rather has merely
identified shared advantages that Appellants' invention "as claimed" share
with the invention "as combined" from the cited references. App. Br. 7.
Appellants argue the "shared advantage test" cannot qualify as a reason to
make the combination because any combination that would arrive at an
invention will always and necessarily share the same advantages as the
invention. Id. Appellants further argue the Examiner's reason to combine
strongly suggests the use of improper hindsight. Reply Br. 5.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We
agree with Appellants that the Examiner's reason to combine does not have
the requisite rational underpinning required to support the legal conclusion
of obviousness. See App. Br. 7. The Examiner's rationale for combining
Keener's teaching of providing viewers a mechanism to provide feedback to
a talent person speaking live to the viewer over the web (Keener i-fi-150-52)
with Glaser's teaching for permitting attendees at a public performance to
selectively view video of a performer (Glaser i-fi-f 11, 24) and Abram's
teaching of selecting a video stream (camera angle) for a live event (Abram
i1 65) essentially consists of a conclusion that the combination would result
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Appeal2015-002235
Application 12/586,923
in the claimed invention. In KSR, the Supreme Court guides that "[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of argument reliant upon ex post reasoning."
KSR, 550 U.S. at 421. The Examiner's articulated reasoning is insufficient
to support the combination because it improperly uses the benefit of
Appellants' claims as a guide and relies upon ex post reasoning.
For the reasons stated above, Appellants persuade us of error in the
rejection of claims 1, 2, and 5-7. Accordingly, we do not sustain the 35
U.S.C. § 103(a) rejection of these claims.
DECISION
We reverse the Examiner's decision to reject claims 1, 2, and 5-7.
REVERSED
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