Ex Parte Higgs

Patent Trial and Appeal Board

Dec 23, 2016

13474357 (P.T.A.B. Dec. 23, 2016)

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.
13/474,357 05/17/2012 Paul Higgs P36318-US1 4717
27045 7590 12/28/2016
F.RTrSSON TNC EXAMINER
6300 LEGACY DRIVE RABOVIANSKI, JIVKA A
M/SEVR 1-C-ll
PLANO, TX 75024 ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
12/28/2016 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):
kathryn.lopez@ericsson.com
michelle. sanderson @ eric sson .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL HIGGS
Appeal 2015-006670
Application 13/474,357
Technology Center 2400
Before CARLA M. KRIVAK, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies Telefonaktiebolaget LM Ericsson as the real party in
interest. App. Br. 1.
Appeal 2015-006670
Application 13/474,357
STATEMENT OF THE CASE
The Invention
Appellant’s invention relates to digital video content broadcasting,
digital video content delivery, and digital video presentation systems,
methods, and devices. Spec. 11. Appellant’s Specification explains that
smart TV technology allows users to not only watch video content but also
to run applications on the smart TV that can “provide a display of weather,
news, stocks, social networking information, Web search information,
shopping information, etc.” Spec. 127. However, the application content
can corrupt the appearance of the video content being displayed. Id. To
address this problem, the Specification describes various embodiments that
“allow the [video] content provider to include presentation override controls
that define presentation restrictions for the video content. Thus . . . the
content provider may assure that the smart TV features do not unduly
corrupt the appearance of the [video] content that is being provided.” Id.
Exemplary independent claim 1 is reproduced below.
1. A video content presentation terminal, comprising:
a video content receiver that is configured to receive video
content and presentation override controls for the video content,
the presentation override controls defining presentation
restrictions for the video content;
an applications processor that is configured to execute
applications on the video content presentation terminal, the
applications including presentation format requests; and
a controller that is responsive to the video content receiver
and the applications processor and that is configured to format
the video content that was received for presentation on a content
presentation device according to the presentation override
controls that were received, while preventing implementation of
the presentation format requests that are made by the applications
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Application 13/474,357
that are executing on the video content presentation terminal that
are inconsistent with the presentation override controls.
References and Rejections
1. Claims 4, 11, and 17 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
2. Claims 1—5, 7—12, 14—18, and 20 stand rejected under 35
U.S.C. § 102(b) as anticipated by Iwase et al. (US 2008/0267588 Al, Oct.
30, 2008).
3. Claims 6, 13, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Iwase and Lee et al. (US 2013/0155186 Al, June 20,
2013).
ANALYSIS
A. Whether Claims 4, 11, and 17 are Indefinite
Claim 4 recites “wherein the controller is further configured to ignore
presentation format requests that are made by the applications that are
executing on the video content presentation terminal when the presentation
control field does not contain a presentation override control.” App. Br. 13
(Claims App’x). The Examiner finds it “is not explained in the specification
how and why this operation is ignored/done. This indefmiteness related
with the process of ignoring of the presentation format requests when the
presentation control field does not contain a presentation override control
makes the claim indefinite.” Final Act. 2—3. Thus, the Examiner finds
“[t]he scope of the subject matter embraced by the claims is not clear
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Application 13/474,357
because it is not clear for one ordinary skill in the art how the controller is
configured to ignore presentation format requests, maybe by software or
something else.” Ans. 15.
Appellant argues “support for the claims is explicitly found in the
specification on page 3 (paragraph [0009]).” App. Br. 9. Appellant further
argues no indication has been made that Appellant intends the invention to
be of a scope different than that defined in the claims. App. Br. 10. Thus,
Appellant argues, the disputed limitation of claim 4 is not indefinite.
We agree with Appellant. The Examiner’s finding that a person of
ordinary skill in the art would not know how the controller is configured to
ignore presentation format requests is not sufficient to establish
indefmiteness. In other words, the controller being able to be configured by
software or “something else” does not necessarily make the claim indefinite
without sufficient evidence or reasoning explaining why this would lead to
ambiguousness in the scope of the claim. We find the Examiner has not
provided such evidence or reasoning. Moreover, we agree with Appellant
that the claim does not need to be limited to a single implementation to be
definite. We find that one of ordinary skill in the art would understand the
scope of the claims with reasonably certainty and thus do not sustain the
Examiner’s rejection of claim 4.
Claims 11 and 17 recite “wherein the presentation control field does
not contain a presentation override control for some of the video content that
is received.” App. Br. 15, 18 (Claims App’x). Although the Examiner
rejects these claims as indefinite on the same basis as claim 4, we note that
these claims recite a different limitation than claim 4. In particular, claims
11 and 17 do not require a controller to ignore presentation format requests
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Application 13/474,357
from applications when the presentation control field does not contain a
presentation override control, as claim 4 does. Thus, we find the Examiner
has not established that claims 11 and 17 are indefinite.
Accordingly, we do not sustain the Examiner’s rejection of claims 4,
11, and 17 as indefinite under 35 U.S.C. § 112, second paragraph.
B. Whether Iwase Anticipates Claim 1
Claim 1 recites “a controller that is configured to format the video
content. . . according to the presentation override controls . . . while
preventing implementation of the presentation format requests that are made
by the applications . . . that are inconsistent with the presentation override
controls.” The Examiner finds Iwase discloses the above limitations by
disclosing a “playback apparatus that receives content streams and has a
controller that controls the display functions of the streams/presentation
override controls.” Final Act. 4 (citing Iwase 290, 299). The Examiner
further finds Iwase discloses the controller performs control for selecting an
elementary stream corresponding to the playback function/format of the
apparatus and for positioning of the received content as per the required
format. Final Act. 4—5 (citing Iwase 79, 80, 86, 291, 292, 314, 318, 319).
Therefore, the Examiner finds, playback control information specifies
whether the sub stream file (picture-in-picture) is always played
simultaneously with the main stream file or whether it is played only when
an instruction is issued from a user. Ans. 14. When user input is required
for the sub stream to play, the Examiner finds the default format is prevented
from being presented. Id.
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Appellant argues:
In Iwase different sources (audio and video) are mixed to form a
combined content presentation (inclusion of different sources).
In stark contrast, the claims explicitly recite preventing the
implementation of presentation format requests that are
inconsistent with presentation override controls .... In other
words, the claims recite the exclusion of certain requests if those
requests are inconsistent with a set of parameters (e.g.,
presentation override controls). . . . [NJothing in the cited
passages of Iwase discloses, expressly or inherently, anything
about the preventing of the implementation of anything ....
Br. 8. The fact that Iwase discloses user input is sometimes required for the
sub stream file to be played back simultaneously with the main stream file
does not, according to Appellant, disclose preventing format requests that
are inconsistent with presentation override controls. Reply Br. 3.
We agree with Appellant. Claim 1 requires a controller that prevents
application format requests that are inconsistent with presentation override
controls from being implemented. The Examiner relies upon Iwase’s
playback control information (which contains display state information) as
the claimed presentation override controls. Ans. 13—14. The Examiner
finds that when the presentation override controls require a user instruction
to allow the picture-in-picture sub stream file to be played simultaneously
with the main stream file, and the user has not provided such instruction, the
default format is prevented from being displayed. Ans. 14. We do not agree
that this discloses “preventing implementation of. . . presentation format
requests . . . that are inconsistent with the presentation override controls.” In
particular, the Examiner has not sufficiently shown that Iwase prevents
implementation of a picture-in-picture sub stream file format request that is
inconsistent with the playback control information.
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Accordingly, we do not sustain the Examiner’s rejection of claim 1
and claims 2—5, 7—12, 142—18, and 20, which were rejected on the same
basis (see Final Act. 3—9) and were argued together as a group.
C. Whether Claims 6, 13, and 19 are Unpatentable
over Iwase and Lee
Appellant does not present any arguments for patentability of claims
6, 13, and 19. Accordingly, we sustain the Examiner’s rejection of these
claims.
DECISION
The Examiner’s rejections of claims 4, 11, and 17 under 35 U.S.C.
§112, second paragraph, are reversed.
The Examiner’s rejections of claims 1—5, 7—12, 14—18, and 20 under
35 U.S.C. § 102(b) are reversed.
The Examiner’s rejections of claims 6, 13, and 19 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
2 We note that although independent claim 14 is directed to a “non-transitory
computer-readable medium” all substantive limitations of the claim are
directed to a broadcast signal. Signals are per se patent ineligible. In re
Nuijten, 500 F.3d 1346, 1351—57 (Fed. Cir. 2007). Thus, should there be
further prosecution of this application (including any review for allowance),
the Examiner may wish to review the claims for compliance under 35 U.S.C.
§ 101 in light of the Federal Circuit’s decision in In re Nuijten.
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