Ex Parte Hill et al

Patent Trial and Appeal Board

Aug 16, 2016

12917678 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/917,678 11/02/2010 Seth Hill
36738 7590 08/18/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
200902989.01 1967
EXAMINER
OCAK,ADIL
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SETH HILL, STEVEN FRIEDLANDER,
SABRINA TAI-CHEN YEH, and YUKO NISHIKAWA
Appeal2015-003254
Application 12/917,678
Technology Center 2400
Before JASON V. MORGAN, MELISSA A. RAAP ALA, and
NABEEL U. KHAN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-10, 12-15, and 21. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm-in-part.
Appeal2015-003254
Application 12/917,678
Exemplary Claim
1. An Internet-connected video display device, comprising:
computer readable storage medium storing executable
instructions;
processor configured to access the instructions to configure the
processor for controlling a video display and responsive to a first
input command to present a main window in which plural
thumbnails of videos are arranged, the videos being available
through the Internet for presentation on the display, the processor
when executing the instructions presenting a video represented
by a respective thumbnail in the main window responsive to
selection of the respective thumbnail;
the processor when executing the instructions being further
configured for, responsive to the first command, causing a
column of thumbnails to be presented on the display next to the
main window, at least some of the thumbnails in the column of
thumbnails representing content that conforms to a user-entered
search query.
App. Br., Claims Appx.
Rejections
Claims 1, 2, 3, 5, 6, 7, 9, 10, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dawson (US 2009/0064222 Al; March
5, 2009), Zeldis (US 2011/0023068 Al; Jan. 27, 2011), and Coburn (US
2008/0163307 Al; July 3, 2008). Non-final Act. (July 3, 2014) 5-11.
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dawson, Zeldis, Coburn, and Channell (US 2009/
0271368 Al; Oct. 29, 2009). Non-final Act. 11-12.
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Application 12/917,678
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dawson, Zeldis, Coburn, and Kopf (US 2008/
0052742 Al; Feb. 28, 2008). Non-final Act. 12-14.
Claims 8 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson, Zeldis, Coburn, Kim (US 2008/0195588 Al;
Aug. 14, 2008), and Okada (US 2001/0028785 Al; Oct. 11, 2001). Non-
final Act. 14-16.
ISSUES
1. Did the Examiner err in finding the Dawson-Zeldis-Coburn
combination teaches or suggests the claimed invention's single-input
response of presenting both a main window of video thumbnails and column
of search-result thumbnails?
2. Did the Examiner err in finding the Dawson-Zeldis-Coburn-Kim
combination teaches or suggests the claim 8 prioritization of a most recently
viewed genus such that viewing a program prioritizes another program of the
same genre?
ANALYSIS
Claims 1- 7, 9, 10, and 12-15
Appellants present substantively identical arguments for independent
claims 1 and 9. App. Br. 5-7. Appellants do not present separate arguments
for dependent claims 2-7, 10, and 12-15. We address claim 1 below.
As reflected by the above issue statement, the claimed invention
displays two thumbnail sets-a main window including video thumbnails
and a proximate column of search result thumbnails-in response to the
same input. In concluding these features are obvious over Dawson, Zeldis,
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Application 12/917,678
and Coburn, the Examiner finds: Dawson's Figure 3 embodiment displays a
main window including video thumbnails 50 (Ans. 4); Zeldis' Figure 10
embodiment displays a column of search result thumbnails 1004-1012 next
to a main window 1002 (id. at 4-5); and Coburn's Figure 4 embodiment
displays both a main window and options window (id. at 5). The
Examiner's proposed combination of teachings displays a main window and
options window in response to a single user input (Coburn), places video
thumbnails within the main window (Dawson), and places a column of
search result thumbnails within the options window arranged next to the
main window (Zeldis). Id. at 4-5.
Appellants argue "the relied-upon features of Coburn would obliterate
the separate and distinct command needed in Zeldis to make its margin
menu a separately entered and exited element as intended." Reply Br. 1; see
also App. Br. 4-5. In support, Appellants contend: "Zeldis paragraph 48
explicitly and unambiguously distinguishes between the margin menu
[1004-1012] ... [and] the main content item 1002." Reply Br. 2.
In other words, Appellant contend that Zeldis and Coburn have
incompatible principles of operation. However, Appellants fail to show
Zeldis requires, as a principle of operation, presenting a main window and
search result thumbnails only in response to respective user commands.
Thus, Appellants have not identified any principle of operation in the
references that would need to be impermissibly changed to accommodate the
proposed combination.
Moreover, the proposed combination merely represents a combination
of familiar elements according to known methods to yield predictable
results. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) ("when
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Application 12/917,678
a patent 'simply arranges old elements with each performing the same
function it had been known to perform' and yields no more than one would
expect from such an arrangement, the combination is obvious" (citation
omitted)). Namely, the combination presents a main window and options
window within a single menu (Coburn) and modifies the menu by placing
video thumbnails within the main window (Dawson) and search result
thumbnails within the options window arranged next to the main window
(Zeldis). The combination's technique of placing like items within a
singular menu for the user's purview-that is, placing available thumbnails
with a thumbnails menu-would have also been known to an artisan of
ordinary skill possessing both ordinary creativity and common sense. See
KSR, 550 U.S. at 421 (2007) ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton .... Rigid preventative rules that
deny factfinders recourse to common sense ... are neither necessary under
our case law nor consistent with it.")
Appellants further argue:
[S]electing "on demand" from the main menu of figure 3 of
Coburn as relied on by the examiner does only one thing
(invoking the "on demand" sub-menu of Figure 4, paragraph 45
of Coburn), not two, and [t]he relied-upon sub-menu has no
thumbnails representing content that conforms to a user-entered
search query.
App. Br. 5.
Appellants' arguments are unpersuasive because, as the Examiner
correctly finds, "selecting the ON DEMAND input command [in Coburn]
will take the user to an ON DEMAND graphical user interface ...
presenting two windows." Ans. 5 (emphasis added). Moreover, the
Examiner correctly relies on Zeldis, not Coburn, to teach or suggest a
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column of thumbnails to be presented on a display next to a main window.
Id. at 4--5 (citing Zeldis Fig. 10, i-fi-147--48).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejections of claims 1-7, 9, 10, and 12-15.
Claims 8 and 21
Dependent claims 8 and 21 are rejected over Dawson, Zeldis, Coburn,
Kim, and Okada. Both claims require prioritizing of a search result
thumbnail in response to the user most recently viewing an object of the
same genus. Appellants argue that, though Okada's cited paragraph 94
"discloses placing a newly registered program in a location of highest
priority on a list, ... [ t ]here is nothing here about any determination of
anything belonging to a genus, much less tied in to [prioritizing] as
claimed." App. Br. 8. The Examiner responds that Okada's Figure 10
teaches a playback list showing each program's genre, i.e., genus. Ans. 18.
AppeHants' argument is persuasive. Though the Examiner correctly
finds that Okada prioritizes most recently viewed programs and denotes each
program's genre/genus, the Examiner does not state how these teachings
suggest prioritizing a most recently viewed genre/genus such that viewing a
program prioritizes another program of the same genre/genus.
Accordingly, we do not sustain the Examiner's rejection of claims 8
and 21.
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DECISION
We affirm the Examiner's decision rejecting claims 1-7, 9, 10, and
12-15.
We reverse the Examiner's decision rejecting claims 8 and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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