Ex Parte Ho et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612383034 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/383,034 03/19/2009 Tracy Wai Ho 36738 7590 06/01/2016 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. 200802387.01 9266 EXAMINER SONG, DAEHO D ART UNIT PAPER NUMBER 2141 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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 TRACY WAI HO, YUKO NISHIKAWA, YUKO SUZUKI, and HYEHOON YI Appeal2014-007615 Application 12/383,034 Technology Center 2100 Before KRISTEN L. DROESCH, JOHNNY A. KUMAR, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1--4, 6-13, 15-20, and 22, which constitute all of the claims pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real parties in interest are Sony Corporation and Sony Electronics, Inc. App. Br. 2. 2 Claims 5, 14, and 21 have been canceled. App. Br. 18-22. Appeal2014-007615 Application 12/383,034 INVENTION Appellants' invention relates to a television menu system with a cross media bar (XMB) user interface. Abstract; Spec. 1. Claim 1 is illustrative and reads as follows: 1. A television menu method, comprising: displaying a cross-media bar menu on a display device upon actuation of a menu command by a user from a television interface device; the cross-media bar menu displaying a plurality of menu selections arranged in a crossing pattern; where one of the menu selections of the cross-media bar serves as a focused menu selection either by default when the menu command is actuated or when focused upon by virtue of navigation to an icon by receipt of a command from the user via the television interface device; retrieving a preview list of menu actions from a submenu database residing on a storage device; displaying a display window situated outside the cross- media bar display, where the display window displays the preview list of submenu actions; where the preview list comprises a list of actions that can be taken by the user if the currently focused menu selection is selected by the user, and where the preview list is not a functional menu and does not form a part of the menu system; and where the display window is populated with selectable menu functions that are stored in the submenu database, where the stored selectable menu functions are retrieved from the submenu database based upon the currently focused cross-media bar menu selection. REJECTION Claims 1--4, 6-13, 15-20, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Aonuma et al. (US 2008/0016446 Al; published Jan. 17, 2008), Morita et al. (US 2 Appeal2014-007615 Application 12/383,034 2005/0235209 Al; published Oct. 20, 2005), and Donoghue et al. (US 7,503,013 B2; issued Mar. 10, 2009). ANALYSIS We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We have considered Appellants' arguments, but do not find them persuasive of reversible error. We provide the following explanation for emphasis. With respect to independent claim 1, Appellants first contend the cited portions of Aonuma do not disclose "a preview list of menu actions," as recited in claim 1. App. Br. 11. Appellants argue that Aonuma describes icons 130, 132, 134, and 136 of Figure 9, cited by the Examiner, as "status information icons," and thus the icons do not meet the claimed requirements for a preview list of menu actions because they simply convey certain status information. Id. In response, the Examiner explains that the icons indicate the status for the focused target item 122 of menu 72, and allow the user to preview "a list of functions that can be implemented if the menu system is in fact invoked." Ans. 3. The Examiner further explains that icon 130, for example, indicates that video chat is available, thus allowing the user to preview a video chatting function that is included in the focused or selected target item 122 from the main menu 72. Id. (citing Aonuma i-f 47). We agree with the Examiner's findings and conclusion. We also observe that Appellants argue Aonuma individually, even though the Examiner relies on the combination of Aonuma, Morita, and Donoghue in 3 Appeal2014-007615 Application 12/383,034 rejecting claim 1. The test for obviousness is not what any one reference teaches, but rather what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Moreover, identity of terminology is not required. It is well established that "the reference need not satisfy an ipsissimis verbis test." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)). Appellants next contend neither Aonuma nor Morita teaches or suggests the limitation "where the preview list comprises a list of actions that can be taken by the user if the currently focused menu selection is selected by the user," recited in claim 1. Appellants argue that items 130, 132, 134, and 136 in Aonuma are status indicators which fail to meet the requirements for a preview list. Appellants further argue that menus 501 and 502 in Morita are functional menu options and do not constitute a preview list. App. Br. 12. Appellants' arguments do not persuade us of Examiner error. Appellants cannot show non-obviousness by attacking references individually where, as here, the rejections are based on a combination of the references. In re Keller, 642 F.2d at 426. The Examiner finds that Aonuma teaches or suggests the recited "preview list," whereas Morita discloses "displaying a list of actions or selections" when the currently focused icon 301 is selected. Ans. 4 (citing Morita Fig. 4B, i-fi-f 169, 171). Appellants do not present sufficient persuasive evidence or argument to rebut the Examiner's findings with regard to the combination of Aonuma and Morita. 4 Appeal2014-007615 Application 12/383,034 Appellants further contend the cited portions of Morita do not explicitly teach "selectable menu functions that are stored in the submenu database, where the stored selectable menu functions are retrieved from the submenu database based upon the currently focused cross-media bar selection," as recited in claim 1. App. Br. 13-14 (citing Morita i-fi-f 169-178). We are not persuaded of Examiner error. The Examiner finds that Morita discloses that a display window is populated with selectable menu functions. Final Act. 4--5 (citing Morita Figs. 4 and 5, i-fi-f 169-178; Ans. 5 (citing Morita Figs. 4B and 5, i-f 169). The Examiner further finds that Morita discloses that a menu manager 81 manages multiple manipulating functions for each media selection by retrieving selectable menu functions stored in the storage unit 90, as shown in Figure 2. Ans. 5 (citing Morita i-fl 12). The Examiner also finds that the menu manager stores content attribute information in the storage unit 90. Id. (citing Morita i-f 113). The Examiner further finds that Morita discloses a "submenu database." Id. Appellants do not present sufficient persuasive evidence or explanation to rebut the Examiner's findings. See Reply Br. 4. Appellants also contend that modifying Aonuma or Morita to meet the claimed limitation "where the preview list is not a functional menu and does not form a part of the menu system" would render each reference unsatisfactory for its intended purpose. App. Br. 14--15. We are not persuaded of error. The Supreme Court has indicated that: [It is error to] assum[ e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem .... Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of 5 Appeal2014-007615 Application 12/383,034 ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted). Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d at 426. In this case, the Examiner does not find that Morita's displaying a list of actions or selections when the currently focused icon is selected could be physically combined with the preview list of Aonuma. Ans. 16-1 7. Thus, Appellants' arguments do not sufficiently address the teachings of the references as combined by Examiner, and do not provide sufficient evidence or argument to persuade us of Examiner error. For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Aonuma, Morita, and Donoghue teaches or suggests the limitations of claim 1. With regard to dependent claim 4, Appellants contend that Figure 9 and paragraph 4 7 of Aonuma do not teach or suggest the limitation "where the display window is displayed only when the focus appears on certain of the menu selections," recited in claim 4, because Aonuma does not show status indicators 130, 132, 134, and 136 within a window. App. Br. 15. Appellants' arguments do not persuade us of error. The Examiner finds that the combination of Aonuma and Morita teaches or suggests the disputed limitation (Ans. 7), and Appellants present no persuasive evidence or argument to rebut those findings (see Reply Br. 4--5). Moreover, Appellants attack Aonuma individually, whereas the Examiner relies on the combination of Aonuma and Morita as disclosing the disputed limitation. 6 Appeal2014-007615 Application 12/383,034 For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Aonuma, Morita, and Donoghue teaches or suggests the limitations of claim 4. With regard to dependent claim 6, Appellants contend that Figure 10 and paragraph 48 of Aonuma do not teach or suggest the limitation "repopulating the preview list of menu items upon receipt of user commands to navigate to a different menu selection as the focus," recited in claim 6. App. Br. 15-16. We are not persuaded of error. The Examiner finds that Aonuma discloses that each time a different user is in focus area 77 of Figure 9, a preview list with items 130, 132, 134, and 136 is redisplayed or repopulated. Ans. 7. Appellants do not present sufficient persuasive evidence or argument to rebut the Examiner's findings (see Reply Br. 5). For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Aonuma, Morita, and Donoghue teaches or suggests the limitations of claim 6. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of independent claim 1 and dependent claims 4, 6, 13, 15, 20, and 22. We also sustain the 35 U.S.C. § 103(a) rejection of independent claims 8, 10, 16, and 17 and dependent claims 2, 3, 7, 9-12, 18, and 19, not argued separately. App. Br. 11. DECISION The decision of the Examiner to reject claims 1--4, 6-13, 15-20 and 22 is affirmed. 7 Appeal2014-007615 Application 12/383,034 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 8 Copy with citationCopy as parenthetical citation