Ex Parte Hosein et alDownload PDFPatent Trial and Appeal BoardMay 31, 201613409726 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/409,726 03/01/2012 Marc Peter Hosein 49845 7590 06/02/2016 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 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. 2043.926US1 1023 EXAMINER SHEPARD, JUSTINE ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): USPTO@SLWIP.COM SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARC PETER HOSEIN, STEVEY ANKOVICH, and SELINA LAM Appeal2014-005409 Application 13/409,726 Technology Center 2400 Before KAL YANK. DESHPANDE, DAVID M. KOHUT, and JUSTIN T. ARBES, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-005409 Application 13/409,726 STATEMENT OF CASE1 Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1-9, 13, and 15-20 which constitute all the claims pending in this application. 2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. INVENTION The invention is directed providing a supplemental experience based on concurrently viewed content. Spec. ,-r 3. Claim 1 is illustrative of the invention and is reproduced below: 1. A system comprising: an identification module configured to identify, at a user device, concurrently viewed content assigned a content identifier via communication with one or more components of a home theatre; a curation module configured to, using one or more processors, identify one or more listings describing items for sale based on keywords mapped to the content identifier and provide a user interface including the listings to the user device separate from the home theatre; and a show metadata module configured to: access show metadata about the concurrently view content, identify a keyword within the show metadata relating to the concurrently viewed content, and 1 Our decision makes reference to Appellants' Reply Brief ("Reply Br.," filed March 31, 2014), and Appeal Brief ("App. Br.," filed October 23, 2013), and the Examiner's Answer ("Ans.," mailed January 31, 2014) and Final Office Action ("Final Act.," mailed June 4, 2013). 2 The Examiner indicates that claims 10 and 11 recite allowable subject matter. See Final Act. 11-12. Claims 12 and 14 were cancelled previously. 2 Appeal2014-005409 Application 13/409,726 retrieve additional listings from the online marketplace based on the identified keyword. REFERENCES Boccon-Gibod et al. US 2005/0149987 Al ("Boccon-Gibod") Kumai et al. ("Kumai ") Wu et al. ("Wu") Lee et al. ("Lee") Mallinson McRae US 2007/0089136 Al US 2008/0098450 Al US 2010/0229196 Al US 2011/0247042 Al US 2011/0321071 Al REJECTIONS AT ISSUE July 7, 2005 Apr. 19, 2007 Apr. 24, 2008 Sept. 9, 2010 Oct. 6, 2011 3 Dec. 29, 2011 4 Claims 1-3; 5; 8; 13; 15; 19; and 20 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson and Lee. Final Act. 3- 6; Ans. 2---6. Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Schultz. Final Act. 7; Ans. 6. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and McRae. Final Act. 7-8; Ans. 6-7. 3 Application filed April 1, 2010. 4 Application filed June 28, 2010. 3 Appeal2014-005409 Application 13/409,726 Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Boccon-Gibod. Final Act. 8-9; Ans. 7- 8. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Kumai. Final Act. 9-10; Ans. 8-9. Claim 18 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Wu. Final Act. 10-11; Ans. 9-10. ISSUES Did the Examiner err in finding the combination of Mallinson and Lee teaches "retriev[ing] additional listings from the online marketplace based on the identified keyword," as recited in independent claim 1, and similarly recited in independent claims 19 and 20? Did the Examiner err by improperly combining Mallinson and Lee in rejecting independent claims 1, 19, and 20? ANALYSIS Independent claim 1 recites "retriev[ing] additional listings from the online marketplace based on the identified keyword." Independent claims 19 and 20 recite similar limitations. Appellants argue that Lee fails to teach the disputed limitation because Lee does not teach an online marketplace or a list of items for sale. App. Br. 7-10; Reply Br. 2-3. We are not persuaded of Examiner error because the Examiner relies upon the combination of Mallinson and Lee to teach the disputed limitation. See Final Act. 3-5; Ans. 10-12. One cannot 4 Appeal2014-005409 Application 13/409,726 show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Specifically, the Examiner finds Mallinson teaches a mobile device that monitors viewed media, such as television programs, for keywords and, upon the detection of a keyword, offers the viewer the option of purchasing a version of the media from an online marketplace listing. Final Act. 3--4 (citing Mallinson i-fi-f 18, 35, 41); Ans. 10-11. The Examiner further finds Lee teaches a system where multiple listings are provided based upon an alert from an electronic program guide. Ans. 11 (citing Lee i-fi-f 18, 28). Thus, the Examiner concludes it would have been obvious to combine the teachings of Mallinson and Lee to teach an online marketplace containing additional keyword-based listings of media available for purchase. Id. at 11-12. We agree with the Examiner. Additionally, the Examiner clarifies that the combination of Mallinson and Lee is relied upon to teach "retriev[ing] additional listings from the online marketplace based on the identified keyword." See Ans. 10-12. In response to the Examiner's clarification, Appellants additionally argue that the combination of Mallinson and Lee fails to teach the disputed limitation as recited in independent claim 1 because Mallinson teaches retrieving a listing based on a keyword and Lee teaches retrieving multiple listings based on received alerts. Reply Br. 3--4. Again, we are not persuaded by Appellants' argument because Appellants fail to address the specific findings of the Examiner based upon the combination of Mallinson and Lee. Appellants narrowly interpret the 5 Appeal2014-005409 Application 13/409,726 teachings of Mallinson and Lee individually - retrieving a listing based on a keyword and retrieving multiple listings based on alerts - without addressing the Examiner's broader reliance on the two references to make the rejection. See Reply Br. 4; Ans. 10-12. Additionally, Appellants do not explain persuasively the alleged error in the Examiner's rationale in combining the various teachings of Mallinson and Lee to teach the limitation of "retriev[ing] additional listings from the online marketplace based on the identified keyword." See Reply Br. 4; Ans. 10-12. As such, Appellants' argument fails to demonstrate Examiner error because Appellants are not responding to the rejection as set forth by the Examiner. Appellants further argue that the Examiner improperly combined Mallinson and Lee. App. Br. 7; Reply Br. 3. Specifically, Appellants argue that the Examiner's motivation to combine Mallinson and Lee is "not credible and relies on impermissible hindsight." App. Br. 7; Reply Br. 3. Appellants also argue that the Examiner's rejection fails to "state the rationale to support the finding of obviousness." App. Br. 7 & n.1; Reply Br. 3. We are not persuaded by Appellants' arguments. The Examiner provides sufficient "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted). In combining the teachings of Mallinson and Lee, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to incorporate the multiple listings of Lee into the online marketplace of Mallinson containing keyword- based programs for sale so that multiple keyword-based programs may be listed for purchase. Final Act. 4; Ans. 11-12. The Examiner's motivation to 6 Appeal2014-005409 Application 13/409,726 combine the teachings of Mallinson and Lee is based upon "not [wanting to] interrupt the user's viewing experience while presenting the supplemental information." Final Act. 4. As such, the Examiner provides sufficient motivation to modify the marketplace of Mallinson with the multiple listings of Lee, and Appellants have not explained sufficiently why the Examiner's analysis is incorrect. The Examiner uses knowledge which is within that of a person with ordinary skill in the art and does not rely solely on knowledge gleaned from Appellants' application. Thus, we are not persuaded by Appellants that the Examiner relies upon impermissible hindsight to improperly combine Mallinson and Lee. Accordingly, we sustain the Examiner's rejection of independent claims 1, 19, and 20, as well as dependent claims 2-9 and 13, and 15-18 that were not argued separately. See App. Br. 10-12. CONCLUSION The Examiner did not err in finding that the combination of Mallinson and Lee teaches "retriev[ing] additional listings from the online marketplace based on the identified keyword," as recited in independent claim 1, and similarly recited in independent claims 19 and 20. The Examiner did not err by improperly combining Mallinson and Lee to reject claims 1, 19, and 20. SUMMARY The Examiner's decision to reject claims 1-3, 5, 8, 13, 15, 19, and 20 under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson and Lee is affirmed. 7 Appeal2014-005409 Application 13/409,726 The Examiner's decision to reject claim 4 under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Schultz is affirmed. The Examiner's decision to reject claims 6 and 7 under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and McRae is affirmed. The Examiner's decision to reject claim 9 under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Boccon-Gibod is affirmed. The Examiner's decision to reject claims 16 and 17 under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Kumai is affirmed. The Examiner's decision to reject claim 18 under 35 U.S.C. § 103(a) as obvious over the combination of Mallinson, Lee, and Wu is affirmed. 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