Ex Parte KANG et al

Patent Trials and Appeals Board

May 31, 2016

12129600 - (D) (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/129,600 05/29/2008
68103 7590 06/02/2016
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Seoung Ho KANG
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.
0203-0037 2376
EXAMINER
LUBIT, RYAN A
ART UNIT PAPER NUMBER
2696
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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEOUNG HO KANG and
JAEWANPARK1
Appeal2014-005282
Application 12/129,600
Technology Center 2600
Before JASON V. MORGAN, KARA L. SZPONDOWSKI, and
JOHN R. KENNY, 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 final
rejection of claims 1-3 and 12-14. Claims 4--11 and 15-20 are canceled.
App. Br. 11 and 12. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Invention
Appellants disclose a first screen displaying a first broadcast and a
second screen in the first screen displaying a second broadcast, where the
1 Appellants identify Samsung Electronics Co., Ltd., as the real party in
interest. App. Br. 2.
Appeal2014-005282
Application 12/129,600
second screen is prevented from overlapping with an object, displayed on
the first screen, selected from the first broadcast when the object moves to a
location of the first screen that is overlapped by the second screen. Abstract.
Exemplary Claim
Claim l, reproduced below with key limitations emphasized~ is
illustrative:
1. A method for displaying broadcast data using a picture-in-
picture feature that provides a first screen for displaying a first
broadcast data and a second screen for displaying a second
broadcast data, the method comprising:
displaying the second screen on at least a portion of the
first screen in an overlaid manner;
moving, when an object of the first broadcast data moves
into a region overlaid by the second screen, the second screen to
a different region of the first screen; and
returning, when the object moves out of the region that
was overlaid by the second screen, the second screen from the
different region to the region from 1A/hich the second screen had
moved.
Rejections
The Examiner rejects claims 1 and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Dimitrova (US 6,697, 124 B2; Feb. 24, 2004) and
Rosser (US 6,750,919 Bl; June 15, 2004). Final Act. 8-14.
The Examiner rejects claims 2, 3, 13, and 14 under 35 U.S.C. § 103(a)
as being unpatentable over Dimitrova, Rosser, and Lacy (US 7,728,911 B2;
June 1, 2010). Final Act. 15-23.
ISSUE
Did the Examiner err in finding the combination of Dimitrova and
Rosser teaches or suggests "returning, when the object moves out of the
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Appeal2014-005282
Application 12/129,600
region that was overlaid by the second screen, the second screen from the
different region to the region from which the second screen had moved," as
recited in claim 1?
ANALYSIS
In rejecting claim 1, the Examiner finds Dimitrova' s smart picture-in-
picture algorithm, in combination with Rosser's prioritization of certain
objects over overlay information, teaches or suggests returning, when the
object moves out of the region that was overlaid by the second screen, the
second screen from the different region to the region from which the second
screen had moved. Final Act. 9-10 (citing Dimitrova Fig. 4, col. 3, 11. 39-
42, 48-51, 55-59, and col. 4, 11. 1---6; Rosser Fig. 3, col. 5, 11. 33-36).
Appellants contend the Examiner erred because the recited operation
of returning a second screen "is positively recited to execute when a
particular trigger condition ('when the object moves out of the region that
was overlaid by the second screen') occurs." App. Br. 4 (emphasis added);
see also id. at 7. Appellants further argue "there is no support for the
Examiner's assertion that Dimitrova must return at some point the PiP
[picture-in-picture] back to the original region from which it had moved."
Id. at 5.
We find Appellants' arguments persuasive. The Examiner interprets
the term "when" as being "exceptionally broad" so as to only require the
return of the second screen "at some point after" the object moves out of the
region that was overlaid by the second screen. Ans. 9. However, we agree
with Appellants that this interpretation of "when" as encompassing an
infinite time frame is unreasonably broad. Reply Br. 4. Even the
Examiner's reliance on the ordinary meaning of when as encompassing
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Application 12/129,600
"after which" (Ans. 9) connotes the returning step occurring because of or at
least in temporal proximity after the object moving out of the region that was
overlaid by the second screen. A hypothetical accidental return of the
second screen long after the object moves out of the region that was overlaid
by the second screen would not constitute a return of the second screen when
the triggering condition (i.e., the object moving out of the region) occurs.
The Examiner finds that Dimitrova's example of a picture-in-picture
("PiP") moving during a figure skating event illustrates an example in which
"[a]fter the jump is completed, the first region would once again have the
least amount of motion and the method would detect this and move the PiP
back to the first region." Ans. 7. However, we agree with Appellants that
the Examiner's findings do not show that after completion of the jump the
PiP would no longer be in one of the areas of least motion and that the
original location of the PiP would be the nearest candidate region. Reply Br.
8. Both conditions would have to be met for the PiP to return to its original
location after the jump completed. In particular, Dimitrova teaches that the
PiP does not move if it is already in a candidate region, nor will the PiP
move to the original region from which it moved if another candidate region
is closer to the current PiP location. See Dimitrova Fig. 4, refs. 112, 114,
116, and 118. The Examiner's findings do not show that a figure skating
event, or any other reasonable scenario taught or suggested by Dimitrova,
makes both conditions true when an object moves out of the region that was
overlaid by the second screen. Therefore, we agree with Appellants that the
Examiner's findings do not show that Dimitrova teaches or suggests
"returning, when the object moves out of the region that was overlaid by the
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Application 12/129,600
second screen, the second screen from the different region to the region from
which the second screen had moved," as recited in claim 1.
The Examiner's reliance on Rosser to teach or suggest the importance
of certain objects does not cure the noted deficiency of Dimitrova because
the cited teachings and suggestions of Rosser merely relate to a system in
which players or objects may occlude a sign displaying extra (less
important) information. See Rosser Fig. 3, col. 5, 11. 33-36. As Appellants
persuasively argue, "Rosser discloses only occluding the insert information,
not moving a PIP." Reply Br. 7. Though Dimitrova's teachings relate to the
moving of a PiP, the Examiner presents insufficient findings or explanation
to show that the combination of Dimitrova' s smart PiP algorithm and
Rosser's information occlusion teaches or suggests the disputed recitation.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 1, and claim 12, which contains similar recitations. The
Examiner's findings also do not show Lacy cures the noted deficiency of
Dimotrova and Rosser. Therefore, we also do not sustain the Examiner's
35 U.S.C. § 103(a) rejection of claims 2, 3, 13, and 14.
DECISION
We reverse the Examiner's decision rejecting claims 1-3 and 12-14.
REVERSED
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