Ex Parte KIM et al

Patent Trial and Appeal Board

Aug 28, 2018

13595056 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/595,056 08/27/2012
2292 7590 08/30/2018
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
FIRST NAMED INVENTOR
Soyoung KIM
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.
3449-2801 PUS 1 3168
EXAMINER
SCHNURR, JOHN R
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOYOUNG KIM and RYOUNG KIM
Appeal 2018-001557
Application 13/595,056 1
Technology Center 2400
Before: TERRENCE W. MCMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-15, 21, 28, 30-32, 34--36, and 38--40, which
constitute all of the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify LG Electronics Inc. as the real party in interest. App.
Br. 2.
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Application 13/595,056
THE INVENTION
The disclosed and claimed invention is directed to a "method of
sharing contents with an external device in an image display device." Spec.
1.2
Claim 1, reproduced below with the disputed limitations italicized, is
illustrative of the claimed subject matter:
1. An image display device comprising:
a display configured to play a first content on a screen;
a wireless communication unit configured to communicate
with an external image display device; and
a controller configured to:
display, on the screen, an icon for sharing the first
content with an external image display device while playing the
first content on the screen, wherein the external image display
device is capable of displaying the first content provided from
the image display device;
pause play of the first content that is being played
on the screen when the icon is selected;
search for at least one external image display device
while pausing to play the first content;
display, on the screen, a sharing device list that
includes the searched at least one external image display device;
create information on the first content's
reproduction state including content title information and
content play time information when the icon is selected;
2 We refer to the Specification filed Aug. 27, 2012 ("Spec."); Final Office
Action mailed Feb. 28, 2017 ("Final Act."); Appeal Brief filed July 26, 2017
("App. Br."); Examiner's Answer mailed Oct. 26, 2017 ("Ans."); and the
Reply Brief filed Nov. 28, 2017 ("Reply Br.").
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Application 13/595,056
receive a selection signal for selecting one among
the at least one external image display device included in the
sharing list;
in response to receiving the selection signal,
transmit the first content to the selected one external image
display device;
display a paused image of the first content on the
screen simultaneously with the sharing device list when the icon
is selected;
receive a request for playing a second content on
the image display device;
in response to receiving the request, display the
second content on the screen of the image display device while
continuously transmitting the first content to the selected
external image display device; and
receive notice that a sharing of the first content has
been rejected by the selected one external image display device.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Lee et al. US 2005/0055713 Al Mar. 10,2005
(hereinafter "Lee")
Park US 2006/0029374 Al Feb.9,2006
Jacoby et al. US 2006/0271959 Al Nov. 30, 2006
(hereinafter "Jacoby")
Kondo et al. US 2009/0064233 Al Mar. 5, 2009
(hereinafter "Kondo")
Sheth et al. US 2009/0113472 Al Apr. 30, 2009
(hereinafter "Sheth")
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Application 13/595,056
Kim et al.
(hereinafter "Kim")
US 2009/0113495 Al Apr. 30, 2009
Shimy et al. US 2011/0069940 Al Mar. 24, 2011
(hereinafter "Shimy")
Klappert US 2011/0150431 Al June 23, 2011
Gossweiler, III et al. US 2011/0214148 Al Sept. 1, 2011
(hereinafter "Gossweiler")
Nijim
Felt et al.
(hereinafter "Felt'')
Hassan et al.
(hereinafter "Hassan")
US 2012/0054808 Al Mar. 1, 2012
US 2012/0072944 Al Mar. 22, 2012
US 8,589,991 B2 Nov. 19, 2013
REJECTIONS
Claims 1, 5, 8, 10, 12-14, 21, 28, 30, 31, 35, and 37 stand rejected
under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Hassan,
Gossweiler, Nijim, Shimy, and Jacoby. Final Act. 2-3. 3
Claims 31, 32, 34--36, and 38 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Hassan, Gossweiler, and Nijim. Final
Act. 11.
Claim 3 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Lee.
Final Act. 7.
3 The Examiner's statement of rejection omits independent claims 31 and
35. See Final Act. 2. However, claims 31 and 35 are included in the body of
the Examiner's rejection. See Final Act. 6. We consider this omission to be
harmless typographical error.
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Claims 4 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, Lee,
and Klappert. Final Act. 7.
Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Kondo.
Final Act. 8.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Sheth.
Final Act. 9.
Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Felt.
Final Act. 9.
Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Kim.
Final Act. 10.
Claims 39 and 40 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and
Park. Final Act. 13.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments regarding the pending
claims.
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Appellants contend Shimy does not teach "receive a request for
playing a second content on the image display device" and "in response to
receiving the request, display the second content on the screen of the image
display device while continuously transmitting the first content to the
selected external image display device," as recited in claim 1. App. Br. 8,
11-12. Specifically, Appellants argue Shimy teaches "providing second
media content or continuing to provide the first media content," but not
displaying the second content on the screen of the first display device while
continuously transmitting the first content to an external device. App. Br. 8;
see also Reply Br. 2.
We agree with the Examiner's findings that Shimy teaches when one
user wishes to continue watching the first content in another room, providing
the first content to the device in the other room, and that the remaining users
for the first content in the first room may change to other content. Ans. 4.
As cited by the Examiner (Final Act. 4--5; Ans. 4), Shimy teaches an
example where "if Elaine has gotten tired and prefers to continue access of
the content from her bedroom, she may select to have content provided at a
device in her bedroom." Shimy ,r 151. In this example, previously,
"George, Elaine, and Jerry were accessing first media content together."
Shimy ,r 150. Shimy also teaches "the remaining users at a device may
choose to change the provided content when a user has left the detection
region of the device." Shimy ,r 153. In other words, Shimy teaches Elaine
selecting to have content (i.e., first content), currently being accessed on a
first device in a first room (i.e., image display device) by Elaine, George,
and Jerry, played on a second device in a second room (i.e., transmitting the
first content to the selected external image display device), and then
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allowing George and Jerry to change the content provided on the first device
(i.e., requesting for playing second content on the image display device, and
displaying the second content on the screen of the image display device).
Appellants have not persuasively argued how Shimy's example of
users requesting second content to be played on a first device (i.e., George
and Jerry choosing to change the provided content on a device in a first
room), while continuing to play first content for a user on a second device
(i.e., Elaine selecting to play first content on a device in her bedroom), does
not teach or otherwise suggest the claimed receiving a request for playing a
second content on the image display device and displaying the second
content on the screen of the image display device while continuously
transmitting the first content to the selected external image display device.
Appellants further contend Gossweiler does not teach "display[ing] a
paused image of the first content on the screen simultaneously with the
sharing device list when the icon is selected," as recited in claim 1. App. Br.
10, 11-12. Specifically, Appellants argue Gossweiler does not
simultaneously display the image of the first content with the sharing device
list because Gossweiler's sharing device list occupies the entire screen.
App. Br. 10. Appellants also argue Gossweiler's background is a "generic
background, not a paused image of the first content." Reply Br. 2.
We agree with the Examiner's finding that Gossweiler teaches a list
that is displayed in the foreground and overlaid on the paused image of the
program displayed in the background. Ans. 5. For example, as cited by the
Examiner (Ans. 5; Final Act. 3--4), Gossweiler teaches"[ w ]hile watching or
listening to a program, if the user decides to share the content, pressing a
button on their remote control can bring up a list of friends 140, as shown in
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Application 13/595,056
Fig. IF, and the user can share the current content easily with them," and
that the "playing program may be paused automatically until the sharing
actions are complete." Gossweiler ,r 58 ( emphasis added). Gossweiler also
describes that "a display for sharing content with friends is shown, where
the list of friends is ... laid over the main television display," and that
"[ s ]uch a display may be generated at any point where a user indicates an
intent to share content that they are reviewing." Gossweiler ,r 59 ( emphasis
added). In other words, Gossweiler describes automatically pausing content
to select friends with whom to share the content, and displaying the
selectable list of friends laid over the television display ( which is paused
until the sharing actions are complete).
Appellants have not persuasively argued how Gossweiler' s displaying
of a list of friends (i.e., displaying a sharing device list) laid over content that
is automatically paused so the desired content can be shared (i.e.,
simultaneously displaying a paused image of the first content when the icon
is selected) does not teach or other suggest the claimed "display[ing] a
paused image of the first content on the screen simultaneously with the
sharing device list when the icon is selected."
Appellants further contend Nijim does not teach "create information
on the first content's reproduction state including content title information
and content play time information when the icon is selected," as recited in
claim 1. App. Br. 12. Specifically, Appellants argue Nijim teaches placing
a time stamp where a playlist is paused or stopped, but not the creation of
content title information and content play time information when the icon for
sharing the content is selected. Id.
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During examination of a patent application, a claim is given its
broadest reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Claim 1 does
not recite limitations further defining how information is created, and rather
merely requires creating information including content title information and
content play time information when the icon is selected. Appellants'
Specification merely provides non-limiting examples that the control unit
"may create information on the content reproduction state at the time in
which the 'Send to' icon 611 is selected, such as content title information,
content play time information, or the like." Spec. 22: 1-5. Appellants'
Specification further provides for "the selected external image display
device may receive information on the contents reproduction state from the
image display device." Spec. 23: 18-20. Accordingly, applying the broadest
reasonable construction, we find the claimed "create information on the first
content's reproduction state including content title information and content
play time information when the icon is selected" does not preclude the
availability of content title information and content play time information,
related to video distribution (i.e., the external image display device receiving
the content information), when the icon is selected. Because Appellants'
arguments are not commensurate with the scope of the claims, they are
unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Furthermore, Appellants' argument against Nijim separately from
Hassan, Gossweiler, Shimy, and Jacoby does not persuasively rebut the
combination made by the Examiner. One cannot show non-obviousness by
attacking references individually, where the rejections are based on
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combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA 1981).
Specifically, we agree with the Examiner's finding that the
combination of Hassan and Gossweiler teaches a user selecting an icon to
share content and transmitting the content to a selected external device.
Ans. 6 (citing Hassan col. 9, 11. 59---64, col. 10, 1. 57---col. 12, 1. 12, Figs. 3, 4;
Gossweiler ,r,r 59, 71, 153, Fig. IF). Nijim is relied upon only to teach the
availability of content title information and play time information at the time
of content selection. See Ans. 6.
For example, as cited by the Examiner (Ans. 6), Nijim teaches "a user
can select program listings by moving highlight region" and "[i]nformation
relating to the program listing selected by highlight region 110 may be
provided in program information region 112," including "for example, the
program title . . . the time the program is provided ... and other desired
information." Nijim ,r 36. In other words, Nijim teaches the availability of
information including program title, program time, and other desired
information, displayed when selecting a program.
Appellants have not persuasively argued how the claimed "create
information on the first content's reproduction state including content title
information and content play time information when the icon is selected,"
encompassing making available content title information and content play
time information when the icon is selected, is not taught or otherwise
suggested by Nijim's displaying (i.e., making available) program title (i.e.,
content title information) and time or other desired information (i.e., content
play time information) when selecting a program (i.e., when the icon is
selected).
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Appellants further argue, for the first time in the Reply Brief, that
Shimy is not relied on in the rejection of claims 31 and 35. Reply Br. 2.
Appellants' contention in the Reply Brief is untimely. 37 C.F.R.
§ 41.41 (b )(2) (2012) ("Any argument raised in the reply brief which was not
raised in the appeal brief ... will not be considered by the Board for
purposes of the present appeal, unless good cause is shown."). Here, no
good cause having been shown, Appellants have waived such untimely
argument.
Moreover, even if we consider Appellants' argument regarding
whether the Examiner relies on Shimy in rejecting claims 31 and 35, we note
the Examiner relies on Shimy to teach the disputed limitations of claims 31
and 35 in the first of two alternative rejections. Compare Final Act. 6
(ground of rejections including Shimy), with id. at 11 (ground of rejection
not including Shimy). Appellants acknowledge this alternative rejection
with respect to claims 31 and 35. App. Br. 13, 14 ("The arguments against
Shimy disclosing this feature, and therefore the combination of prior art not
resulting in a system having this features, are set forth with respect to claim
1 O.").
Accordingly, we sustain the Examiner's rejection of claim 1, along
with the rejections of independent claims 10, 31, and 35, for which
Appellants rely on the same arguments as discussed above for claim 1, along
with dependent claims 3-9, 11-15, 21, 28, 30, 32, 34, 36, and 38, which are
not separately argued.
Appellants further contend the references do not teach "wherein the
paused image of the first content is a thumbnail image," as recited in claims
39 and 40. App. Br. 15-16. The entirety of Appellants' argument consists
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of a single sentence constituting a general denial: "Moreover, Hassan and
Gossweiler do not display a thumbnail image of the content first content
along with a list of external devices, as now recited in independent claim 1
and 10 and new claims 39 and 40." Id.
With respect to these additional limitations in claims 39 and 40,
Appellants have failed to rebut the Examiner's findings. To show error in
the Examiner's position, Appellants must explain why the relied-upon
disclosure does not disclose the claimed feature, rather than merely alleging
that the feature is not shown. Instead, Appellants merely quote or
summarize the claim language and make a naked assertion that the prior art
does not teach the limitation. That is insufficient to raise an argument that
the Examiner erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(Rule 41.37 requires "more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."); see also 37 C.F.R.
§ 4I.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.").
Accordingly, we sustain the Examiner's rejection of claims 39 and 40.
DECISION
For the above reasons, we affirm the Examiner's decisions rejecting
claims 1, 3-15, 21, 28, 30-32, 34--36, and 38--40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 4I.50(f).
AFFIRMED
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