Ex Parte KirscheDownload PDFPatent Trial and Appeal BoardAug 28, 201411561535 (P.T.A.B. Aug. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD KIRSCHE ____________ Appeal 2012-004909 Application 11/561,535 Technology Center 2400 ____________ Before JEAN R. HOMERE, JEFFREY S. SMITH, and LINZY T. McCARTNEY, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) the Examiner’s final rejection of claims 1-17, 21, and 23-27. Claims 18-20 and 22 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION. Appeal 2012-004909 Application 11/561,535 2 STATEMENT OF THE CASE Appellant’s invention “relates to remote control based content control, which may optionally include controlling content interfaced through different portions of a common display, i.e., to provide split screen control.” (Spec. 1:5-7.) Claims 1 and 25 illustrate the claimed subject matter: 1. A method comprising: associating a first remote control with a first portion of a display associated with a display device; associating a second remote control with a second portion of the display; and displaying content controlled with the first remote control on the first portion of the display and simultaneously displaying content controlled with the second remote control on the second portion of the display responsive to determining that each of the first and second remote controls are active, such that each remote control simultaneously and actively controls content showing on corresponding portions of the display device, wherein determining that the first and second remote controls are active comprises determining that each of the first and second remote controls are in proximity to the display device responsive to receiving a signal from each of the first and second remote controls. 25. The method of claim 1, further comprising selecting and playing audio associated with the content showing in one of the first and second display portions as a function of the type of content showing in each of the first and second display portions. REJECTIONS Claims 1, 5, 6, 16, 17, 21-23, and 25-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sevat (2001/0006382 Al; July 5, Appeal 2012-004909 Application 11/561,535 3 2001), Watanabe (US 7,295,252 B2; Nov. 13, 2007), Shibamiya (US 7,394,450 B2; July 1, 2008), and Arling (US 7,136,709 B2; Nov. 14, 2006). Claims 2-4, 7-15, and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sevat, Watanabe, Shibamiya, Arling, and Huber (US 2002/0059588 Al; May 16, 2002). ISSUES Appellant’s briefing raises the following two issues: (1) With respect to claim 1, is the proposed combination of the cited art improper? (2) With respect to claim 25, does the cited art teach or suggest “selecting and playing audio associated with the content showing in one of the first and second display portions as a function of the type of content showing in each of the first and second display portions”? ANALYSIS Claim 1 The Examiner found Sevat disclosed “associating” first and second remote controls with first and second portions of a display device. (Ans. 4). The Examiner also found Sevat disclosed the “displaying” step recited in claim 1, except for “displaying content . . . responsive to determining that each of the first and second remote controls are active.” (See id.) The Examiner incorporated Watanabe to address this deficiency, as the Examiner found Watanabe disclosed determining which of several remote controls controlled a single display. (See id. at 4-5, 11.) In response to an earlier argument by Appellant that Watanabe concerned a single remote, the Examiner also cited Shibamiya for its conventional “PIP/split screen” functionality and found it would have been obvious to “modify the Appeal 2012-004909 Application 11/561,535 4 Sevat/Watanabe combination to provide one or more users in [an] interactive display the ability to control their respective channel/program selection.” (Id.at 5.) Appellant contends modifying Watanabe to include the multiple screens disclosed by Shibamiya would not only render Watanabe unsatisfactory for its intended purposed but also change Watanabe’s principle of operation. (App. Br. 7.) In particular, Appellant argues Watanabe concerns multiple users sharing a single display; modifying that display to include multiple screen regions would, according to Appellant, make Watanabe’s invention unnecessary. (Id.) Appellant asserts dividing Watanabe’s display in the manner suggested by the Examiner “is not the logical and predictable result of the combination of these references.” (Reply Br. 5.) We agree with the Examiner. Appellant has not persuaded us modifying Watanabe’s invention to include multiple screens is illogical or makes the invention unnecessary. Rather, as found by the Examiner, incorporating conventional “PIP/split screen” functions into Watanabe would permit multiple people to use the display. (See Ans. 11.) To the extent Appellant contends the Examiner improperly found one of skill in the art would have modified Watanabe to determine which remote control unit controlled each portion of a display, we disagree. The Examiner simply took into account common sense and “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As for Appellant’s conclusory argument the proposed modification improperly changes Watanabe’s principle of operation, this argument rests on Appellant’s belief the proposed Appeal 2012-004909 Application 11/561,535 5 modification renders Watanabe’s invention unnecessary, (see App. Br. 7), and is therefore unpersuasive for the reasons discussed above. We therefore sustain the rejection of claim 1. Because Appellant has not presented separate substantive patentability arguments regarding claims 2-17, 21, 23, and 24, we also sustain the rejection these claims. Claim 25 Claim 25 recites “selecting and playing audio associated with the content showing in one of the first and second display portions as a function of the type of content showing in each of the first and second display portions.” (App. Br. 16.) The Examiner found the prior art suggested this limitation, as “selecting/playing audio associated with the content of a display as a function of type of content is conventional in the art.” (Ans. 7.) The Examiner relied on three patents not listed in the Examiner’s summary of the rejection to support of this finding: First, the Examiner cited Kendall (US 7,038,581 B2; May 2, 2006) for the proposition that parents could restrict “certain channels and the volume associated with certain channels when being viewed.” (Id. at 7.) Second, the Examiner pointed out Billmaier (US 6,710,815 B1; Mar. 23, 2004) disclosed “when a sporting program is being aired, the TV’s sound is silent and a [second] audio signal (i.e. [r]adio broadcast) may be played in [its] place.” (Id. at 13.) Third, the Examiner found Spinelli (US 2004/0196405 Al; Oct. 7, 2004) “disclosed two display[s] and two different audio signals being provided (one for each user) independently.” (Id.) Appellant argues these references do not teach or suggest selecting and playing content as a function of the type of content showing in each of the display portions as required by the claim. (App. Br. 8; Reply Br. 5-6.) Appeal 2012-004909 Application 11/561,535 6 We agree with Appellant. During examination, claims are to be given their broadest reasonable interpretation consistent with the specification, and the language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). As discussed in the next section, the language of claim 25 lacks written description support in Appellant’s specification as originally filed. Therefore, we find the broadest reasonable interpretation of claim 25 encompasses the plain meaning of the claim language, namely “selecting and playing audio associated . . . as a function of the type of content showing in each [i.e., both] of the first and second display portions.” The references cited by the Examiner do not explicitly teach this limitation. Accordingly, we will not sustain the rejection of claim 25 and its dependent claims (claims 26 and 27) on this ground. New Ground of Rejection Per our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 25-27 under 35 U.S.C. § 112 ¶ 1 for lack of written description. As discussed above, claim 25 recites “selecting and playing audio associated with the content showing in one of the first and second display portions as a function of the type of content showing in each of the first and second display portions.” (App. Br. 16 (emphasis added).) In a footnote, Appellant contends a paragraph found on page seven of Appellant’s specification provides support for this limitation. (Reply Br. 6 n.1.) But that paragraph essentially describes selecting and playing audio as a function of content generally; the paragraph does not disclose selecting and playing Appeal 2012-004909 Application 11/561,535 7 audio as a function of the content showing in each of (i.e., both) a first and second display: Block 42 may optionally include facilitating audio playback for content having audio. This may include simultaneously controlling outputting of the audio so that audio from each display portion is heard. The audio control may also include preventing audio from one or more of the display portions, such as but not limited to as a function of the remote control or user identity (one user may be dominate relative to another user, etc.) and/or as a function of content (sporting events, for example, may be controlled to be silent relative television viewing). The audio from one or more of the display portions may be transmitted to personal audio units (headsets, etc.), either through wireline or wireless communications, so as to permit one or more of the users to listen to audio independently or other audio associated with the other displayed content. (Spec. 7:10-20). Appellant cited no other support for this limitation, and none is readily apparent. We therefore reject claim 25 and its dependent claims (claims 26 and 27) under 35 U.S.C. § 112 ¶ 1 for lack of written description. DECISION We AFFIRM the rejection of claims 1-17, 21, 23, and 24 under 35 U.S.C. § 103(a). We REVERSE the rejection of claims 25-27 under 35 U.S.C. § 103(a). We enter a NEW GROUND OF REJECTION for claims 25-27 under 35 U.S.C. § 112 ¶ 1. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with Appeal 2012-004909 Application 11/561,535 8 respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) tc Copy with citationCopy as parenthetical citation