Ex Parte Kirsche

Patent Trial and Appeal Board

Aug 28, 2014

11561535 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD KIRSCHE
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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.

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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,
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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
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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
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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.)
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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
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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
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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)

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