Ex Parte Kulas

Patent Trial and Appeal Board

Feb 29, 2016

11562965 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111562,965 11122/2006
105758 7590 03/02/2016
Renaissance IP Law Group LLP (Portland - North)
7327 SW Barnes Road #521
Portland, OR 97225
Charles J. Kulas
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.
46103/0620 1155
EXAMINER
CHIO, TAT CHI
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
matthew. phillips@renaissanceiplaw.com
docket. clerk@renaissanceiplaw.com
PhillipsPatentLawyer@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES J. KULAS
Appeal2014-008174 1
Application 11/562,965
Technology Center 2400
Before MAHSHID D. SAADAT, NORMAN H. BEAMER,
and ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5, 7-9, 13, 14, 16-18, and 20-35.2 Claims 6, 10-12,
15, and 19 are cancelled. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm-in-part.
1 An oral hearing was held February 16, 2016.
2 Appellant identifies Fall Front Wireless NY, LLC, an affiliate of
Intellectual Ventures Management LLC, as the real party in interest. (App.
Br. 1.)
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Application 11/562,965
THE INVENTION
Appellant's invention is directed to selectively displaying tags during
a video program using a user control such as a television remote control
device. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for controlling display of one or more visually
perceptible tags in association with a video presentation, the
method comprising:
receiving a first signal from an input control at a first
point in a video sequence while the video sequence is being
presented via a display device without any visually perceptible
tags; and
in response to receiving the first signal from the input
control, causing the display device to continuously playback the
video sequence with at least one visually perceptible tag
starting at a second point in the video sequence, wherein the
second point in the video sequence is earlier in the video
sequence than the first point in the video sequence.
REJECTIONS
The Examiner rejected claims 1-5, 8, 9, 13, 14, 17, 18, 21-23, 25, and
27 under 35 U.S.C. § 103(a) as being unpatentable over Kanazawa et al. (US
6,580,870 Bl, issued Jun. 17, 2003) in view of Nishikawa et al. (US
2006/0078297 Al, pub. Apr. 13, 2006) and Chung et al. (US 2003/0086690
Al, pub. May 8, 2003). (Final Act. 9-22.)
The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Kanazawa, Nishikawa, Chung, and Yamamoto (US
6,725,215 B2, issued Apr. 20, 2004). (Final Act. 23.)
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The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Kanazawa, Nishikawa, Chung, and Kageyama et al. (US
2005/0031315 Al, pub. Feb. 10, 2005). (Final Act. 23-24.)
The Examiner rejected claims 29 and 30 under 35 U.S.C. § 103(a) as
being unpatentable over Kanazawa, Nishikawa, Chung, Kageyama, and
Kenney (6,026,376, issued Feb. 15, 2000). (Final Act. 24--25.)
The Examiner rejected claims 7, 16, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Kanazawa, Nishikawa, Chung, and Asada et al.
(US 2004/0081437 Al, pub. Apr. 29, 2004). (Final Act. 25-27.)
The Examiner rejected claims 28 and 31-35 under 35 U.S.C. § 103(a)
as being unpatentable over Kanazawa, Nishikawa, Chung, and Kenney.
(Final Act. 27-29.)
ISSUES ON APPEAL
Appellant's arguments in the Appeal Brief present the following
issues: 3
Issue One: Whether the combination of the cited references teaches or
suggests the limitation of independent claim 1, "causing the display device
to continuously playback the video sequence with at least one visually
perceptible tag ... ," and similar limitations recited in independent claims
13, 17,27,and31. (App.Br.6, 15-21.)
3 Rather than reiterate the arguments of Appellant and positions of the
Examiner, we refer to the Appeal Brief (filed Jan. 27, 2014), Reply Brief
(filed July 23, 2014), Final Office Action (mailed Aug. 26, 2013), and the
Examiner's Answer (mailed May 23, 2014) for the respective details.
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Issue Two: Whether the combination of the cited references teaches or
suggests the limitation of independent claim 31: "causing the display device
to play the video sequence ... with two or more visually perceptible tags."
(App. Br. 21-23.)
Issue Three: Whether the combination of the cited references teaches
or suggests the limitations of claims 8 and 9. (App. Br. 23-25.)
Issue Four: Whether the combination of the cited references teaches
or suggests the limitations of claims 5, 7, 14, 16, 18, and 20. (App. Br. 25-
27 .)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. Except with respect to the rejection
of claims 8 and 9, we disagree with Appellant's arguments: we adopt as our
own ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 9-15, 17-29) and (2) the reasons
set forth by the Examiner in the Examiner's Answer in response to
Appellant's Appeal Brief (Ans. 22-36, 38-39), and we concur with the
conclusions reached by the Examiner. We emphasize the following.
Issue One
Appellant argues Kanazawa teaches away from the claimed invention:
The rejections of all claims should be reversed because
the cited references collectively fail to teach or suggest
tum[ing] on [] tags while playback of the video occurs
"continuously" (claims 1 and 27), "in motion" (claim 13), "in a
non-paused play mode" (claim 17) or "in a ... forward play
mode" (claim 31 ). Instead, the primary reference - Kanazawa -
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actually teaches the opposite: Pausing playback of the video
when alleged "tags" are turned on. Yet, the Examiner
misinterprets one passage of Kanazawa to cling to his position.
When that passage - and Kanazawa as a whole - are properly
understood, the proposed modification of Kanazawa is
untenable to one of ordinary skill in the art.
(App. Br. 6-7; see also App. Br. 15-18.) This argument is not persuasive,
because the Kanazawa reference, after describing an embodiment in which
playback is paused when a tag is turned on, then explicitly states an
alternative that, together with the disclosure of Chung, teaches or suggests
the claim limitation at issue: "It is, of course, possible to display the browser
while continuing the playback of the DVD video." (Kanazawa col. 16, 11.
39--40; see also Final Act 10-11; Chung i-f 108.)
Appellant argues that, taken in context, the passage in Kanazawa
"simply refers to continued display of the browser after playback of the
DVD video has resumed." (App. Br. 18.) The Examiner correctly rejects
this argument - we find the plain meaning of the passage in question is as
the Examiner understands it, and the portion of Kanazawa immediately
preceding that passage on which Appellant relies does not suggest otherwise.
(Ans. 24-25.)
In addition, as the Examiner also correctly finds, the disputed claim
limitation is at least taught or suggested by Appellant's proffered
interpretation of Kanazawa's disclosure, because the broadest reasonable
interpretation of the limitation allows for a pause in playback, followed by a
resumption of playback. (Ans. 25-26.) And indeed, one embodiment
disclosed in Kanazawa provides for automatic resumption of playback "after
a specific period of time has elapsed." (Kanazawa col. 16, 11. 34-35.)
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Appellant argues that this claim interpretation "ignores the phrase 'in
response to [receiving the first signal]' in the claims." (App. Br. 18, n. 2.)
This too is unpersuasive, because the broadest reasonable interpretation of
"in response to receiving the first signal" accommodates a pause between the
claimed "signal" and the resulting "response."
As variations on the above "teaching away" argument, Appellant
posits further arguments on similar grounds: "The Proposed Modification of
Kanazawa Would Render Kanazawa Unsuitable for its Intended Purpose";
"The Proposed Modification of Kanazawa Would Change a Fundamental
Principle of Operation ofKanazawa"; and "There is No Sound Motivation or
Other Legally Sufficient Rationale to Make the Proposed Modification to
Kanazawa." (App. Br. 19-21.) For at least the reasons as discussed above,
none of these arguments is persuasive. (Ans. 26-36.)
Issue Two
Appellant argues that the combination of Kanazawa, Nishikawa,
Chung, and Kenney does not teach or suggest "two or more visually
perceptible tags." (App. Br. 21-23.) The Examiner relies, inter alia, on the
disclosure in Kenney of multiple tags associated with a video presentation.
(Final Act. 27; Kenney Fig. 7.) Appellant argues, "Kanazawa, the primary
reference, clearly contemplates only a single WWW browser ... on the
display screen. There is simply no room for a second WWW browser on
Kanazawa's display screen." App. Br. 22. However, we agree with the
Examiner: "Kenney's teaching can extend Kanazawa's one browser window
implementation to at least two." (Ans. 36.) In KSR, the Court stated "[t]he
combination of familiar elements according to known methods is likely to be
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obvious when it does no more than yield predictable results." KSR Int'! Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used
to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill. . . . [A] court must ask
whether the improvement is more than the predictable use of
prior art elements according to their established functions.
Id. at 417. Appellant has not demonstrated that the Examiner's proffered
combination of references would have been uniquely challenging or difficult
for one of ordinary skill in the art. See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418).
Issue Three
Claim 8, dependent from claim 1, requires "changing the function" of
the "first signal" - per claim 1, the signal first causes the "visually
perceptible tag" to appear; per claim 8, the signal then removes the tags.
The Examiner relies on the disclosure in Kanazawa of a "web link button" as
satisfying the claimed "first signal." (Final Act. 15-16; Kanazawa Fig. 19A,
co. 15, 11. 34--45.) Appellant points out that the web link button does not
change function to tum off the tag display. (App. Br. 24--25.) We agree
with Appellant - the Examiner has not addressed this point, nor cited
support in the record related to this aspect of claim 8. Therefore, we do not
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sustain the rejection of claim 8, or the rejection of claim 9, which depends
from claim 8.
Issue Four
Claims 5, 14, and 18 require an alternate "slow forward play" mode,
and claims 7, 16, and 20 require an alternate "reduced frame rate of play"
mode. The Examiner relies on the disclosure in Nishikawa of slow forward
play, and the disclosure in Asada of reduced frame rate of play. (Final Act.
15, 26; Nishikawa Fig. 2F; Asada Figs. 32D-F, i-fi-f 156, 157.) Appellant's
arguments are unpersuasive because they focus on the references separately,
whereas the Examiner's rejections are based on the combination of
references. (App. Br. 25-26.) See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Keller, 642 F .2d
413, 425 (CCPA 1981).
CONCLUSION
For the reasons discussed above, we sustain the obviousness rejections
of the following claims: claims 1, 5, 13, 14, 17, 18, 27, over Kanazawa,
Nishikawa, and Chung; claim 31 over Kanazawa, Nishikawa, Chung, and
Kenney; and claims 7, 16, and 20 over Kanazawa, Nishikawa, Chung, and
Asada.
We also sustain the obviousness rejection of the following claims,
which are not argued separately with particularity: claims 2--4, 21-23, and
25 over Kanazawa, Nishikawa, and Chung; claim 24 over Kanazawa,
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Nishikawa, Chung, and Yamamoto; claim 26 over Kanazawa, Nishikawa,
Chung, and Kageyama; claims 29 and 30 over Kanazawa, Nishikawa,
Chung, Kageyama, and Kenney; and claims 28 and 32-35 over Kanazawa,
Nishikawa, Chung, and Kenney.
For the reasons discussed above, we do not sustain the obviousness
rejection of claims 8 and 9 over Kanazawa, Nishikawa, and Chung.
DECISION
The Examiner's rejection of claims 1-5, 7, 13, 14, 16-18, and 20-35
is affirmed.
The Examiner's rejection of claims 8 and 9 is reversed.
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-fN-P ART
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