Ex Parte Kulas

Patent Trial and Appeal Board

Jul 21, 2016

11499315 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111499,315 08/04/2006
105758 7590 07/25/2016
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.
46103/0610 3016
EXAMINER
CHIO, TAT CHI
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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
Appeal2015-002665
Application 11/499,315
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 2, 7-19, 21, 22, 25-34, and 36. Claims 3, 5, 6,
37, and 38 are objected to, and claims 4, 20, 23, 24, and 35 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 The real party in interest identified by Appellant is Fall Front Wireless NY,
LLC, which is affiliated with Intellectual Ventures Management LLC.
Appeal Br. 1.
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Application 11/499,315
STATEMENT OF THE CASE
Introduction
Appellant's invention relates generally to displaying tags that provide
information about items that are visible during video playback. Abstract.
Claim 1 is representative and reads as follows:
1. A method comprising:
receiving a video sequence including a visually
perceptible item;
selectively causing a display device to present the video
sequence at any given time in one of a plurality of modes,
including a first mode and a second mode;
in the first mode, causing the display device to present
the video sequence with a tag, wherein the tag comprises a
frame and text of descriptive information describing the
visually perceptible item in the video sequence and a visually
perceptible indicator that extends between, on one end, the tag
or a location proximate the tag and, on the other end, the
visually perceptible item or a location proximate the visually
perceptible item, thereby causing simultaneous display of the
visually perceptible item, the frame of the tag, the text of the
tag, and the visually perceptible indicator with the video
sequence in the first mode; and
in the second mode, causing the display device to present
the video sequence without the tag and without the visually
perceptible indicator, thereby causing display of the visually
perceptible item in the video sequence with neither the frame of
the tag, the text of the tag, nor the visually perceptible indicator
in the second mode.
Appeal Br. 19 (Claims App'x).
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Application 11/499,315
Hirayama et al.
Kenney
Toomey et al.
Sampsell
Abecassis
Kanazawa et al.
De Haan et al.
Bickford et al.
Kageyama et al.
Gilfix et al.
Sloo et al.
References
us 5,835,669
us 6,026,376
us 6,119,147
US 6,219,839 Bl
US 6,289,165 Bl
US 6,580,870 Bl
US 6,701,064 Bl
US 2004/0236504 Al
US 2005/0031315 Al
US 2005/0086690 Al
US 7,027,101 Bl
Rejections on Appeal
Nov. 10, 1998
Feb. 15,2000
Sept. 12, 2000
Apr. 17, 2001
Sept. 11, 2001
June 17,2003
Mar. 2, 2004
Nov. 25, 2004
Feb. 10,2005
Apr. 21, 2005
Apr. 11, 2006
1. Claims 1, 7, 17, 21, 22, 26, 29--31, 33, and 36 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gilfix, in view of Kenney.
2. Claims 2, 18, and 19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gilfix, in
view of Kenney, and further in view of Abecassis.
3. Claims 8-11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gilfix, in view of Kenney, and
further in view of Kageyama.
4. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gilfix, in view of Kenney, and
further in view of Bickford.
5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gilfix, in view of Kenney, and
further in view of Sampsell.
6. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
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Application 11/499,315
being unpatentable over Gilfix, in view of Kenney, and
further in view of De Haan.
7. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gilfix, in view of Kenney, and
further in view of Sloo.
8. Claim 32 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gilfix, in view of Kenney, and
further in view of Toomey.
9. Claim 34 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gilfix, in view of Kenney, and
further in view of Hirayama.
10. Claims 25 and 28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gilfix, in view of Kenney,
and further in view of Kanazawa.
Issues on Appeal
Appellant's arguments in the Appeal Brief2 and Reply Brief present
us with the following issues:
1. Does Gilfix teach "in the first mode, causing the display
device to present the video sequence with a tag," and "in
the second mode, causing the display device to present
the video sequence without the tag," as recited in
2 Our Decision refers to the Final Office Action (mailed Mar. 12, 2014,
"Final Act."), Appellant's Appeal Brief (filed Oct. 10, 2014, "Appeal Br.")
and Reply Brief (filed Dec. 12, 2014, "Reply Br."), the Examiner's Answer
(mailed Oct. 23, 2014, "Ans."), and the original Specification (filed Aug. 4,
2006, "Spec.").
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Application 11/499,315
independent claim 1, and similarly recited in independent
claims 1 7 and 21?
2. Has the Examiner provided a legally sufficient rationale
to combine Gilfix with Kenney?
3. Does Kenney teach "wherein a relative size of the
visually perceptible item changes during the video
sequence and wherein a relative size of the tag
automatically changes to correspond to the relative size
of the visually perceptible item as the relative size of the
visually perceptible item changes during the video
sequence," as recited in claim 29?
4. Does Kenney teach "wherein the visually perceptible
indicator comprises an arrow that extends from the tag
and the visually perceptible item or the location
proximate the visually perceptible item and the arrow
points to the visually perceptible item," as recited in
claim 31?
ANALYSIS
Unless otherwise indicated, we agree with, and adopt as our own, the
Examiner's findings and reasons as set forth in the Final Action from which
this appeal is taken (Final Act. 2-35) and the Examiner's Answer (Ans. 2-
37). For emphasis, we highlight specific arguments and findings as follows.
Issue 1
Appellant argues the Examiner inconsistently asserts both Gilfix's
tooltip text and associated interactive non-intrusive advertising content teach
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the claimed "tag," and further argues the claimed "tag" cannot be both the
tooltip text and the advertising content because Gilfix teaches the tooltip text
and the advertising content are different items. Appeal Br. 13-15; Reply Br.
1-2. Appellant further argues: (a) if Gilfix's tooltip text teaches the claimed
"tag," then Gilfix does not teach the claimed "second mode" as Gilfix does
not disclose a mode without visually indicating designated items via a tooltip
text; and (b) if Gilfix's interactive non-intrusive advertising content teaches
the claimed "tag," then Gilfix does not teach the claimed "first mode" as
Gilfix fails to teach many aspects of the claimed "first mode" with respect to
the advertising content, such as the positioning of the advertising content,
the relation of the advertising content to the video sequence, and whether the
advertising content is displayed within the video sequence. Appeal Br. 15.
Appellant additionally argues, assuming Gilfix's tooltip text is the
claimed "tag," the Examiner improperly combines separate embodiments of
Gilfix (i.e., the embodiments illustrated in Figures 5 and 6 of Gilfix), where
Gilfix fails to disclose that the separate embodiments are operable together.
Reply Br. 2-3. Appellant also argues Gilfix does not teach the claimed
features recited in claim 22. Reply Br. 3--4.
The Examiner finds Gilfix teaches the claimed "first mode," as Gilfix
teaches a display of items having associated interactive non-intrusive
advertising content, where the items include a cotton towel, and where the
display visually designates the cotton towel as a designated item by
surrounding it with a rectangle and displaying a tooltip text "Cotton Towel."
Ans. 34. The Examiner further finds Gilfix also teaches the claimed "second
mode," as Gilfix teaches, upon receiving a selection signal, the display
determines whether a cursor is within a screen region associated with a
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Application 11/499,315
displayed item, and only displays the advertising content if the cursor is
within the screen region. Ans. 34--35. The Examiner also finds the
interpretation of the claimed "tag" is consistent because the advertising
content is the tooltip. Ans. 35.
We do not find Appellant's argument persuasive. Appellant's claims
recite a tag comprising "a frame and text of descriptive information
describing [a] visually perceptible item in [a] video sequence." Gilfix
discloses that, in response to a designation signal, a display places a
rectangle around, and displays tooltip text (i.e., descriptive text) for, a
visually perceptible item that has associated interactive non-intrusive
advertising content. Gilfix i-f 36. Thus, we agree with the Examiner that
Gilfix's rectangle and tooltip text teach the claimed "tag." Final Act. 4--5;
Ans. 35. Further, we conclude the Examiner's interpretation of the claimed
"tag" is not inconsistent, as the Examiner consistently interprets the claimed
"tag" as Gilfix's rectangle and tooltip text, which indicates the presence of
associated advertising content. Ans. 35. Gilfix further discloses two modes
of system operation: a first mode where a system identifies an item that has
associated advertising content by identifying an item where a rectangle and
tooltip text are displayed for the item; and, a second mode where a system
identifies an item that has associated advertising content by identifying a
screen region for an item where a selection signal is received (i.e., where a
rectangle and tooltip text are not displayed for the item). See Gilfix i-fi-164,
82-90, Figs. 4--6. Thus, we also agree with the Examiner that Gilfix's two
modes teach the claimed "first mode" and "second mode." Final Act. 4--7;
Ans. 34--35.
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We further disagree with Appellant's argument that the Examiner
improperly combined separate embodiments in finding Gilfix teaches the
claimed "first mode" and "second mode" because: (a) Appellant's claims
merely require the display device present the video sequence in one of a
plurality of modes at any given time; and, (b) Gilfix fails to teach its two
modes are exclusive modes. Further, we conclude Appellant's argument
regarding claim 22 is waived because the argument was raised for the first
time in the Reply Brief without a showing of good cause. See 37 C.F.R.
§ 41.41(b )(2); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) ("[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.").
Issue 2
Appellant argues there is no reason to modify Gilfix in the manner
proposed by the Examiner because the inclusion of a lead line, as taught by
Kenney, within Gilfix would be redundant and unnecessary, as Gilfix
already teaches providing a border around an indicated designated item.
Appeal Br. 16. Appellant further argues the Examiner's purported
motivation for the modification (i.e., to clarify an association between tooltip
text and the designated item) does not make sense because "there is no
chance ... a user might mismatch tooltip text with the wrong item." Reply
Br. 4. Thus, as argued by Appellant, there is no rational underpinning to
support the legal conclusion of obviousness for the Examiner's proposed
modification to Gilfix. Appeal Br. 1 7.
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The Examiner finds it would have been obvious to one of ordinary
skill in the art, at the time the invention was made, to incorporate the known
technique of displaying a visually perceptive indicator (i.e., lead line)
extending between descriptive information and a visually perceptive item, as
taught by Kenney, into the display taught by Gilfix because the
incorporation would allow the user to more easily see a match between the
descriptive information and the item. Final Act. 7. The Examiner further
finds the additional display of a lead line would make it even clearer which
item the descriptive information is referring to. Ans. 36.
We do not find Appellant's argument persuasive. "The combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results." KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007). We agree with the Examiner that
the incorporation of the known technique of displaying a lead line extending
between descriptive information and a visually perceptive item, as taught by
Kenney, into the display taught by Gilfix, would have been obvious to one
of ordinary skill in the art, as Appellant has not shown the combination
would do more than yield the predictable results of a display including both
a border (e.g., rectangle) around an indicated designated item and a lead line
adjacent to the indicated designated item.
Accordingly, we sustain the Examiner's rejection of independent
claims 1, 17, and 21 under 35 U.S.C. § 103(a) based on the combination of
Gilfix and Kenney. We further sustain the Examiner's rejection of
dependent claims 2, 7-16, 18, 19, 22, 25-28, 30-34, and 36, which are not
argued separately.
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Issue 3
Appellant argues nothing in Figures 5-9 of Kenney, or elsewhere in
Kenney, teaches or suggests a change in the sizes of items and textual
indicators. Appeal Br. 17; Reply Br. 5. The Examiner finds Kenney teaches
the relative sizes of the items and the textual indicators change, and the size
changes are shown in Figures 5-9 of Kenney. Final Act. 14; Ans. 36-37.
We agree with the Examiner that Figures 5-9 of Kenney teach
changes to the relative sizes of the items. However, we agree with Appellant
that Figures 5-9 of Kenney do not teach or suggest automatic changes to the
relative sizes of the textual indicators corresponding to the relative sizes of
the items as the relative sizes of the items change. Thus, we do not sustain
the Examiner's rejection of claim 29 under 35 U.S.C. § 103(a).
Issue 4
Appellant argues Figure 7 of Kenney shows lines rather than arrows.
Appeal Br. 18. Appellant further argues the Examiner's Answer presents a
new ground of rejection of claim 31 by newly asserting it would have been
obvious to add an arrow to the line in Figure 7 of Kenney, where,
previously, the Examiner had asserted Kenney' s line is an arrow. Reply
Br. 5. The Examiner finds Figure 7 of Kenney teaches a line is drawn
between an item and descriptive information, and further finds it would have
been obvious for one of ordinary skill in the art, at the time of the invention,
to modify the line to include an arrow because such a modification involves
routine and ordinary computer programming skill. Ans. 37.
We do not find Appellant's argument persuasive. As previously
described, an obvious analysis "need not seek out precise teachings directed
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to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR, 550 U.S. at 418. We conclude the Examiner
has articulated reasoning with rational underpinning to support the
conclusion that it would have been obvious for one of ordinary skill in the
art to modify the line taught by Kenney to include an arrow because the
modification does not involve more than routine computer programming
skill.
Further, we refuse to designate the argument in the Examiner's
Answer as a new ground of rejection because the failure to designate a
rejection as a new ground of rejection is a petitionable issue, rather than an
appealable issue, and Appellant has failed to petition that the rejection be
designated a new ground of rejection. See MPEP § 1207.03(b)
("3 7 CPR 41.40 sets forth the exclusive procedure for an appellant to request
review of the primary examiner's failure to designate a rejection as a new
ground of rejection via a petition to the Director under 37 CPR 1.181,"
emphasis added).
Accordingly, we sustain the Examiner's rejection of claim 31 under
35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1-2, 7-19, 21, 22,
25-28, 30-34, and 36 under 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claim 29 under
35 U.S.C. § 103(a).
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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-IN-PART
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