Ex Parte Kulas

Patent Trial and Appeal Board

Feb 26, 2016

12172185 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/172, 185 07/11/2008
105758 7590 03/01/2016
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.
46103/0810 4417
EXAMINER
TRAN,HAIV
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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
Appeal2014-005284
Application 12/172, 185
Technology Center 2400
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-19, 21-25, 27, and 29. 3 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 An oral hearing was held for this appeal on February 16, 2016.
2 Appellant identifies as the real party in interest Fall Front Wireless NY,
LLC (App. Br. 1 ).
3 Claim 20 has been canceled and claims 26, 28, and 30 have been objected
to, but indicated as allowable if rewritten in independent form to include the
limitations of their base claim and any intervening claims (Final Act. 5).
Appeal2014-005284
Application 12/172, 185
STATEMENT OF THE CASE
Appellant's invention relates to a method and apparatus for displaying
tags with a visual association to an item in the displayed video (see
Abstract). Claim 1 is illustrative and reads as follows:
1. A method comprising:
causing a display device to present a video in a video
area of the display device;
causing the display device to present a non-video area
distinct from the video area of the display device;
causing the display device to present a first tag in the
video area in association with a first item in the video, wherein
the first tag includes descriptive information describing the first
item in the video;
after causing the display device to present the first tag in
the video area, causing the display device to reposition the first
tag from the video area to the non-video area;
after causing the display device to present the first tag in
the video area and causing the display device to repos1t10n the
first tag from the video area to the non-video area, receiving
from an input device a selection of the first tag; and
in response to receiving from the input device the
selection of the first tag, performing a predetermined action to
provide additional information relating to the first item in the
video.
The Examiner rejected claims 1--4, 6, 8-11, 16, 18, 19, 21-25, 27, and
29 under 35 U.S.C. § 103(a) as being unpatentable over Ackley (US
7,224,401 B2; May 29, 2007), Amakawa (US 5,680,532; Oct. 21, 1997), and
Kikinis (US 5,929,849; July 27, 1999) (see Final Act. 6-16).
The Examiner further added Schrock (US 2009/0024927 Al; Jan. 22,
2009) to reject claim 17; Stochosky (US 7,343,561 Bl; Mar. 11, 2008) to
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Appeal2014-005284
Application 12/172, 185
reject claim 5; Fontes (US 8,073,830 B2; Dec. 6, 2011) to reject claim 7;
Gilfix (US 2005/0086690 Al; Apr. 21, 2005) to reject claims 7 and 12;
Gilfix and Portuesi (US 5,987,509; Nov. 16, 1999) to reject claims 13-15
under 35 U.S.C. § 103(a) (see Final Act. 16-25).
ANALYSIS
The Examiner finds Ackley discloses the recited steps of claim 1, but
does not teach the steps of "causing the display device to present a first tag
in the video area in association with a first item in the video, wherein the
first tag includes descriptive information describing the first item in the
video" and "after causing the display device to present the first tag in the
video area, causing the display device to reposition the first tag from the
video area to the non-video area" (Final Act. 7). The Examiner relies on
passages in columns 7 and 8 of Amakawa as teaching these missing steps
and expiains the proposed modification to Ackiey as foHows:
Therefore, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to modify
Ackley by having the system to integrate the method of
displaying an element at a location/position of the screen's
display while playing the video content and then causing the
display device to reposition the presented element from its
location/position to another location/position of the screen's
display, as taught by Amakawa ....
(Final Act. 8). The Examiner further relies on Kikinis for disclosing "the
first tag includes descriptive information describing the first item in the
video" and "performing a predetermined action to provide additional
information relating to the first item in the video" (Final Act. 9).
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Appeal2014-005284
Application 12/172, 185
Appellant contends the combination of Ackley and Amakawa is
improper because causing the subtitles or similar text, as disclosed by
Ackley, to move based on the teachings of Amakawa "would have been
contrary to common sense" (App. Br. 18). Appellant also argues that such
combination would be against Ackley' s teaching to "always place the
subtitles and similar text in the unused portion, never on the video portion"
(App. Br. 18-19). Appellant further contends the combination would be
contrary to Ackley's intended purpose of taking advantage of the unused
portion of the display for the subtitles (App. Br. 20). 4
The Examiner responds by explaining that causing "'graphical
interface elements', i.e., icons, advertisements, etc ... , to be displayed on the
video portion for a very short of [sic] period of time and then to undergo
motion, like moving an object, as taught by Amakawa's system" would not
be against common sense because:
[D]oing otherwise would not creating [sic] a visual effect of
repositioning Ackley's icons, advertisements, menu screen and
overlay text besides of subtitles from the video portion into the
unused portions of the screen thereby eliminating any visual
conflict between video and the objects of the video while at the
same time creating a visual effect would not been contrary to
common sense, as alleged by Appellant.
(Ans. 4). The Examiner further reasons that:
Moreover, Ackley does not preclude/exclude from the
possibility of having icons, advertisements, menu screen,
overlay text and/or subtitles to be displayed on the video
portion for a very short of period of time and then dynamically
move/assign icons, advertisements, menu screen and overlay
4 We do not address Appellant's other arguments because the contentions
discussed here are dispositive.
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Appeal2014-005284
Application 12/172, 185
text besides of subtitles into the into the [sic] unused portions of
the screen.
(Ans. 4--5).
As asserted by Appellant (Reply Br. 1-2), Ackley always places the
text in the unused space on the screen rather than placing the text on the
video portion and then moving the text to the unused portion. Ackley
describes improving the existing systems, which place the text over the
video content, by positioning the text in the unused portion in order to
enhance the readability of the text (col. 3, 11. 26-31 ). That is, by taking
advantage of the unused areas of the display when the aspect ratio of the
video and the screen differ, the text is always placed on the unused portion
of the screen, instead of first placing the text on the video portion and then
moving the text to the unused portion. The Examiner's conclusion that the
text could be displayed on the video portion for a short period of time and
then dynamically moved into the unused portion of the screen is based on
probability and speculation, and not based on any teaching of Ackley. The
Examiner may not, because of doubt that the invention is patentable, resort
to speculation, unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967).
Accordingly, Appellant's arguments have persuaded us of error in the
Examiner's position with respect to the rejection of independent claim 1,
independent claims 9 and 10, which recite similar limitations, and claims 2-
8, 11-19, 21-25, 27, and 29 dependent therefrom.
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Appeal2014-005284
Application 12/172, 185
DECISION
The Examiner's decision to reject claims 1-19, 21-25, 27, and 29 is
reversed.
REVERSED
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