Ex Parte Kunkel et al

Patent Trial and Appeal Board

Aug 4, 2016

11093627 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111093,627 0313012005
71867 7590 08/08/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Gerard Kunkel
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.
007412.00147 8618
EXAMINER
SALCE, JASON P
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERARD KUNKEL, STEVE SILVA,
TY 0. AHMAD-TAYLOR, JAMES CAPPS,
MITCHELL J. WEINRAUB, GARY TRAVER,
DANIEL P. GROUSTRA, MICHAEL CHEN, and
GRIFFIN MOORE
Appeal2015-003533
Application 11/093,627 1
Technology Center 2400
Before LARRY J. HUME, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1--41, 43-58, 60-79, 81, 83-103, 105-107, and 109-
115. Appellants have previously canceled claims 42, 59, 80, 82, 104, and
108. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Comcast Cable
Holdings, LLC. App. Br. 1.
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Application 11/093,627
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed "invention relates to methods and
systems of providing a user interface." Spec. 1, 11. 5---6 ("Field of the
Invention").
Exemplary Claims
Claims 1, 28, and 110, reproduced below, are representative of the
subject matter on appeal (emphasis and formatting added to contested
limitations):
1. A method comprising:
generating a composite video feed comprising a plurality
of video feeds; and
generating, by a processor, a user interface instruction
that instructs a media device to present a user interface,
comprising one or more video windows to simultaneously
present one or more of the plurality of video feeds, respectively,
wherein the user inteiface covers each of the plurality of
video feeds that is associated with a theme different from a user
selected theme.
28. The method of claim 1, further compnsmg
replacing one of the plurality of video feeds from the composite
video feed with a local video feed.
110. The method of claim 1, wherein generating the
composite video feed comprises:
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 8, 2014); Reply Brief ("Reply Br.," filed Feb. 4, 2015); Examiner's
Answer ("Ans.," mailed Dec. 4, 2014); Final Office Action ("Final Act.,"
mailed Feb. 4, 2014); and the original Specification ("Spec.," filed
Mar. 30, 2005).
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receiving a plurality of requests from a plurality of media
devices, each request comprising one or more video feed
identifiers identifying a respective video feed; and
generating the composite video feed to comprise the
plurality of video feeds according to the one or more video feed
identifiers.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hendricks et al. ("Hendricks") us 5,659,350 Aug. 19, 1997
Goodman et al. ("Goodman") US 6,173,271 Bl Jan.9,2001
Shoff et al. ("Shoff') US 6,240,555 B 1 May 29, 2001
David et al. ("David") US 6,449,632 Bl Sept. 10, 2002
Martin ("Martin '692 ") US 2002/0154692 Al Oct. 24, 2002
Purpura et al. ("Purpura") US 2006/0282852 Al Dec. 14, 2006
Martin et al. ("Martin '512") US 7,174,512 B2 Feb. 6,2007
Rejections on Appeal
RI. Claims 1-29, 31--41, 43, 44, 46-58, 60-79, 81, 83-103, 105-
106, and 113-115 stand rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Martin '512 and Purpura. Final Act. 2. 3
R2. Claim 45 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Martin '512, Purpura, and Shoff. Final
Act. 23.
3 We note the Examiner's statement of the rejection (Final Act. 2) includes
claim 45 under Rejection RI, but does not address this claim in the detailed
rejection. Instead, claim 45 is rejected under Rejection R2. See Final
Act. 23.
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R3. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Martin '5I2, Purpura, and Goodman. Id.
R4. Claims I07 and I09 stand rejected under 35 U.S.C. § I03(a) as
being obvious over the combination of Martin '5I2, Purpura, and Hendricks.
Final Act. 24.
R5. Claims I IO-I I2 stands rejected under 35 U.S.C. § I03(a) as
being obvious over the combination of Martin '5I2, Purpura, and David.
Ans. 6-7. 4
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5-8), we decide the appeal
of obviousness Rejection RI of claims I-27, 3 I--4I, 43, 44, 46-58,
60-79, 8I, 83-I03, I05-I06, and I I3-I I5 on the basis of representative
claim I; and we decide the appeal of obviousness Rejection RI of claims 28
and 29 on the basis of representative claim 28. We decide the appeal of
obviousness Rejection R5 of claims I IO-I I2 on the basis of representative
claim I I 0.
Remaining claims 30, 45, I07, and I09 in rejections R2 through R4,
not argued separately, stand or fall with the respective independent claim
from which they depend. 5
4 As pointed out by Appellants (Reply Br. 5---6), the Examiner invoked an
undesignated new ground of rejection of claims I IO-I I2 by citing the David
reference in the Answer, rather than Martin '692 as in the Final Action.
Compare Ans. 6-7 with Final Act. 26. Appellants respond to the new
ground of rejection in the Reply Brief, thus rendering any potential
petitionable objection moot.
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1--41,
43-58, 60-79, 81, 83-103, 105-107, and 109-115, and we incorporate
herein and adopt as our own: ( 1) the findings and reasons set forth by the
Examiner in the Action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We incorporate such findings, reasons, and rebuttals herein by
reference unless otherwise noted. However, we highlight and address
specific findings and arguments regarding claim 1 for emphasis as follows.
1. Rejection RI of Claims 1-27, 31--41, 43, 44, 46-58, 60-79, 81, 83-
103, 105-106, and 113-115
Issue 1
Appellants argue (App. Br. 5-7; Reply Br. 3-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Martin '512 and Purpura is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the step of generating a user
interface, "wherein the user interface covers each of the plurality of video
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
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feeds that is associated with a theme different from a user selected theme,"
as recited in claim 1?
Analysis
Appellants generally contend, 6 " [ n Jone of the cited documents, either
alone or in combination, teach the above features of claim l" (App. Br. 6),
and particularly contend:
Martin fails to teach a user interface that covers each of the
plurality of video feeds that is associated with a theme different
from a user selected theme . . . [and] the Office Action relies
upon Purpura to show features related to covering video feeds
... [however] Purpura fails to cure the deficiencies of Martin.
Id. Appellants further contend:
It is clear from paragraphs [0028]-[0031] of Purpura that each
of these mosaic channels 200 is a separate channel and that the
mosaic channels 200 are displayed independently. As such, one
mosaic channel 200 does not cover a video cell 202 of another
mosaic channel 200. Simply changing from one mosaic channel
200 to another mosaic channel 200 also does not equate to
covering a video cell 202 because the earlier displayed mosaic
channel 200 is not beneath the subsequently displayed mosaic
channel 200.
Id. Appellants also argue Purpura's disclosure merely addresses the
capability to add or delete video cells 202 to mosaic channels 200, and that
any such addition or deletion "is performed to accommodate a change in the
number of video feeds of the mosaic channels 200 ... [and t ]he adding and
deleting of video cells 202 in Purpura does not act to uncover or cover fixed
video feeds of the mosaic channel 200." App. Br. 6-7.
6 We note Appellants' heading "A" on page 5 of the Appeal Brief is in error
because claims 1, 13, 16, 23, and 26 are not all independent claims.
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We first note, "[i]n the patentability context, claims are to be given
their broadest reasonable interpretations ... limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to
a term "must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsdeifer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description"). Absent
an express intent to impart a novel meaning to a claim term, the words take
on the ordinary and customary meanings attributed to them by those of
ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.,
334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
The Examiner relies upon Purpura in Figures 5 through 8 and
paragraph 66 as teaching or at least suggesting the contested wherein clause,
i.e., "wherein the user interface covers each of the plurality of video feeds
that is associated with a theme different from a user selected theme," as
recited in claim 1. As noted by the Examiner, Appellants fail to point to an
explicit definition of the term "covers" in their Specification, and their
disclosure does not "include any specific detail as to how one of the video
feeds are covered" (Ans. 3--4), such that Appellants' arguments quoted above
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regarding one of video feeds still residing "beneath another video feed is not
supported by Applicant[s'] own specification." 7 Ans. 4 (emphasis omitted).
In construing the claim term "covers" under a broad but reasonable
interpretation, the Examiner cites to two different dictionary definitions.
Ans. 4--5. With regard to the second definition of "covers" cited by the
Examiner, i.e., "to be over much or all of the surface of[,"] "to hide from
sight or knowledge," and "to lie over" (Ans. 5 (emphasis omitted)), we agree
with the Examiner's findings and legal conclusion, that is:
Id.
[N]one of these definitions require that the actual previously
displayed video feeds still exist behind the currently displayed
video feeds. Purpura discloses a user transitioning between two
sets of video feeds in Figures 6-7, wherein Figure 6 displays
news video feeds and a user can select to display kids video
feeds in Figure 7 which covers the news video feeds.
Moreover, Appellants' challenge to the references individually is not
convincing of error in the Examiner's position. See In re Keller, 642 F .2d
413, 426 (CCPA 1981) ("one cannot show nonobviousness by attacking
references individually where, as here, the rejections are based on
combinations of references" (citations omitted)). Additionally, " [ t ]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int'! Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Furthermore, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
7 We note the issue of whether written description support for the contested
limitation under§ 112, second paragraph, is not before us on appeal.
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v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). In the present case,
the Examiner found that the proposed combination would have resulted in
using Martin's user interface in combination with Purpura's inclusion of
additional themed mosaic displays "for the purpose of providing interactive
mosaic channels according to different genres (see Paragraph 0066) which
allows a user to view only channels that correlate to a theme the user is
currently interested in viewing." Final Act. 4. We find this articulated
rationale to be sufficient to justify the combination.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 2-27; 31--41; 43; 44; 46-58; 60-79; 81; 83-103; 105-106; and 113-
115 which fall therewith. See Claim Grouping, supra.
2. Rejection RI of Claims 28 and 29
Issue 2
Appellants argue (App. Br. 7-8; Reply Br. 5) the Examiner's rejection
of claim 28 under 35 U.S.C. § 103(a) as being obvious over the combination
of Martin '512 and Purpura is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, which further includes the step of
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"replacing one of the plurality of video feeds from the composite video feed
with a local video feed," as recited in claim 28?
Analysis
Appellants contend the cited portions of Martin relating to the
rejection of claim 28 "only discuss adding local content, and not replacing
content from a composite video feed with the local content." App. Br. 8.
In response, the Examiner finds, and we agree, Martin teaches "local
video content can be added to the portal and changed depending on time
or the context" (Ans. 5; and see Martin col. 13, 11. 23-28), and "[c]olumn 14,
[l]ines 29-50 [of Martin] further discloses that an editor can replace any of
the video feeds with local content." Ans. 5---6.
Appellants have 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), nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 28, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
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Examiner's obviousness rejection of claim 28, and grouped claim 29 which
falls therewith. See Claim Grouping, supra.
3. Rejection R5 of Claims 110-112
Issue 3
Appellants argue (Reply Br. 5-7) the Examiner's rejection of claim
110 under 35 U.S.C. § 103(a) as being obvious over the combination of
Martin '512, Purpura, and David is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1, wherein the step of generating the
composite video feed comprises, inter alia, "generating the composite video
feed to comprise the plurality of video feeds according to the one or more
video feed identifiers," as recited in claim 11 O?
Analvsis
Appellants contend, "Martin '692 [(paragraph 59)] merely discloses
that a single user can select the programs he wishes to include in his
preferred mosaic. . . . In other words, Martin '692 does not disclose that the
selected programs may be identified based on requests received from a
plurality of media devices." App. Br. 8 (emphasis omitted).
In response, and as mentioned above (see n.4) the Examiner offers a
new ground of rejection of claim 110 by citing David (instead of Martin
'692) at column 7, line 50 and Figure 1 for teaching that selected broadcast
items can be collected into a plurality of user profiles for each media device,
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and also cites column 10, lines 36-43 for its teaching that broadcast items
can be a television program or video. Ans. 6.
The Examiner concludes:
At the time the invention was made, it would have been
obvious to a person of ordinary skill in the art to modify the
composite video feed construction system, as taught by Martin,
using the collaborative filtering composite video feed
construction functionality, as taught by David, for the purpose
of providing an improved system for providing feedback in a
data broadcast system (see Column 4, Lines 2-4 of David).
Ans. 6-7 (emphasis omitted).
In response to the Examiner's findings and legal conclusion of
obviousness, Appellants contend David does not teach or suggest generating
a composite video feed based upon a plurality of requests from a plurality of
media devices that include one or more video feed identifiers identifying a
respective video feed, and that it would not have been obvious to modify
Martin in view of David because "David is not related to choosing videos for
a composite video feed based on the community information ... [and] David
does not even disclose a composite video feed." Reply Br. 6. Appellants
additionally contend the Examiner's rejection, as modified by David in the
Answer, "is impermissibly based on hindsight as it gleans knowledge from
the present application" and, as such, the Examiner has failed to set forth a
prima facie case showing that claim 110 is obvious under§ 103(a) in view
of Martin and David. Reply Br. 7.
We disagree with Appellants' contentions.
We disagree because we find Appellants are arguing the references
separately. Further, because the Examiner rejects the claims as obvious over
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the combined teachings of Martin '512, Purpura, and David, the test for
obviousness is not what the references show individually but what the
combined teachings would have suggested to one of ordinary skill in the art.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We find David's teaching at column 7, line 50 et seq. (in addition to
other portions of David cited by the Examiner in the Answer) to be
particularly relevant to teaching or at least suggesting the contested
limitation of claim 110, i.e., "generating the composite video feed to
comprise the plurality of video feeds according to the one or more video
feed identifiers." 8
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 110, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of claim 110, and grouped claims 111 and
112 which fall therewith. See Claim Grouping, supra.
8 In agreement with the Examiner, we conclude the recited "video feed
identifier" at least reads on the disclosed "item" or "document."
Typically, the broadcasting center has a list of items to
broadcast, the list being made available to a broadcasting agent.
It is appreciated that each item, sometimes referred to herein as
a "document", [which] may comprise any article or item
typically broadcast by a broadcaster, such as, for example, a
document, an image, a video, a computer program, [or] a
television program ....
David col. 10, 11. 33--41.
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4. Rejections R2-R4 of Claims 30, 45, 107, and 109
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R4 of claims 30, 45, 107, and 109
under§ 103(a) (see App. Br. 7), we sustain the Examiner's rejection of these
claims. Arguments not made are waived.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3-7) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Briefthat were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R5 of claims 1--41, 43-58, 60-79, 81, 83-103, 105-107,
and 109-115 under 35 U.S.C. § 103(a) over the cited prior art combinations
of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1--41, 43-58, 60-
79, 81, 83-103, 105-107, and 109-115.
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
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