Ex Parte Lilleness et al

Patent Trial and Appeal Board

Jan 12, 2018

13801307 (P.T.A.B. Jan. 12, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/801,307 03/13/2013 Robert P. Lilleness 81230.71US11 9233
34018 7590
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
chiipmail @ gtlaw .com
escobedot@gtlaw.com
j arosikg @ gtlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT P. LILLENESS, HAN-SHENG YUH,
WEIDONG WILLIAM WANG, and WAYNE SCOTT
Appeal 2017-005945
Application 13/801,307
Technology Center 2100
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and SCOTT B.
HOWARD, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2017-005945
Application 13/801,307
Appellants request rehearing of our decision dated December 14, 2017
(“Dec.”), where we affirmed the Examiner’s obviousness rejections of
claims 1—17. Request for Rehearing filed Dec. 18, 2017 (“Req. Reh’g”). In
the Request, Appellants contend that we misapprehended or overlooked
certain arguments raised in connection with the Examiner’s rejection of
claim 1 as obvious over Mitchell, Maa, and Goulden.1 For the reasons noted
below, we deny the request to modify our decision.
First, Appellants contend that we misapprehended or overlooked
Appellants’ contention that the rejection cannot be maintained because it
allegedly lacks evidence or reasoning that Mitchell inherently discloses the
core of the claimed invention, namely every recited element except for
displaying a user interface element representing a media content provider.
Req. Reh’g 1—2. We emphasize “inherently” here, for Appellants’
contentions center on whether Mitchell inherently or necessarily discloses
the disputed limitations of claim 1. See, e.g., Req. Reh’g 2 (arguing that the
disputed limitations cannot be said to necessarily flow from the relied-upon
passages in Mitchell); Req. Reh’g 3—6 (alleging that our decision failed to
evidence that Mitchell inherently discloses the disputed limitations).
But our decision was not based on whether Mitchell inherently or
necessarily discloses the disputed limitations, but rather whether the cited
prior art, principally Mitchell, would have suggested those limitations to
render them obvious to ordinarily skilled artisans. See Dec. 6—10. Indeed,
we framed the issue on appeal explicitly in terms of this suggestion, namely
1 Because these references are cited in full on page 3 of our earlier decision,
we omit those citations here for brevity.
2
Appeal 2017-005945
Application 13/801,307
whether the Examiner erred in rejecting claim 1 by finding that the cited
prior art would have taught or suggested the disputed limitations. See Dec.
6.
Notably, our earlier decision is replete with references to suggestions
of the cited prior art—including Mitchell—in affirming the Examiner’s
obviousness rejection. See, e.g., Dec. 8 (“Based on [the disclosed]
functionality, Mitchell at least suggests that interacting with a user interface
element would not only cause the remote device to request media associated
with a particular channel, namely a television program, but also information
related to that program.”) (emphasis added); see also id. (“[Mitchell’s]
functionality, then, at least suggests that the recited commands are
transmitted from the platform responsive to sensed interaction with a user
interface element, not only by changing channels to provide access to first
media content (i.e., a television program), but also by accepting an
associated displayed URL address to retrieve information related to second,
web-based media content.”) (emphasis added); id. 8—9 (“Therefore, we find
Mitchell at least suggests transmitting the recited commands from a platform
responsive to sensed interaction with a user interface element, where the
user interface element can be displayed and represent a media content
provider as suggested by Goulden.”) (emphasis added).2
2 Our reviewing court guides: “‘the question under [35 U.S.C. § 103] is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807
(Fed. Cir. 1989), cert, denied, 493 U.S. 975 (1989); see also MPEP § 2123.
3
Appeal 2017-005945
Application 13/801,307
In short, Appellants’ inherency-based arguments are more germane to
anticipation—not obviousness as is the case here. See Trintec Industries,
Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002)
(“[OJbviousness is not inherent anticipation.”). It is well settled that the test
for obviousness is what the cited references’ collective teachings would have
suggested to ordinarily skilled artisans. See In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991). To that end, we considered not only the explicit teachings
of the cited references in our decision, but also the inferences that ordinarily
skilled artisans would reasonably be expected to draw from those teachings.
See In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Therefore, we find unavailing Appellants’ contention that although
the Uniform Resource Locator (URL) received from Mitchell’s set top box
(STB) depends on the channel that is tuned to, this URL is allegedly not
necessarily dependent upon the remote control’s command keys that were
activated to cause the channel tuning operation (Req. Reh’g 5). This
argument—predicated on what Mitchell ostensibly does not necessarily
disclose—is not germane to our decision that is not based solely on
Mitchell’s express disclosure, but rather what Mitchell would have
suggested to ordinarily skilled artisans to render the disputed limitations
obvious. See Dec. 7—8.
We reach a similar conclusion regarding Appellants’ contention that
the URL that is used to retrieve information in Mitchell necessarily must be
mapped to a user input element of the remote control to be operable. Req.
Reh’g 5—6. Here again, this argument is not germane to our decision that is
not based solely on Mitchell’s explicit disclosure, but rather what Mitchell
4
Appeal 2017-005945
Application 13/801,307
would have suggested to ordinarily skilled artisans to render the disputed
limitation obvious. See Dec. 9.
As we indicated in our earlier decision, URLs and associated content
can be pre-loaded in Mitchell such that the browser first checks the local
cache for supplemental content in lieu of retrieving the content from the
Internet. Dec. 9. Notably, we concluded that, in view of this caching,
Mitchell at least suggests a mapping between the URL address and the user
interface element that is stored in the platform before the sensed interaction
with the user interface element that selects these URLs to display the cached
content. Id. Our emphasis underscores that our decision in this regard was
based on what Mitchell would have suggested to ordinarily skilled
artisans—not whether Mitchell necessarily discloses the recited mapping as
Appellant contends. See also id. (noting that Mitchell’s pre-loaded URLs
and associated cached content at least suggests the recited stored mapping).
In short, Appellants’ inherency-based arguments are unavailing, for
they are not germane to our decision that is not based solely on the explicit
disclosures of the cited prior art, but rather also on what those disclosures
would have suggested to ordinarily skilled artisans to render the recited
limitations obvious.
Therefore, on this record, we are not persuaded that we
misapprehended or overlooked those points in rendering our decision.
5
Appeal 2017-005945
Application 13/801,307
CONCLUSION
For the foregoing reasons, we have granted Appellants’ request to the
extent that we have reconsidered our decision, but we deny the request with
respect to making any changes therein.
DENIED
6