Ex Parte Nishikawa

Patent Trial and Appeal Board

Sep 26, 2016

13043831 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/043,831 03/09/2011 Yuko Nishikawa
36738 7590 09/28/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
201003671.01 9604
EXAMINER
HUERTAS TORRES, AYESHAE
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKO NISHIKAWA
Appeal2015-005704
Application 13/043,831
Technology Center 2100
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
JON M. JURGOV AN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Sony Corp. (App. Br.
2).
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Application 13/043,831
STATEMENT OF THE CASE
Appellant's invention relates to using images of viewers to establish
an emotion ranking for a video being viewed by the imaged viewers (Spec.
1: 1-3). Exemplary claim 1 under appeal reads as follows:
1. System comprising:
a processor configured for communicating with a viewer
video display and configured for communicating with a camera;
a computer readable storage medium including program
instructions which when executed by the processor configure the
processor to:
receive an image of a viewer from the camera;
provide the image to a ranking mechanism,
receive back from the ranking mechanism plural
emoticons derived from respective images of other
viewers and pertaining to respective emotions associated
with a video presented on the display,
present the plural emoticons,
receive a user selection of at least one of the
emoticons,
overlay the at least one of the emoticons onto the
video,
automatically post the at least one of the emoticons
on a website in response to the user's selection of the at
least one of the emoticons, the at least one of the emoticons
emulating the viewer's face and/or descriptive words that
correspond to the at least one of the emoticons.
REFERENCES and REJECTIONS
Claim 7 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite (see Final Act. 3--4).
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Claims 1--4 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Seo (US 2008/0101660 Al; publ. May 1, 2008), McKee
et al. (US 2009/0293079 Al; publ. Nov. 26, 2009), Harrison et al. (US
2008/0215975 Al; publ. Sept. 4, 2008), and Brown (US 2009/0012988 Al;
publ. Jan. 8, 2009) (see Final Act. 4--12).
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Seo, McKee, Harrison, Brown, and Baudisch et al. (US
2009/0150203 Al; publ. June 11, 2009) (see Final Act. 17-22).
Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Seo, McKee, and Harrison (see Final Act. 12-17).
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Seo, McKee, Harrison, and Baudisch (see Final Act. 22-
26).
Claims 13-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Seo, McKee, and Baudisch (see Final Act. 26-42).
ANALYSIS
Rejection under 35 U.S. C. § 112, Second Paragraph
The Examiner finds claim 7 is indefinite because it is unclear whether
"the image is generated with the video display device or if the claims refers
to the image that is generated is from a user (viewer) of an audio display
device" (Ans. 2). We are persuaded of error in the rejection by Appellant's
contention that it is clear the camera of the audio video display device, not a
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user, generates the image of the viewer (Reply Br. 1-2).2 Accordingly, we
do not sustain the Examiner's rejection of claim 7 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Rejections under 35 U.S.C. § 103(a)
Independent Claim 1
Appellant contends a skilled artisan would be led away from the
Examiner's proposed combination of Seo, McKee, and Harrison, because
sharing the emotions of other users, as taught by McKee and Harrison,
would influence a viewer and frustrate Seo' s purpose of collecting an
objective indication of viewer emotion (App. Br. 5---6; Reply Br. 2-3). We
are unpersuaded of Examiner error in the rejection. Teaching away requires
a reference to actually criticize, discredit, or otherwise discourage the
claimed solution. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004).
"We will not read into a reference a teaching away from a process where no
such language exists.'' DyStar TextUfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellant has
offered no persuasive evidence that Seo discourages the combination with
McKee and Harrison, as attorney argument alone is not evidence. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). We agree with the Examiner's finding that the
combination of Seo' s determining emotions from a viewer image (Final Act.
4--8; Ans. 2-5 (citing Seo i-fi-136-39)), Harrison's projecting a user's emotion
2 Claim 7 appears to have the typographical error "an image of a viewer [of]
an audio video display device." In case of further prosecution of this
application, the Examiner and Appellant are invited to correct the claim
language.
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onto an animated avatar (id. (citing Harrison i-fi-145--46)), and McKee's
overlaying user images and emoticons onto a video (id. (citing McKee i-fi-149,
51)) teaches or suggests the system of claim 1. "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'! Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007).
Appellant further contends the Examiner relies on impermissible
hindsight to combine Brown with Seo, McKee, and Harrison, because
neither Brown's teaching of posting an emoticon on a social networking
website to affect personal behavior and obtain group support, nor the
Examiner's rationale for the combination of sharing a reaction to content
through social media, is related to Seo, McKee, and Harrison (App. Br. 6;
Reply Br. 4). Appellant however has not provided sufficient evidence that
the Examiner's rejection is based on knowledge gleaned only from
Appellant;s disclosure, or based on knowledge which was beyond the level
of ordinary skill in the art at the time. See In re McLaughlin, 443 F.2d 1392,
13 9 5 ( CCP A 1971). We agree with the Examiner's finding that determining
an emoticon from a viewer emotion, as taught by Seo, McKee, and Harrison
per the discussion supra, and posting the emoticon on a social media
website, as taught by Brown (Final Act. 8; Ans. 4--5 (citing Brown i132)), is
a combination of familiar elements according to known methods with
predicable results. See KSR, 550 U.S. at 416. Further, we find the Examiner
has provided a rational underpinning to support the conclusion of
obviousness based on knowledge within the level of ordinary skill in the art,
specifically to provide a user with the additional functionality of sharing
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their reaction to video content with others via social media (Ans. 4--5). See
KSR, 550 U.S. at 417--418.
Independent Claim 7
Appellant contends claim 7 requires overlaying an emotion rank onto
the video presented on the audio video display device (AVDD), and none of
the Seo, McKee, and Harrison teaching imaging a viewer, sending that
image somewhere, and receiving back at the same A VDD the image plus an
emotion rank. Appellant's contention does not persuade us of Examiner
error because nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
and In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We
agree with the Examiner's finding that the combination of Seo, McKee, and
Harrison teaches receiving at the A VDD the viewer's image (Ans. 5-7
(image taken per Seo ,-r 36 and overlaid on video per McKee ,-r 49)) and an
emotion rank (id. (McKee i-f 51, emoticons overlaid on the video).
Further, Appellant's contention that the A VDD displaying the
overlaid video must be the same A VDD is not persuasive because it is not
commensurate with the scope of claim 7, which does not require receiving at
"the same A VDD." See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(stating that limitations not appearing in the claims cannot be relied upon for
patentability). Under the broadest reasonable interpretation consistent with
Appellant's disclosure, we find claim 7 does not preclude the A VDD from
being a network of display devices. See In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1369 (Fed. Cir. 2004): "[T]he PTO is obligated to give
claims their broadest reasonable interpretation during examination."). Thus,
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Application 13/043,831
we agree with the Examiner's finding that the combination of Seo, McKee,
and Harrison teaches or suggests overlaying the emotion rank and viewer
image on the video played on the networked AVDD device (Ans. 5-7 (citing
McKee if 51 )).
Independent Claim 13
Appellant contends the combination of Seo, McKee, and Baudisch
does not teach enabling a viewer to rank multiple images of friend's faces,
because McKee fails to teach any ranking of the emoticons, and Baudisch's
voting for a single image fails to teach the claimed ranking (App. Br. 8-9;
Reply Br. 5---6). We are unpersuaded of error in the rejection, because
Appellant is arguing the references individually where the rejection is based
on the combination. See Keller, supra. We agree with the Examiner's
finding that, under the broadest reasonable interpretation consistent with
Appellant's disclosure, Baudisch' s voting or rating system that provides user
preferences among a choice of images teaches "ranking'' multiple images
(Ans. 8 (citing Baudisch iii! 3, 5, and 50; see also if 47, rating on a graduated
scale of 1-10)), and the combination of Baudisch with Seo and McKee
teaches or suggests ranking images of friend's faces (Final Act. 26-29; Ans.
8).
Dependent Claims 2 and 8
Appellant contends McKee does not teach enabling a viewer to select
one or more items, the items being an image of the user's face and emotion
rank, because McKee's avatar is not an image of the user's face (App. Br. 7-
8; Reply Br. 4--5). We are not persuaded of error in the rejection of claims 2
and 8, as the claim limitations are met by selecting only one of an image and
an emotion rank. Thus, we agree with the Examiner's finding that the
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combination of Seo, McKee, and Harrison teaches or suggests enabling a
viewer to select an emotion rank (i.e., an emoticon emulating the viewer's
face (Spec. 5:20-22)) because McKee allows a user to select the desired
emoticon (Final Act. 4-8; Ans. 2-5 (citing McKee if 51)), which is derived
from a viewer's face as taught by Seo and Harrison (see discussion for claim
1, supra).
Remaining Claims
No separate arguments are presented for the remaining dependent
claims, therefore we sustain their rejections for the reasons stated with
respect to independent claims 1, 7, and 13.
DECISION3
We reverse the Examiner's rejection of claim 7 under 35 U.S.C.
§ 112, second paragraph.
We affirm the Examiner;s rejections of claims 1-'20 under 35 U.S.C.
§ 103(a).
3 We have decided the appeal on the record before us. In the event of further
prosecution, we leave it to the Examiner to consider whether at least claims
1 and 13, which recite a computer readable storage rnedium, should be
rejected under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. Appellant's Specification does not define "computer readable
storage medium" to exclude transitory media. Consequently, the claimed
storage medium encompasses transitory media, which is not patent eligible.
See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed.,
Rev. 07.2015, Nov. 2015).
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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
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