Ex Parte Oren et alDownload PDFPatent Trial and Appeal BoardAug 5, 201613244918 (P.T.A.B. Aug. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/244,918 09/26/2011 96355 7590 08/09/2016 NIXON & VANDERHYE, P,C /Vonage 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Amichay Oren 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. 5524-23 4105 EXAMINER HUERTA, ALEXANDER Q ART UNIT PAPER NUMBER 2427 NOTIFICATION DATE DELIVERY MODE 08/09/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMI CHAY OREN, TZAHI EFRATI, and BARUCH STERMAN Appeal2014-003503 Application 13/244,918 Technology Center 2400 Before HUNG H. BUI, JON M. JURGOVAN, and JOHN F. HORVATH, Administrative Patent Judges. HORVATH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal seek our review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1--4 and 6-31. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART, and enter NEW GROUNDS OF REJECTION pursuant to 37 C.F.R § 41.50(b). Appeal2014-003503 Application 13/244,918 SU~vHv1ARY OF THE rt.rVENTION The invention is directed to synchronizing the display of video content on multiple display screens. Spec. i-f 1. Claims 1, 10, 19, and 20 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of synchronizing the presentation of combined video programs on multiple display devices, comprising: receiving a video program from a content provider; receiving at least first and second communications streams from first and second users, respectively; combining the video program and the first communications stream to create a first combined video program; combining the video program and the second communications stream to create a second combined video program; and causing the first and second combined video programs to be displayed on first and second user display devices such that the video program is displayed substantially simultaneously on the first and second user display devices. Fernandez et al. (Fernandez") Yamamoto et al. ("Yamamoto") Dakss et al. ("Dakss") Scott, III ("Scott") Brand et al ("Brand") REFERENCES US 6,339,842 Bl US 2005/0128351 Al US 2006/0031914 Al US 2006/0236352 Al US 2011/0063503 Al 2 Jan. 15,2002 June 16, 2005 Feb.9,2006 Oct. 19, 2006 Mar. 17, 2011 Appeal2014-003503 Application 13/244,918 REJECTIONS Claims 1, 8, 9, and 19 stand rejected under 35 U.S.C. § 102(b) as anticipated by Fernandez. Final Act. 2. Claims 2--4 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fernandez and Scott. Final Act. 5. Claims 6, 7, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fernandez and Yamamoto. Final Act. 7. Claims 10-12, 14--18, 20-23, 26, 27, and 29--31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fernandez, Scott, and Dakss. Final Act. 9. Claims 13 and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fernandez, Scott, Dakss, and Brand. Final Act. 22. ISSUES AND ANALYSIS Claims 1, 6, 8, 9, 19, and 24 Fernandez discloses a digital television system in which multiple receivers 12, 14, and 16 used by subscribers 18 are coupled to a broadcast network 6 and data network 10, thereby allowing video conferencing among subscribers 18 during a broadcast ofprogram 2. See Fernandez 2:22-28, Fig. 1. Controller 8, coupled to the broadcast and data networks, "serves as [a] broadband system headend ... for generating, forwarding, modifying, storing, accessing or otherwise controlling program/data delivery to subscribers 18, while generating, forwarding, modifying, storing, accessing or otherwise controlling video conferencing signal transmission between subscribers 18." Id. at 2:53-58. Fernandez' system thus provides "multi- 3 Appeal2014-003503 Application 13/244,918 user conferenced viewing of live sports event[s], such [as] professional football, basketball, [or] baseball." Id. at 4:27-30. The Examiner finds Fernandez anticipates claim 1, and discloses all the limitations recited in claim 1 including displaying first and second combined video programs substantially simultaneously on first and second displays, because "Fernandez discloses a system for providing a subscriber conference while viewing a live sports program." Final Act. 3. Appellants argue the Examiner erred in rejecting claim 1 because "[n]o part of Fernandez discloses any technique which could be used to ensure that a video program is displayed substantially simultaneously on first and second user display devices, as recited in claim 1." App. Br. 14--15. We are not persuaded by Appellants' argument. As the Examiner found, Fernandez discloses broadcasting a "live sports or entertainment performance event, such as a football game," while also displaying "video conference windows of other users watching programs that can include [the] same program." Ans. 4. Moreover, Fernandez discloses controller 8 serves as a headend processor for overlaying the broadcast program with the video conference data by "generating, forwarding, modifying, storing, accessing or otherwise controlling," both the program and video conference data. Fernandez, 2:50-58 (emphasis added). Controller 8 also "coordinates or monitors [the] video conferencing activity" between users while they watch the common program. Id. at 4:36-39 (emphasis added). Accordingly, we sustain the Examiner's rejection of claim 1 as anticipated by Fernandez. Appellants argue claims 6, 8, 9, 19, and 24 are paten tab le over Fernandez, or the combination of Fernandez and Yamamoto, for the same reasons claim 1 is patentable over Fernandez. See App. Br. 15, 4 Appeal2014-003503 Application 13/244,918 18. Accordingly, we sustain the Examiner's rejections of these claims for the same reasons we sustain the Examiner's rejection of claim 1. Claim 2 Claim 2 depends from claim 1, and further recites "wherein the first and second combined video programs include synchronization information that can be used to display the first and second combined video programs." The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as unpatentable over Fernandez and Scott. Final Act. 5. The Examiner finds Fernandez teaches creating first and second combined video programs, but "fails to explicitly disclose 'wherein the ... video programs include synchronization information ... "'Id. The Examiner finds Scott teaches video programs include synchronization information to support the conclusion of obviousness. Id. Appellants argue the Examiner erred in rejecting claim 2 because "[a]lthough Scott discloses a method of causing the same video program to be played substantially simultaneously by multiple display devices ... ," Scott achieves this by sending "synchronization commands that are separate from the video programs." App. Br. 17. Appellants therefore argue that the combination of Fernandez and Scott fails to teach or suggest "the first and second combined video programs include synchronization information," as recited in claim 2. The Examiner finds, in response to Appellants' argument, "media server 106 which includes media synchronization engine 116 transmits both the media content and the synchronization commands to all users in the synchronization group ... the synchronization command is transmitted with 5 Appeal2014-003503 Application 13/244,918 the broadcast and not separately as asserted by the Appellant." Ans. 6 (citing Scott i-fi-1 5, 8, 20, 25-26, Figs. 3--4, 7-9). We are persuaded by Appellants' argument. Although Scott teaches synchronizing video content among a group of viewers by sending synchronization commands 420/422 to members of the group, see Scott i125, Fig. 4, Scott fails to disclose that the video content includes the synchronization commands as required by claim 2. Accordingly, we reverse the Examiner's rejection of claim 2. Claims 3 and 4 The Examiner finds the combination of F emandez and Scott teaches receiving video synchronization information from first and second users, generating delay signals based upon that information, and transmitting the delay signals to first and second display devices to simultaneously display first and second combined video programs on the first and second display devices. Final Act. 5-6 (citing Scott i-fi-1 5, 18, 20, 25, 26, Figs. 3, 4, and 7- 9). Appellants argue the Examiner erred in rejecting claims 3 and 4 because "Scott's methods do not involve the video control devices for first and second users sending any sort of synchronization information to Scott's central synchronization controller," and therefore do not "use such ... information to cause first and second combined video programs to be displayed substantially simultaneously." App. Br. 17. We are not persuaded by Appellants' arguments. Contrary to Appellants' argument, Scott teaches video synchronization information "may be determined based on input from one or more of the group members." Scott i125. Scott further teaches this information can be 6 Appeal2014-003503 Application 13/244,918 sent as "[ s Jynchronization commands 420 and 422 ... to client devices 404 and 406" to enable media content to be "presented through both client devices at substantially identical positions in a timeline associated with the media content." Id. i-f 26. Accordingly, we sustain the Examiner's rejection of claims 3 and 4. Claims 7 and 2 5 The Examiner finds the combination of Fernandez and Yamamoto teaches creating and transmitting different first and second combined video programs to the first and second user display devices as recited in claims 7 and 25. Final Act. 2-3 (citing Fernandez 1:25-31, 1:58-2:34, 2:50-58, 3:36-49, 4:26-39, 4:63---67, Figs. 1--4); id. at 5-6 (citing Yamamoto i-fi-17- 10, 12, 105, Figs. 18 and 34). Appellants argue the Examiner erred in rejecting claims 7 and 25 because both Yamamoto and Fernandez teach the: [C]ombined video program is created by each of the user display devices. Thus, there is no central unit which creates different first and second combined video programs and which transmits the different first and second combined video programs to the user display devices for which they were created. App. Br. 18. We are not persuaded by Appellants argument. "[D]uring examination ... claims are given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000). The Specification does not define a combined video program, or explain how a combined video program is created from a video program and a communications stream. Rather, the Specification discloses: [A] combined video program could include the video program from a content provider, an audio feed from a first user, a video feed from a second user, and a text feed from a third user. Any other combination of communications streams from the users 7 Appeal2014-003503 Application 13/244,918 could also be combined with a video program from a content provider to produce a combined video program. Spec. i-f 34. Fernandez teaches controller 8 is a headend processor that enables "digital transmission for electronic signal delivery 62 of [a] certain program 2 and/or data 4 for presentation in integrated display 50 of selected or addressed DTV subscriber units 18." Fernandez 4:55-57 (emphasis added). Under a broadest reasonable interpretation of a combined video program, we agree with the Examiner that Fernandez teaches creating a combined video program (program 2 and data 4), and transmitting the combined video program to first and second display devices (subscriber units 18). See Final Act. 2-3. Accordingly, we sustain the Examiner's rejection of claims 7 and 25. Claims 10, 16-18, 20, and 29-31 The Examiner finds Fernandez teaches combining a first communications stream with a first video program to create a first combined video program, and causing the first combined video program to be displayed on a first display synchronously with a second combined video program on a second video display. Final Act. 9-10. The Examiner finds Scott teaches using synchronization infonnation to synchronously display the first and second combined video programs on the first and second displays. Id. at 10-11. The Examiner finds Dakss teaches encoding or embedding synchronization information in the combined video programs. Id. at 11 (citing Dakss i-fi-18, 15, 22, 29, and 30). Therefore, the Examiner concludes that claim 10 would have been obvious to one of ordinary skill in the art in view of the combined teachings of Fernandez, Scott, and Dakss. Id. at 9-11. 8 Appeal2014-003503 Application 13/244,918 Appellants argue the Examiner erred in rejecting claim l 0 because a person of skill in the art would not have modified Scott to embed synchronization information in a video stream as taught by Dakss. App. Br. 19--22. Appellants argue that because "Scott is not attempting to cause a live broadcast to be played simultaneously on multiple user display devices," Dakss' embedded synchronization information could "not be used to synchronize the playback, pausing, fast forwarding, and rewinding" of Scott's video program. Id. at 21. We are not persuaded by Appellants' argument. The Examiner finds, and we agree, that Scott discloses a DVR system that "not only enable[ s] users to record media content ... but also provide[ s] user control over real-time broadcast programs." Ans. 7-8 (emphasis omitted). For example, Scott teaches providing initial synchronization signals that allow "each client device to jump to the same point in the media stream (e.g., .. . for a real-time broadcast program, the current broadcast position)." Scott i-f 25. Accordingly, we sustain the Examiner's rejection of claim 10. Appellants do not separately argue for the patentability of independent claim 20, or dependent claims 16-18 or 29--31, which respectively depend from claims 10 and 20. See App. Br. 19, 23. Accordingly, we sustain the Examiner's rejection of claims 16-18, 20, and 29--31 for the same reasons. Claims 11and26 The Examiner finds claim 11 would have been obvious to a person of ordinary skill in the art in view of the combined teachings of Fernandez, Scott, and Dakss. Final Act. 9-12. 9 Appeal2014-003503 Application 13/244,918 Appellants argue the Examiner erred in rejecting claim 11 because Dakss' embedded synchronization information "is the time at which various portions of a video program are to be displayed after the start time," and because "Dakss fails to disclose or suggest embedding any sort of delay signal into a video program." App. Br. 22. We are not persuaded by Appellants' arguments. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Rather, "[t]he test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). The Examiner relies on Scott, not Dakss, for teaching synchronization information in the form of delay information. The Examiner relies on Dakss for teaching embedding synchronization information, such as Scott's delay information, in a video program. See Ans. 8-9. Accordingly, we sustain the Examiner's rejection of claim 11, and claim 26, not separately argued. See App. Br. 22. Claims 12, 14, 15, 27, and 29 Appellants argue the Examiner erred in rejecting claims 12, 14, 15, 27, and 29 because the combination of Fernandez, Scott, and Dakss fails to teach "a system in which a synchronization unit receives a synchronization signal from a user video controller device," and uses that signal "to embed a delay signal into a video program." App. Br. 23. Appellants' arguments for the patentability of claims 12, 14, 15, 27, and 29 are similar to Appellants' arguments for the patentability of claims 10 Appeal2014-003503 Application 13/244,918 l 0 and 11, discussed supra, and are not persuasive of Examiner error for the reasons discussed there. Accordingly, we sustain the Examiner's rejection of claims 12, 14, 15, 27, and 29. Claims 13 and 28 Appellants argue claims 13 and 28 recite the synchronization signal sent from the user video controller to the synchronization unit is at least an audio portion of the video program that the user video controller receives from a content provider. App. Br. 23-24. Appellants further argue, "[ n ]one of the references cited to reject claims 13 and 28 disclose or [suggest] that a synchronization signal sent from a user video controller to a synchronization unit is at least an audio portion of a video program." Id. at 24. We are not persuaded by Appellants' argument. "A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim." 3 7 C.F .R. § 41.37(c)(l)(iv); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board [has] reasonably interpreted Rule 41.3 7 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Accordingly, we sustain the Examiner's rejection of claims 13 and 28. New Grounds of Rejection Claim 2 Claim 2, by virtue of its dependence upon claim 1, recites receiving a video program from a content provider, and receiving at least first and second communications streams from first and second users, respectively. Fernandez teaches these limitations. See, e.g., Fernandez 2:52-58 11 Appeal2014-003503 Application 13/244,918 ("[C]ontroller 8 effectively serves as a broadband system headend ... for generating, forwarding, modifying, storing, accessing or otherwise controlling program/data delivery to subscribers 18, while generating, forwarding, modifying, storing, accessing or otherwise controlling video conferencing signal transmission between subscribers 18."). A person or ordinary skill in the art would have understood that to forward and deliver programing and video conferencing data to/from subscribers 18, controller 8 must have received the programming and video conference data. Claim 2, by virtue of its dependency upon claim 1, further recites combining the video program and the first communications stream to create a first combined video program, and combining the video program and the second communications stream to create a second combined video program. As discussed supra, the Specification does not define a combined video program, or explain how a combined video program is created from a video program and a communications stream. Rather, the Specification discloses: [A] combined video program could include the video program from a content provider, an audio feed from a first user, a video feed from a second user, and a text feed from a third user. Any other combination of communications streams from the users could also be combined with a video program from a content provider to produce a combined video program. Spec. i-f 34. Under a broadest reasonable interpretation, therefore, creating a combined video program includes creating a communications stream that includes a video program from a content provider and a video feed from a user. Fernandez teaches creating a combined video program. For example, Fernandez teaches controller 8 serves as "a broadband system headend 12 Appeal2014-003503 Application 13/244,918 -C' • f ,]• ,..1·~ • • • processor 1or generatmg,1orvvaruzng, mouilymg, stonng, accesszng or otherwise controlling program/data delivery to subscribers 18, while generating,forwarding, modifying, storing, accessing or otherwise controlling video conferencing signal transmission between subscribers 18.")(emphases added). Fernandez 2:52-58. Fernandez further teaches controller 8 "enable[ s] digital transmission for electronic signal delivery 62 of certain program 2 and/or data 4 for presentation in integrated display 50 of selected ... subscriber units 18.")(emphasis added). Id. at4:53-57. Thus, controller 8 forwards and delivers a combined video stream that includes program data 2 and video conferencing data 4. Moreover, Dakss teaches creating a combined video program. For example, Dakss teaches "a synchronization mechanism ... which helps to maintain tight synchronization between time-based ITV [interactive television] events and an underlying audiovisual content element." Dakss i-f 15. Dakss further teaches broadcast server 110 "insert[ s] the ITV event data into the content element." Id. i-f 28, Fig. 1. A person of ordinary skill in the art would have found it obvious to combine the teachings ofDakss and Fernandez, because doing so would involve "the mere substitution of one element for another known in the field" to achieve a predictable result. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). For example, the combination would involve substituting Dakss' broadcast system 100 for Fernandez' broadcast network 6, and Dakss' headend system 104 for Fernandez' controller 8. The combined system would predictably result in Fernandez' program data 2 and video conferencing data 4 being combined at broadcast network 6 (as taught by 13 Appeal2014-003503 Application 13/244,918 Dakss) rather than at controller 8 (as taught by Fernandez) prior to being transmitted to subscribers 18. Finally, claim 2, by virtue of its dependency on claim 1, recites causing the first and second combined video programs to be displayed on first and second user display devices such that the video program is displayed substantially simultaneously on the first and second user display devices, and further recites wherein the first and second combined video programs include synchronization information that can be used to display the first and second combined video programs. The combination of Fernandez and Dakss teaches these limitations. For example, Fernandez teaches controller 8 forwards both program data 2 and video conferencing data 4 to subscribers 18 to provide "multi-user conferenced viewing of live sports events." See Fernandez 2:52-58, 4:26- 29, 4:53-57, Figs. 1, 4. Fernandez further teaches "controller 8 coordinates ... video conferencing activity occurring directly or indirectly between DTV units watching common program/data stream." Id. at 4:36-39. Dakss teaches "insert[ ing] synchronization triggers into a broadcast audio-visual signal or stream at regular intervals," in order to maintain "tight synchronization between time-based ITV events and an underlying audiovisual content element." Dakss i-f 15. Dakss further teaches broadcast system 100 "embeds both the synchronization triggers and ITV event data into the content element, and the content element is transmitted to the headend system 104 for simply forwarding to the client 106." Id. i-f 30. As explained supra, it would have been obvious to a person of ordinary skill in the art to substitute Dakss' broadcast system 100 for Fernandez' broadcast network 6, and to substitute Dakss' headend system 14 Appeal2014-003503 Application 13/244,918 104 for Fernandez' controller 8. The combined system would predictably result in Fernandez' program data 2 and video conferencing data 4 being combined at broadcast network 6 (as taught by Dakss) rather than at controller 8 (as taught by Fernandez) prior to being transmitted to subscribers 18. Moreover the combined program data 2 and video conference data 4 would include synchronization triggers (as taught by Dakss i-fi-f 15, 30) to maintain synchronization between program data 2 and video conferencing data 4. The combination would have been obvious, because it reflects "the mere substitution of one element for another known in the field" to achieve a predictable result. KSR Int'!., 550 U.S. at 416. DECISION The Examiner's rejections of claims 1, 3, 4 and 6-31 are affirmed. The Examiner's rejection of claim 2 is reversed. Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Fernandez and Dakss. Section 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Rather, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellants must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to newly rejected claim 2: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the exammer .... 15 Appeal2014-003503 Application 13/244,918 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record ... No time period for taking any subsequent action in connection with the appeal of claims 1, 3, 4 and 6-31 may be extended under 3 7 C.F .R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) 16 Copy with citationCopy as parenthetical citation