Ex Parte Pino et al

Patent Trial and Appeal Board

Jan 23, 2018

12330003 (P.T.A.B. Jan. 23, 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.
12/330,003 12/08/2008 Angelo J. Pino JR. 95647-YCI-107 9979
90042 7590 01/25/2018
MANET T T NFT TFR PT T C EXAMINER
1725 I Street, N.W. TELAN, MICHAEL R
Suite 300
Washington DC, DC 20006 ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
melcher @ mdslaw .com
j effsmelcher @ att. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGELO J. PINO JR., MOHAMMED SATTAR,
and PETER M. REDLING1
Appeal 2017-000494
Application 12/330,003
Technology Center 2400
Before CARL W. WHITEHEAD JR., AMBER L. HAGY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1—4, 6—11, 13—21, 23—27, and 29-33, all of the pending claims of the
application.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Your Choice
Interactive, Inc. See Appeal Br. 1.
2 Claims 5, 12, 22, and 28 are canceled. See Appeal Br. 20, 22, 25, 27.
Appeal 2017-000494
Application 12/330,003
STATEMENT OF THE CASE
Invention
According to Appellants, the invention relates to a template-based
system for efficiently providing interactive content. See Spec., Abstract.3
Exemplary Claims
Claims 1,10, 20, and 26 are independent claims. Claims 1 and 11 are
exemplary and are reproduced below with disputed limitations italicized:
1. A method of providing interactive content with a
first broadcast program on a first broadcast channel, comprising:
storing a plurality of templates for presenting interactive
content in a memory;
storing in a memory data of a plurality of interactive
content channels;
wherein two or more of the plurality interactive content
channels are available for viewing concurrently with the first
broadcast program;
wherein each of the two or more interactive content
channels that are available for viewing concurrently with the first
broadcast program include supplemental information related to
the first broadcast program;
wherein at least some of the plurality of interactive content
channels are not available for viewing concurrently with the first
broadcast program;
wherein at least one or more of the interactive content
channels are available for viewing with multiple broadcast
programs on a plurality of broadcast channels;
3 This Decision refers to: (1) Appellants’ Specification filed December 8,
2008 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed January
26, 2015 (3) the Appeal Brief (“Appeal Br.”) filed January 25, 2016; (4) the
Examiner’s Answer (“Ans.”) mailed August 12, 2016; and (5) the Reply
Brief (“Reply Br.”) filed October 12, 2016.
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Application 12/330,003
visually presenting information of the two or more of the
plurality of interactive content channels that are available for
viewing concurrently with the broadcast program;
receiving a request for one of the two or more interactive
content channels that are available for viewing concurrently with
the first broadcast channel from a viewer;
receiving an interactive content data set associated with
the requested interactive content channel;
receiving information for selecting a template for the
interactive content data set,
retrieving a template from memory based on the
information for selecting a template;
populating the retrieved template with the interactive
content data set to provide an interactive content display, wherein
the template structure remains constant as the content data
changes, the template structure comprises a plurality of fields, at
least one field constructed for receiving content data of an
advertisement, and each broadcast channel having an associated
template; and
presenting the interactive content display to the viewer
concurrently with the first broadcast program.
11. The method according to claim 10, wherein the selected
broadcast program comprises a non-commercial broadcast program
having a plurality of segments, the method further comprising:
populating a second template with a second set of interactive
content data to provide a second interactive content display; and
presenting the second interactive content display on the display
concurrently with a commercial broadcast program that is sequenced
in time between two segments of the non-commercial broadcast
program.
Appeal Br. 18—19, 22.
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Application 12/330,003
REFERENCES AND REJECTIONS
Claims 1—4 and 6—9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Shoff et al. (US 2004/0210824 Al;
published Oct. 21, 2004), Preisman (US 2006/0123451 Al; published June
8, 2006) and Kunkel et al. (US 2006/0236342 Al; published Oct. 19, 2006).
Final Act. 5—14.
Claims 10, 13—20, 23—26, and 29-33 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Shoff and Kunkel.
Final Act. 14—34.
Claims 11,21, and 27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Shoff, Kunkel and Reichardt et al. (US
2002/0124255 Al; published Sept. 5, 2002). Final Act. 34—37.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv), 41.39(a)(1).
ISSUES
(1) Whether the Examiner errs in finding Kunkel teaches or
suggests “wherein the template structure remains constant as the content
data changes . . . and each broadcast channel having an associated template”
as recited in claim 1.
(2) Whether the Examiner’s rationale for combining Shoff,
Preisman, and Kunkel is erroneous.
(3) Whether the Examiner errs in finding the combination of Shoff,
Kunkel and Reichardt teaches or suggests “presenting the second interactive
content display on the display concurrently with a commercial broadcast
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program that is sequenced in time between two segments of the non­
commercial broadcast program,” as recited in claim 11.
ANALYSIS
Issue 1
The Examiner finds Kunkel teaches or suggests “wherein the template
structure remains constant as the content data changes,” as recited in
representative claim 1. Final Act. 11 (citing Kunkel Tflf 45, 173, 174, 328).
Appellants argue “paragraph 45 of Kunkle in fact only teaches that
templates are optional (not required). . . .” Appeal Br. 8.
We find Appellants’ argument unpersuasive. We agree with the
Examiner’s finding that Kunkel’s templates teach or suggest the disputed
limitation. Final Act. 11; Ans. 6, 8—10. Regardless of whether Kunkel’s
“templates are not required for a VRN [Video-Rich Navigation] application”
(Kunkel 145), i.e., are described as optional, the Examiner provides
articulated reasoning why a person of ordinary skill in the art would have
been motivated to combine the particular teachings of Kunkel with the
teachings of Shoff. Ans. 11—12. Thus, the Examiner’s findings do not rely
solely on whether Kunkel’s templates are “required.” Kunkel “is prior art
for all that it teaches.” Beckman Instruments, Inc. v. LKB Produkter AB, 892
F.2d 1547, 1551 (Fed. Cir. 1989). We, therefore, agree with the Examiner’s
finding that Kunkel teaches or suggests the claimed template structure even
though Kunkel indicates the “templates are not required.” Kunkel 145.
Appellants further argue Kunkel only “provides general language
regarding the use of templates. No mention of ‘constant’ or other similar
language is present in paragraph 45.” Appeal Br. 8.
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We are unpersuaded. The Examiner-cited portion of Kunkel describes
using an identifier instead of the actual template definitions to identify a
template stored on the Video-Rich Navigation (“VRN”) client to reduce the
amount of data being transmitted to the client. Kunkel 145. If the client
changes template identifiers, the appearance of the VRN screen changes
according to the change in the templates. Id. Conversely, if the VRN client
does not change template identifiers, the template structure remains constant.
Accordingly, although Kunkel does not expressly disclose that template
structure remains constant for some content or that the VRN client does not
change templates, we agree with the Examiner that the cited portion of
Kunkel fairly teaches, or at least suggests, this limitation. Although Kunkel
does not use the term “constant,” identity of terminology is not required to
reject a claim. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Other
than the mere assertion that Kunkel’s paragraph 45 fails to mention
“‘constant’ or other similar language,” (Appeal Br. 8) Appellants provide no
compelling response to this finding. Accordingly, we are not persuaded the
Examiner errs.
The Examiner finds Kunkel teaches or suggests “each broadcast
channel having an associated template,” as recited in representative claim 1.
Final Act. 11 (citing Kunkel Tflf 45, 173, 174, 328).
Appellants argue Kunkel does not teach broadcast channels having
associated templates because Kunkel’s paragraph 5 teaches an optional
VRN, which then optionally can contain a template structure and a “teaching
of optional VRN, which then optionally can contain a template structure,
provides no guidance to one of ordinary skill in the art.” Appeal Br. 8.
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We find Appellants’ argument unpersuasive. We agree with the
Examiner’s finding that Kunkel teaches broadcast channels having
associated templates because Kunkel discloses “‘[t]he transmitted screen
data may include references to templates.’” Ans. 7 (citing Kunkel 145). As
discussed above, the Examiner’s findings do not rely solely on whether
Kunkel’s VRN and templates are optional. That is, regardless of whether
Kunkel’s VRN and templates are described as optional, the Examiner
explains why a person of ordinary skill in the art would have been motivated
to combine these teachings of Kunkel with the teachings of Shoff. Ans. 11—
12. Thus, because the Examiner’s findings do not rest solely on whether
Kunkel’s VRN and templates are optional and because Kunkel “is prior art
for all that it teaches” (Beckman Instruments, 892 F.2d at 1551), we agree
Kunkel teaches the claimed “broadcast channels having associated
templates,” regardless of whether Kunkel describes the VRN and templates
as optional.
Appellants argue “[t]he theoretical combination of prior art fails to
disclose a template set with multiple (different) templates associated with a
requested interactive content channel as claimed.” Appeal Br. 9.
We are unpersuaded because we agree with the Examiner that this
argument is not commensurate with the scope of the claim. Ans. 8. Claim 1
recites “each broadcast channel having an associated template,” and
therefore only requires a single template, rather than multiple (different)
templates, to be associated with a requested interactive content channel.
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Issue 2
Appellants argue the examiner errs in combining the references
because “[t]here is no motivation for one of ordinary skill in the art to use
the interactive content relating to on-demand programing to the claimed
invention of using interactive content relating to broadcast programming.”
Appeal Br. 7.
Appellants’ argument does not address the reasoning of the
Examiner’s rejection. That is, Appellants do not rebut or effectively
articulate contrary evidence to the motivation set forth in the Final Office
Action. See Final Act. 9, 12. The Examiner indicates that combining the
references would “allow users to fully direct their attention to interactive
content channels” (Final Act. 9) and “to enhance the interactivity of the
combined system, thereby improving the overall user experience” (Final
Act. 12); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds [require] some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int 7 Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)). Accordingly, because the Examiner has provided
articulated reasoning with some rational underpinning to combine the cited
references, we find Appellants’ argument unpersuasive.
Appellants have not shown error in the Examiner’s factual findings or
conclusion of obviousness and so we sustain the 35 U.S.C. § 103 rejection of
representative independent claim 1. We also sustain the Examiner’s
rejection of independent claims 10, 20, and 26, which recite similar
limitations and are not argued separately or are only nominally argued
separately. See Appeal Br. 11—15. Dependent claims 2—4, 6—9, 13—19, 23—
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Application 12/330,003
25, and 29-33 are not argued separately, and thus, fall with their respective
independent claims. Appeal Br. 7, 11.
Issue 3
The Examiner finds the combination of Shoff, Kunkel, and Reichardt
teaches or suggests all of the features recited in dependent claim 11. Final
Act. 5.
Appellants argue “[t]he combination of Shoff and Kunkel fails to
disclose ‘presenting the second interactive content display on the display
concurrently with a commercial broadcast program that is sequenced in time
between two segments of the non-commercial broadcast program’ and
“Reichardt does not provide the deficiencies of Shoff and Kunkel.” Appeal
Br. 16.
Such a conclusory statement, however, amounting to little more than a
paraphrasing of the claim language and a general denial, is unpersuasive to
rebut the prima facie case produced by the Examiner. Cf. 37 C.F.R.
§ 41.37(c)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 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.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”). We, therefore, sustain the Examiner’s rejection of claim 11.
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We also sustain the Examiner’s rejection of dependent claims 21 and 27,
which are not argued separately. See Appeal Br. 15.
DECISION
We affirm the Examiner’s decision rejecting claims 1—4, 6—11, 13—21,
23-27, and 29-33 under 35 U.S.C. § 103.4
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
4 In the event of further prosecution, the Examiner may wish to consider
whether to reject claims 1, 10, 20, and 26 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Using claim 1 as an example, Appellants, during prosecution, added the
limitation “wherein the template structure remains constant as the content
data changes.” See Amendment filed October 10, 2014. In the Appeal
Brief, Appellants do not specifically indicate where support for the newly
added limitation can be found in the original Specification. See Appeal
Br. 2—3. Moreover, the Examiner determines that “the published
specification (US 2009/0089838) does not include the word ‘constant’ or
other similar language with respect to template structure.” Ans. 8—9 (citing
Spec. 126, 127). Appellants, although apparently confusing paragraphs
126 and 127 of their own Specification with Kunkel, agree paragraphs 126
and 127 do not provide support, stating: “Nowhere in any of these
paragraphs does Kunkel actually disclose keeping the template structure
constant as the content changes.” Reply Br. 3. In view of this statement and
Appellants’ failure to specifically indicate where support may be found in
the Specification, the Examiner should reject claim 1, and claims 10, 20, and
26, which include a similar limitation, under 35 U.S.C. § 112, 1st paragraph.
10