Ex Parte Prestenback et al

Patent Trial and Appeal Board

Feb 18, 2016

12239976 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/239,976 09/29/2008
94468 7590 02/22/2016
DISNEY ENTERPRISES INC.
c/o Patent Ingenuity, P.C.
9701 Wilshire Blvd., Suite 1000
Beverly Hills, CA 90212
FIRST NAMED INVENTOR
Kyle Prestenback
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.
DISNEY-0410-US 4453
EXAMINER
HERMANN, KIRK W
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
ssimpson@patentingenuity.com
patents@patentingenuity.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYLE PRESTENBACK, EV AN TAHLER, DAVID JESSEN, and
BRIANKWAN 1
Appeal2014-001490
Application 12/239,976
Technology Center 2600
Before LARRY J. HUME, JAMES W. DEJMEK, and
SCOTT B. HOWARD, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1--40. We have jurisdiction over the pending claims under 35
U.S.C. § 6(b). 2
We affirm.
1 Appellants identify Disney Enterprises, Inc. as the real party in interest.
App. Br. 2.
2 Because the claims on appeal have been twice rejected, we have
jurisdiction pursuant to 35 U.S.C. §§ 6 and 134. Ex parte Lemoine, 46
USPQ2d 1420, 1423(BPAI1994) (precedential).
Appeal2014-001490
Application 12/239,976
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to "providing user inputs ... to an
application executed on a digital video object playback device." Spec. i-f 1.
According to the Specification, Appellants' invention may allow content
owners to provide additional features to end users in an effort "to entice
consumers to purchase, rent, or otherwise view their digital video content."
Spec. ,-r 2.
Claim 8 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
8. A method, comprising:
receiving inputs generated by a user at an electronic device, the
inputs to be received via a first network connection;
transmitting the received inputs to an input interpreter agent
executed on a digital video playback device, wherein said transmitting
the received inputs comprises transmitting the received inputs via a
second network connection; and
processing, at the input interpreter agent, the user inputs to
make the user inputs compatible with a messaging application,
wherein the messaging application is executed on the digital video
playback device, wherein the messaging application provides a
message from the digital video playback device to an additional
digital video playback device, wherein the input interpreter agent is
separate from a digital video object player application.
The Examiner's Rejections
1. Claims 8, 11, 21, 24, 34, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Putterman et al. (US 2007/0210908 Al;
Sept. 13, 2007) ("Putterman") and Bi et al. (US 2002/0087996 Al; July 4,
2002) ("Bi"). Non-Final Act. 4--26.
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2. Claims 1, 5-7, 13, 14, 18-20, 26, 27, 31-33, and 39 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Putterman, Bi,
and Kerr et al. (US 2009/0153475 Al; June 18, 2009) ("Kerr"). Non-Final
Act. 26-53.
3. Claims 9, 10, 22, 23, 35, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Putterman, Bi, and Fradkov et al. (US
2004/0024610 Al; Feb. 5, 2004) ("Fradkov"). Non-Final Act. 54---64.
4. Claims 12 and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Putterman, Bi, and Eshelman et al. (US
2003/0001742 Al; Jan. 2, 2003) ("Eshelman"). Non-Final Act. 64--67.
5. Claims 25 and 40 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Putterman, Bi, and Phillips et al. (US 2004/0152493
Al; Aug. 5, 2004) ("Phillips"). Non-Final Act. 67----69.
6. Claims 2, 3, 15, 16, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Putterman, Bi, Kerr, and Lorch et al.
(US 2008/0216022 Al; Sept. 4, 2008) ("Lorch"). Non-Final Act. 69-76.
7. Claims 4, 17, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Putterman, Bi, Kerr, and Fradkov. Non-Final Act.
76-79.
Issues on Appeal
1. Did the Examiner err in finding the combination of Putterman
and Bi teaches or suggests a "messaging application provides a message
from the digital video playback device to an additional digital video
playback device, wherein the input interpreter agent is separate from a
digital video object player application," as recited in claim 8?
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2. Did the Examiner err in finding the combination of Putterman,
Bi, and Kerr teaches or suggests a "means for providing the processed user
inputs to a digital video object player application that is executed by the
digital video object player device," as recited in claim 27?
ANALYSIS 3
Input Interpreter Agent
Appellants contend the Examiner erred in finding the combination of
Putterman and Bi teaches or suggests "the input interpreter agent is separate
from a digital video object player application," as recited in claim 8. App.
Br. 9-11. In particular, Appellants argue that, although Bi teaches a
"navigator control module may exist independently of the audio or video
player application," Bi's navigator control module does not teach "the
particular interpreter agent of claim 8." App. Br. 10.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Merck & Co., Inc., 800 F .2d
1091, 1097 (Fed. Cir. 1986). Rather, the test for obviousness is whether the
combination of references, taken as a whole, would have suggested the
patentee's invention to a person having ordinary skill in the art. In re Keller,
642 F.2d 413, 425 (CCPA 1981).
3 Throughout this Decision we have considered the Appeal Brief filed
June 26, 2013 ("App. Br."); the Reply Brief filed November 14, 2013
("Reply. Br."); the Examiner's Answer mailed on October 2, 2013 ("Ans.");
and the Non-Final Office Action mailed on March 18, 2013, from which this
Appeal is taken ("Non-Final Act.").
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Application 12/239,976
We are not persuaded of Examiner error because Appellants'
arguments attack the references separately, whereas the Examiner's rejection
relies on the combined teachings of Putterman and Bi. Non-Final Act. 4--11.
The Examiner relies on, and we agree, Putterman's digital media adapter
(DMA) as teaching or suggesting the claimed input interpreter agent. Non-
Final Act. 6-7 (citing Putterman i-fi-121, 25, 30, 32-39, 55, 56, 58, 59, 61, 93,
94, 99, 101, and 103); Ans. 80-84 (also citing Putterman i-fi-122-24, 40, 87,
88, and 97, Figs. 1, 5, 7C). The Examiner also finds, and we agree, Bi
teaches or suggests that the input interpreter agent (as taught by Putterman)
is separate from a digital video object player application. Ans. 84 (citing Bi
i-f 19 ("The navigator control manager 154 may be part of the audio or video
player application 151 or exist separately.")). Thus, we agree with the
Examiner's findings that the combination of Putterman and Bi teaches or at
least suggests, inter alia, an "input interpreter agent is separate from a digital
video object player application."
Additionally, Appellants allege the Examiner's proposed combination
of Putterman and Bi "would render Putterman unsatisfactory for its intended
purpose" because "Putterman is directed to an 'interpreter agent' that is not
separate from a digital video object player." Reply Br. 3--4 (citing
Putterman i136 ("DMA 802 may play back the video with audio at various
speeds")( emphasis added)). As an initial matter, we note the permissive
language of paragraph 36 of Putterman regarding whether the DMA (i.e.,
interpreter agent) is not separate from a digital video object player.
Additionally, as illustrated in Figure 2 of Putterman (cited by the Examiner
in support of the rejection of claim 8, see, e.g., Non-Final Act. 5), DMA 802
is shown separate from television 124 and computer station 804 (i.e., digital
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video object players). Appellants do not provide persuasive evidence or
argument to support the allegation that modifying Putterman according to Bi
would render Putterman unsatisfactory for its intended purpose.
Accordingly, we do not find Appellants' arguments persuasive of Examiner
error.
Messaging Application
Appellants contend the Examiner erred in finding Putterman teaches
or suggests the messaging application "provides a message from the digital
video playback device to an additional digital video playback device." App.
Br. 11. Instead, Appellants argue Putterman teaches a media device
receiving an alert message from an alert provider directly or through DMA
802, but fails to teach "the media device then sending that alert message to
another media device." App. Br. 11 (emphasis added).
We are not persuaded of Examiner error because, as the Examiner
explains, claim 8 recites that "the messaging application provides a message
... to an additional digital video playback device." Ans. 85 (emphasis
added). Contrary to Appellants' assertion, the claim language is not limited
to one device receiving a message and then sending that same message to
another device. Ans. 85. Thus, Appellants' argument is not commensurate
with the scope of claim 8 and, for that reason, does not demonstrate error in
the Examiner's rejection. See In re Self, 671F.2d1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability).
Appellants additionally argue "[a] teaching by Putterman of an alert
message being sent to a household is not a teaching of a first television
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sending a message to a second television." Reply Br. 4. Once again,
Appellants' argument is not commensurate with the scope of claim 8, which
does not recite a "television," but rather the broader term "digital video
playback device." See also Spec. i-f 18. For this reason we are unpersuaded
of Examiner error. See Self, 671 F.2d at 1348.
Although not relied upon in affirming the Examiner's rejection, in
further support of the Examiner's conclusion of obviousness, we further note
Putterman also teaches in Figure 5 (cited by the Examiner) an alert message
containing a Launch Application Button ( 410). As described in
corresponding text in Putterman, the launch application button, when
selected, may launch an application on another device such as a personal
computer. See Putterman i-fi-167, 89, Fig. 2. Thus, we find under this
scenario, Putterman further teaches a messaging application that provides a
message from the digital video playback device (i.e., a television) to an
additional digital video playback device (i.e., a home computer).
For the reasons discussed in the two sections supra, we are
unpersuaded of Examiner error. Accordingly, we sustain the Examiner's
rejection of claim 8. Further, and for similar reasons, we sustain the
Examiner's rejections of claims 1-7, 9-26, and 34--40, for which Appellants
advance similar arguments or which were not argued separately. App.
Br. 11-15.
Digital Video Object Player Application
Claim 27 recites, inter alia, "means for providing the processed user
inputs to a digital video object player application that is executed by the
digital video object player device." Appellants assert "Putterman does not
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teach [this limitation]." App. Br. 13-14. Appellants, however, do not
provide any evidence in support of this assertion. 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv) requires 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. See In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011). However, in the Reply Brief, Appellants
contend the Examiner erred by finding the DMA of Putterman corresponds
to both the "interpreter agent" and the "digital video object player
application." Reply Br. 5. Appellants concede paragraph 36 of Putterman
teaches the DMA (i.e., interpreter agent) may also include a digital video
object player application, but repeat their argument that modifying
Putterman with Bi's teaching of a separate interpreter agent and digital video
object player application would remove the intended purpose of Putterman.
Reply Br. 5---6. For similar reasons discussed supra, we find Appellants'
argument unpersuasive of Examiner error.
Accordingly, we sustain the Examiner's rejection of independent
claim 27 as well as the rejections of claims 28-33, which depend therefrom
and were not argued separately.
DECISION
We affirm the Examiner's decision rejecting claims 1--40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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