Ex Parte Watanabe et al

Patent Trial and Appeal Board

Sep 21, 2016

13352103 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/352, 103 01/17/2012
27562 7590 09/23/2016
NIXON & V ANDERHYE, P,C
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Atsushi WATANABE
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.
SJP-723-3315 5130
EXAMINER
PIERCE, DAMON JOSEPH
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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 ATSUSHI WATANABE and EIZI KAW AI
Appeal2014-009279
Application 13/352,103
Technology Center 3700
Before JENNIFERD. BAHR, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-009279
Application 13/352,103
THE INVENTION
Appellants' invention relates to information processing systems with
two image display devices. Spec. 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. An information processing system, comprising a
stationary information processing apparatus and a portable
display device allowing a user to perform an input operation,
wherein,
the information processing apparatus includes:
a communication unit connectable to a network and
communicating with a predetermined external device via the
network;
a first image output unit for outputting an image to a
predetermined display device different from the portable
display device, the image being included in reception data
obtained by the communication unit;
a second image transmission unit for transmitting an
operation image to the portable display device, the operation
image being used for performing an operation related to the
image;
an operation data acquisition unit for acquiring
operation data from the portable display device, the operation
data representing an operation on the operation image; and
an information processing unit for, on the basis of the
operation data, executing information processing related to an
image displayed on the predetermined display device, and
the portable display device includes:
an operation data transmission unit for transmitting data
outputted by an operation unit provided in the portable display
device as the operation data;
a second image reception unit for receiving the operation
image from the information processing apparatus; and
a display unit for displaying the received operation
image.
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Application 13/352,103
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Smith
Best
Roberts
Laligand
Bennett
us 5,581,270
US 7 ,445,549 B 1
US 2011/0111854 Al
US 2011/0313775 Al
US 2013/0179934 Al
Dec. 3, 1996
Nov. 4, 2008
May 12, 2011
Dec. 22, 2011
July 11, 2013
The following rejections are before us for review:
1. Claims 1-5, 11, 12, and 14--23 are rejected under 35 U.S.C.
§ 102( e) as anticipated by Laligand.
2. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Laligand and Smith.
3. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Laligand and Roberts.
4. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Laligand and Best.
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Laligand and Bennett.
Claim 1
OPINION
Anticipation by Laligand
The Examiner finds that Laligand discloses all of the limitations of
claim 1. Final Action 2--4. In particular, the Examiner finds that Laligand
discloses transmitting an operation image to a portable display device. Id.
at 3 (citing Laligand i-fi-141, 99, & 100). The Examiner finds that such
operation image is used to perform an operation related to the image. Id.
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Appellants acknowledge that Laligand's portable computing device
interacts with a television, including transmitting search result data. Appeal
Br. 19--20. Appellants contend, however, that the data transmitted from the
display device (TV) to the portable device (smart phone) is something other
than an "image" per se. Id. at 20. More particularly, Appellants contend
that such is not an "operation image" for performing an operation on an
image. Id. at 20-21.
While, Laligand is capable of transmitting the information
which the smartphone uses for generating the display on the
smartphone (e.g., text data of search results), Laligand is not
rendering the image, that is displayed on the smartphone, at ~
main apparatus (or in Laligand's case, at the television 116
itself). That is, one of ordinary skill would readily appreciate
the difference between transferring data that is used for
rendering the image and transferring the image itself.
Appeal Br. 21. Appellants reiterate this position in their Reply Brief.
Laligand only indicates that the search results are transmitted
and then possibly displayed. These results are simply data that
is output for display on the device. Laligand is not transferring
the actual image that is ultimately displayed on the device.
Laligand thus only transmits the data that will ultimately be
rendered into an image by the device itself and is not actually
transmitting, for example, an already rendered image to the
portable device.
Reply Br. 3.
In response to this contention, the Examiner states that Laligand
discloses that search results are displayed on the smart phone and the user
interacts with the smartphone by using a remote control application to
change TV channels. Ans. 15. The Examiner interprets search results as an
operation image. Id. at 16. With respect to Appellants' argument regarding
rendering an image, the Examiner states that communicating search results
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between the devices to display the search results list is related to both
transferring data to render an image and transferring the image itself because
in both instances the search results are interpreted as the image, which is
composed of data, such that the end result is displaying/rendering the image.
Ans. 17.
The claim limitation at issue reads as follows:
a second image transmission unit for transmitting an
operation image to the portable display device, the operation
image being used for performing an operation related to the
image.
Claims App. Claim 1 (emphasis added). Appellants' traverse of the
Examiner's rejection raises three issues: (1) are the search results displayed
on Laligand's smartphone 104 an "image;" and, if so, (2) is it an "image"
when it is transmitted to the smartphone; and, if so, (3) is it an "operation"
image?
We begin by answering question (1) in the affirmative. Laligand
teaches:
In the example shown, the mobile device 222 is a cellular
telephone. In other implementations, the mobile device 222 can
be a personal digital assistant, a laptop computer, a net book, a
camera, a wrist watch, or another type of mobile electronic
device. The mobile device 222 includes ... a display screen
223 for displaying text, images, and graphics to a user,
including images captured by the camera.
Laligand i-f 53 (emphasis added). Laligand further discloses that:
The user may then interact with the results using the first
computer, and such interaction can be reflected on a display of
the first and/or second computer. For example, a user can
browse a basic representation of search results on a smartphone,
Id. i-f 30. Construing "image" broadly but reasonably, we determine that the
Examiner's finding that the search results displayed on Laligand's mobile
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device (smartphone) display screen constitutes an "image," is supported by a
preponderance of the evidence.
We next address questions (2) and (3) in reverse order. We find that
the image displayed on Laligand' s mobile device ( smartphone) display is an
"operation" image, broadly construed. Paragraph 30 of Laligand discloses
that the user may "interact" with search results. Id. It further discloses that
user input occurs "via a touchscreen on the smartphone, physical buttons on
the smartphone, or sensed motion of the smartphone." Id.
The user may then select particular episodes by tapping on the
corresponding episode on the display, which may cause the
program guide grid to scroll so that it again surrounds the newly
selected episode.
Id. i-f 41. Thus, the image displayed on Laligand's mobile device is not
merely for passive viewing; rather, it is for user interaction to accomplish
control objectives, such as select a TV episode to be viewed. The
Examiner's finding that the image displayed on Laligand's mobile device
( smartphone) is an operation image is supported by a preponderance of the
evidence.
Finally, we address the question whether the search results (or other
information) transmitted to Laligand's mobile device (smartphone) is an
"image." Appellants argue, essentially, that claim 1 requires transmission of
a fully rendered image and that merely transmitting data that is subsequently
rendered into an image at Laligand' s mo bile device ( smartphone) does not
meet the claim limitation. Reply Br. 3.
Appellants' argument requires us to construe the meaning of
"transmitting an ... image" within the meaning of claim 1. During
examination of a patent application, pending claims are given their broadest
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reasonable constn.1ction consistent with the specification. In re Arn. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Trans logic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
Appellants' briefing does not direct us to any teaching in their
Specification where they purportedly disclose transmitting a fully rendered
image per se as opposed to transmitting data that is subsequently rendered
into an image at the display device. Paragraph 63 of the Specification
teaches:
When transmitting game images (terminal game images) to the
terminal device 7, the input/output processor I la outputs game
image data generated by the GPU 11 b to the codec LSI 27. The
codec LSI 27 performs a predetermined compression process on
the image data from the input/ output processor 11 a. The
terminal communication module 28 wirelessly communicates
with the terminal device 7. Accordingly, the image data
compressed by the codec LSI 2 7 is transmitted by the terminal
communication module 28 to the terminal device 7 via the
antenna 29.
Spec. i-f 63 (emphasis added). We are of the opinion that a person of
ordinary skill in the art would understand Appellants' Specification (and
claim 1) as permitting some amount of data processing to render the
incoming data stream at the terminal device 7 into an image that is displayed
on the display screen. In other words, it would be understood that
transmitting an image requires reducing an image to a data stream,
transmitting that data stream from an image transmission unit to a portable
display device, then generating an image on the portable display device from
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the data stream that is transmitted between image transmission unit and the
display device.
We are unable to discern a patentable distinction between Laligand
and Appellants' invention of claim 1 with regard to each system transmitting
information to a portable display device that is subsequently displayed or
rendered as an image on the display device. Consequently, we find that the
Examiner's findings of fact with regard to Laligand satisfying the limitation:
"a second image transmission unit for transmitting an operation image to the
portable display device, the operation image being used for performing an
operation related to the image," are supported by a preponderance of the
evidence.
Finally, we reject Appellants' argument that "Laligand ... expressly
teaches away" from transmitting an operation image to a portable display
device as claimed. Appeal Br. 21. It is well settled that the principles of
"teaching away" are relevant only to an obviousness analysis and are not
relevant to an anticipation analysis under 35 U.S.C. § 102. See Krippelz v.
Ford Motor Co., 667 F.3d 1261, 1269 (Fed. Cir. 2012). "When all elements
of the device are shown in a single prior art reference, as here, the question
of 'teaching away' does not arise." Id.
We sustain the Examiner's anticipation rejection of claim 1.
Claim 2
Claim 2 depends from claim 1 and adds the following limitations:
the communication unit receives data representing a plurality
of types of images,
the second image transmission unit transmits an operation
image including the plurality of types of images to the portable
display device,
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t. . c . . . c t. . c . tue m1ormatwn processmg umt per1orms as tue m1ormatwn
processing a process for selecting one of the plurality of types
of images that is to be displayed on the predetermined display
device on the basis of the operation data,
the communication unit transmits an acquisition request for
the image selected by the information processing unit to the
external device, and receives data for the image transmitted by
the external device in response to the request, and
the first image output unit outputs the selected image to the
predetermined display device.
Claims App. The Examiner finds that all limitations of claim 2 are satisfied
by Laligand. Final Action 4. In particular, the Examiner finds that Laligand
discloses a "plurality" of images as claimed. Id.
Appellants argue that Laligand does not transmit a plurality of images
to the portable display device or select among a plurality of images as
claimed. Appeal Br. 24. In response, the Examiner states that Laligand
discloses search results including generating a list of episodes. Ans. 19
(citing Laligand i-fi-f 12; 40; & 41). The Examiner interprets "episodes" as
video content, such as video clips and media-related data, from which the
user may select. Id. at 19-20.
Laligand discloses that:
[T]he search results are presented as a group of music, movie,
or television items that are determined to be responsive to the
query, and are presented on the television system so that the
user may select one or more of the items for viewing or
listening. Also, the method can include transmitting all or a
portion of the search results from the television system to the
mobile computing device.
Laligand i-f 12. Laligand thus discloses displaying a plurality of "items" on a
mobile device display. Id. Appellants provide neither evidence, nor
persuasive technical reasoning, that patentably distinguishes between
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Laligand's disclosure of displaying and selecting among a plurality of
"items" and claim 2 's recital of a plurality of "types of images."
We are, therefore, not apprised of error and we sustain the rejection of
claim 2.
Claim 4
Claim 4 depends directly from claim 2 and indirectly from claim 1
and adds the following limitations:
wherein,
the communication unit acquires data representing a plurality
of types of videos from a server having videos stored therein,
when the data representing a plurality of types of videos is
acquired, the second image transmission unit transmits an
operation image including the plurality of types of videos to the
portable display device,
the communication unit makes an acquisition request to the
server for a video selected by the information processing and
receives data for that video from the server,
the first image output unit outputs the received video to the
predetermined display device, and
when the received video is outputted to the predetermined
display device, the second image transmission unit transmits an
operation image at least representing an operation related to
play of the video to the portable display device.
Claims App. The Examiner finds that Laligand discloses all of the
limitations of claim 4. Final Action 5---6. In particular, the Examiner finds
that Laligand discloses acquiring data representing a plurality of types of
videos and transmits an operation image including the plurality of types of
videos to the portable display device. Id. at 5 (citing Laligand i-fi-141, 99, &
100).
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Appellants argue that Laligand fails to transmit an operation image
including a plurality of types of videos to the portable display device.
Appeal Br. 25.
Laligand discloses that the smartphone displays a search result.
Laligand i-f 41. It also discloses that "the user may then select particular
episodes by tapping on the corresponding episode on the display." Id.
Appellants make no effort to patentably distinguish their claim to a plurality
of types of videos and Laligand's corresponding disclosure of selection
among a plurality of episodes. Thus, we are not apprised of error in the
Examiner's rejection of claim 4.
We sustain the rejection of claim 4.
Claim 16
Claim 16 is an independent claim that is substantially similar in scope
to claim 1, except that it contains limitations directed to program guides.
Claims App. The Examiner finds that Laligand discloses the use of program
guide information. Final Action 8-9.
Appellants argue that Laligand does not disclose an "image"
representing a program guide. Appeal Br. 23. 1 Appellants argue that
Laligand does not display the program guide grid. Id.
We find this argument unpersuasive for essentially the same reasons
that we discussed above with respect to the rejection of claim 1. Having
previously agreed with the Examiner that Laligand discloses an operation
1 Appellants, once again, argue that Laligand "teaches away" from
displaying an image representing a program guide. Appeal Br. 23. We
reiterate that principles of teaching away are irrelevant to an anticipation
analysis. See Krippelz, 667 F.3d supra at 1269.
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image as claimed in claim 1, we note the following disclosure in Laligand
regarding display of program guide information:
[T]he smartphone may display results that are good for small-
screen display, and the television may display results that are
useful for large-screen display. For example, the smartphone
may display a vertical list of programs that are responsive to a
query (e.g., all soon upcoming episodes of Seinfeld if the user
spoke "When is Seinfeld?"), while the television may show the
same results but in the context of a two-dimensional program
guide grid. The user may step through the results in the list on
the smartphone, and the grid may automatically jump, in a
synchronized manner, to the corresponding episode on the grid
on the television. If the user selects one of the episodes on the
list, the television may immediately tune to the episode if it is
currently being shown, or may jump to it later when it starts
and/or set it for recording on a personal video recorder (PVR ).
Laligand i-f 9; see also i-f 41. In view of the foregoing, the Examiner's
findings that Laligand discloses the programming guide limitations
(including images thereof) are supported by a preponderance of the
evidence.
We sustain the rejection of claim 16.
Claims 3, 5, 11, 12, 14, 15, and 17-23
Claims 3, 5, 11, 12, 14, and 15 depend from claim 1. Claims App.
Claim 17 depends from claim 16. Id. Claims 18-23 are independent claims.
Id. Appellants do not argue for the separate patentability of these claims
apart from arguments presented with respect to claims 1 and 16, which we
have previously considered and found unpersuasive.
We sustain the rejection of claims 3, 5, 11, 12, 14, 15, and 17-23.
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Unpatentability of Claims 6-10 and 13
Claims 6-10 and 13 depend, directly or indirectly, from claim 1.
Claims App. Appellants do not argue for the separate patentability of
claims 6-10 and 13 apart from arguments that we previously considered and
found unpersuasive with respect to the anticipation rejection of claim 1.
Appellants argue that the Examiner's various applied secondary references
fail to supply subject matter that is allegedly lacking in Laligand. Appeal
Br. 26.
Inasmuch as we reject Appellants' allegations that Laligand is so
lacking, we sustain the rejection of claims 6-10 and 13.
DECISION
The decision of the Examiner to reject claims 1-23 is affirmed.
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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