Ex Parte Wong et alDownload PDFPatent Trial and Appeal BoardNov 30, 201713237561 (P.T.A.B. Nov. 30, 2017) Copy Citation 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. 13/237,561 09/20/2011 Ling Jun Wong 201003468.02 4916 51518 7590 12/04/2017 MAYF.R Rr WTT T TAMS PC" EXAMINER 55 Madison Avenue KUMAR, ANIL N Suite 400 Morristown, NJ 07960 ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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): docket @ mwpatentlaw. com mwolf @ mwpatentlaw.com kwilliams@mwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LING JUN WONG, CHARLES MCCOY, and TRUE XIONG Appeal 2017-004482 Application 13/237,561 Technology Center 2100 Before ROBERT E. NAPPI, DAVID M. KOHUT, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—4, 7—16, and 18—20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2017-004482 Application 13/237,561 STATEMENT OF THE CASE1 Introduction Appellants’ invention relates to software that maintains and controls filtered lists of content for internet delivery via a remote display to a playback device. Abstract; Spec. 3. Claim 1 is illustrative of the invention (disputed limitation italicized): 1. A method of viewing on a second display a list of favorite and/or recently-viewed services or content items available to a user for consumption on a content playback device, comprising: i. establishing a communication session between a second display and a source of content; ii. associating the communication session with a user account of a user, the user account having associated therewith at least one content playback device, the second display able to initiate and at least partially controlling content playback on the content playback device; iii. receiving an identifier of a content playback device specified by the user on which content is to be played back, the identifier received from the second display; iv. accessing a list of favorite and/or recently-viewed services or content items previously associated with the user account; v. filtering the list to eliminate those content items, or services offering such content items that the user is no longer entitled to access based at least partially on the user account, and further filtering the list to include only services 1 Our Decision makes reference to Appellant’s Reply Brief (“Reply Br.,” filed January 25, 2017) and Appeal Brief (“App. Br.,” filed July 12, 2016), and the Examiner’s Answer (“Ans.,” mailed December 1, 2016) and Final Office Action (“Final Act.,” mailed November 12, 2015). 2 Appeal 2017-004482 Application 13/237,561 or content items accessible or playable on the specified content playback device; and vi. presenting to the user the filtered list to thereby present a list of favorite and/or recently viewed services or content items that are currently available under the user account and to the specified content playback device. Rejections on Appeal The Examiner rejected claims 1—4, 7—11, 13, 14, 16, and 18—20 under 35 U.S.C. § 103(a) as unpatentable over Benya (US 2008/0155613 Al; June 26, 2008) and Wagner (US 2011/0276585 Al; Nov. 10, 2011). Ans. 3-17. The Examiner rejected claims 12 and 15 under 35 U.S.C. § 103(a) as unpatentable over Benya, Wagner, and Ording (US 2007/0011616 Al; Jan. 11, 2007). Id. at 17-19. Issue on Appeal Among the several issues presented by Appellants, the dispositive issue in this appeal is: did the Examiner err in rejecting independent claim 1, and similarly independent claims 14 and 19, under 35 U.S.C. § 103(a) because the combination of Benya and Wagner fails to teach or suggest “the second display able to initiate and at least partially controlling content playback on the content playback device” (App. Br. 6—7; Reply Br. 2)? ANALYSIS Rejection of claims 1, 14, and 19 under 35 U.S.C. § 103(a) Regarding claims 1,14, and 19, the Examiner finds Benya initiates content playback at a customer premises equipment device (CPE device, e.g., set top box) by proceeding with content rental after receiving notification of content availability via the web browser, which corresponds to the second display. Ans. 4—5. Further, 3 Appeal 2017-004482 Application 13/237,561 the Examiner finds Benya’s web browser is able to partially control playback by ordering or previewing content. Id. at 5, 20. Appellants contend that the Examiner erred in finding Benya teaches “the second display able to initiate and at least partially controlling content playback on the content playback device,” as recited in claim 1 and similarly required in claims 14 and 19. App. Br. 6—7; Reply Br. 2. Appellants agree Benya teaches a web browser as a second display; however, Appellants argue that Benya’s set top box (via the CPE navigator), rather than the web browser, initiates and partially controls content playback. App. Br. 6. Appellants further argue Benya does not teach the web browser partially controlling content playback, because the ability to preview content in the web browser is different from controlling content playback on the content playback device. Reply Br. 2. A preponderance of the evidence does not supports the Examiner’s findings that Benya teaches a second display able to initiate and at least partially control content playback. First, we are persuaded by Appellants that Benya’s set top box initiates content playback, because, while the notification of rental availability comes to the user via the web browser, the set top box is used to initiate the rental content delivery. Benya’s set top box, however, corresponds to the claimed content playback device, whereas the claim requires that the second display initiate content playback. See App. Br. 6—7; see also Ans. 4 (citing Benya Fig. 3 A, step 318, and 177). Further, we do not agree with the Examiner’s finding that Benya’s previewing and ordering content is partially controlling playback via the web browser. Although content is able to be previewed and ordered via the web browser and added to the video on demand (VOD) list, the user must launch the CPE navigator application in the set top box to get to the VOD list to start the 4 Appeal 2017-004482 Application 13/237,561 content playback. See App. Br. 6, see also Benya 139, 146. As such, the set top box, not the web browser, is controlling the playback. Because the Examiner has not identified any teaching in Benya where initiating and controlling content playback is able to be performed by the second display, and Wagner does not cure this deficiency, we agree with Appellants on this dispositive issue and do not reach the merits of Appellants’ other arguments. For these reasons discussed above, we do not sustain the Examiner’s § 103(a) rejection of independent claims 1,14, and 19 or dependent claims 2-4, 7—13, 15, 16, 18, and 20. CONCLUSION On the record before us, we conclude that the Examiner erred in rejecting claims 1—4, 7—16, and 18—20 under § 103(a) as unpatentable over the combination of cited references. DECISION The Examiner’s rejections of claims 1—4, 7—16, and 18—20 are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation