NHN Entertainment Corporation

Patent Trials and Appeals Board

Apr 28, 2021

2020000787 (P.T.A.B. Apr. 28, 2021)

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.
15/404,484 01/12/2017 Kyoung Hwan Oak P7037US00 8931
58027 7590 04/28/2021
H.C. PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
EXAMINER
FLYNN, RANDY A
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
04/28/2021 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYOUNG HWAN OAK and HYEYOUNG KIM
Appeal 2020-000787
Application 15/404,484
Technology Center 2400
Before JEAN R. HOMERE, IRVIN E. BRANCH, and SCOTT RAEVSKY,
Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals from the Examiner’s decision to reject claims 1–
16, which constitute all of the pending claims. See 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as NHN
Entertainment Corporation. Appeal Br. 3.
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Application 15/404,484

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CLAIMED SUBJECT MATTER
The claims relate to a method and system for managing an application
of a set-top box. Spec., Abstr. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method performed by a set-top box lacking an
application store for managing an application of the set-top box,
the method comprising:
making a connection with a terminal having an
associated application store using a local network;
downloading the application from the terminal using the
associated application store of the terminal;
receiving installation data or deletion data of the
application from the terminal; and
managing the application using the received installation
data or the received deletion data.
REFERENCES
The Examiner relies upon the following prior art:
Swanburg
Soldan
Nagata
Toy
Outters
Kataoka
US 2008/0092177 A1
US 2011/0254683 A1
US 2013/0179928 A1
US 2013/0231093 A1
US 2015/0373295 A1
US 2013/0177288 A1
Apr. 17, 2008
Oct. 20, 2011
July 11, 2013
Sept. 5, 2013
Dec. 24, 2015
July 11, 2013
REJECTIONS
Claims 1, 2, 4, 6, 8, 9, 11, 13, and 15 are rejected under 35 U.S.C.
§ 103 as unpatentable over Kataoka, Outters, and Toy. Final Act. 3.
Claims 3, 10, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Kataoka, Outters, Toy, and Soldan. Final Act. 8.
Claims 5 and 12 are rejected under 35 U.S.C. § 103 as unpatentable
over Kataoka, Outters, Toy, and Nagata. Final Act. 10.
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Application 15/404,484

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Claims 7 and 14 are rejected under 35 U.S.C. § 103 as unpatentable
over Kataoka, Outters, Toy, and Swanburg. Final Act. 11.
ANALYSIS
Rejection of Independent Claims 1 and 8
Appellant contends that the combination of Kataoka, Outters, and Toy
fails to teach or suggest “downloading the application from the terminal
using the associated application store of the terminal” in claim 1. Appeal Br.
10–12. Appellant first contends that “Outters merely teaches that the TV
receiver can download matching applications from what appears to be its
own app store.” Id. at 10. According to Appellant, Outters teaches the
“ordinary use of app stores” but not “downloading the [set-top box]
application from the terminal using the associated application store of the
terminal.” Id. at 11.
Appellant next contends that “[n]othing in Toy suggests that the
communication device 106 lacks its own app store.” Id. at 12. Appellant
contends that Toy’s host server 101 “may have its own app store.” Id.
Appellant contrasts Toy’s teachings with the claim’s requirement of “‘a
terminal having an associated application store’ that is connected to a ‘set-
top box . . . using a local network.’” Id. Appellant believes Toy’s
communication device 106 is not a set-top box and that host server 101 is
not a terminal connected to the set-top box. Id.
Finally, Appellant argues that “Toy teaches against the present
system.” Id. Appellant asserts that Toy “uses a server to download
applications to a mobile terminal in the conventional manner rather than a
mobile terminal to download app from its app store to a set-top box that
lacks its own app store.” Id.
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The Examiner finds that the references disclose the disputed limitation
as follows:
Kataoka – discloses “downloading the application from the terminal”
(Final Act. 4, citing Kataoka ¶¶ 41, 80);
Outters – discloses “downloading using an application store of a
terminal” (Final Act. 4, citing Outters ¶¶ 66, 106); and
Toy – discloses “downloading from the device using the associated
application store of the device” (Final Act. 5, citing Toy ¶¶ 54, 55).
In the Answer, the Examiner further explains that “Toy was also brought in
to show (among other things) a receiver lacking an application store.” Ans.
4. The Examiner also disagrees that Toy teaches away because Toy “was
cited in order to perform the process in combination with the already cited
features of the previous prior art.” Id. Appellant did not file a Reply brief
addressing the Answer.
We agree with the Examiner. Kataoka discloses “portable terminals”
that “can download various applications . . . to the controller.” Kataoka
¶ 41. Outters discloses a “digital TV receiver” that can “download and
install applications . . . by searching an app store website.” Outters ¶ 66.
And Toy discloses “host servers” that “operate as an intermediary between a
user device . . . that are instructed to retrieve information from an app store.”
Toy ¶ 55. Collectively, we find that these teachings disclose or suggest the
disputed limitation.
Appellant argues the references individually. But one cannot show
non-obviousness by attacking references individually, where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). For instance, Appellant’s contention that
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Outters does not disclose “downloading the [set-top box] application from
the terminal using the associated application store of the terminal”
overlooks that the Examiner cites Toy for “downloading from the device
using the associated application store of the device.” See Appeal Br. 11;
Final Act. 5 (emphasis added).
Appellant’s arguments against Toy suffer the same defect. Discussing
Toy, Appellant asserts that Toy’s communication device 106 is not a set-top
box and that host server 101 is not a terminal connected to the set-top box.
Appeal Br. 12. But the Examiner cites Kataoka for the preamble’s recitation
of a “set-top box” and for claim 1’s recitation of “making a connection with
a terminal using a local network.” Final Act. 3.
Finally, Appellant’s teaching away argument is unpersuasive.
Appellant merely asserts that Toy “uses a server to download applications to
a mobile terminal in the conventional manner rather than a mobile terminal
to download [an] app from its app store to a set-top box that lacks its own
app store.” Appeal Br. 12 (emphasis added). Appellant’s assertion appears
to be that Toy merely discloses one alternative “rather than” another, which
is insufficient to show teaching away. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference
does not teach away . . . if it merely expresses a general preference for an
alternative invention[.]”). Regardless, to the extent that Toy may disclose
some disadvantages, just because better alternatives exist in the prior art
does not mean that an inferior combination is inapt for obviousness
purposes. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
We thus sustain the Examiner’s rejection of claim 1 and similar claim
8, which Appellant does not argue separately. See Appeal Br. 10, 12.
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Rejection of Independent Claim 15
Appellant disputes that the combination of Kataoka, Outters, and Toy
teaches or suggests claim 15’s “providing uniform resource locator (URL)
information of a client application, which is embedded in a set-top box, to a
terminal for inter-device connection using the local network.” Appeal Br.
13. Appellant contends that “the Office Action alleges disclosure of
‘installation information’ . . . rather than . . . use of URL’s, as presently
claimed.” Id. Appellant also contends, “none of the cited portions of
Outters or Toy relate to inter-device communication, as claimed.” Id.
The Examiner finds that Outters and Toy discloses the “inter-device
connection” and that Outters and Toy discloses the URL. Final Act. 7
(referring to discussion of similar claim 2), 6 (in discussion of claim 2, citing
Outters ¶¶ 95, 105–106, 62; Toy ¶¶ 28, 37); Ans. 5. We agree with the
Examiner.
Appellant merely asserts, but does not explain why, the cited
references do not teach or suggest the disputed limitation. Appellant’s
argument amounts to stating what the claims recite and that the cited
references do not disclose it. These assertions do not constitute an argument
on the merits because “[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.” 37 C.F.R. § 41.37(c)(1)(iv) (2020); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (holding 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”).
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Application 15/404,484

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We sustain the Examiner’s rejection of claim 15.

Dependent Claims
Appellant does not advance specific arguments for any dependent
claims. We sustain the rejections of the dependent claims.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6, 8,
9, 11, 13, 15
103 Kataoka, Outters, Toy 1, 2, 4, 6,
8, 9, 11,
13, 15

3, 10, 16 103 Kataoka, Outters, Toy,
Soldan
3, 10, 16
5, 12 103 Kataoka, Outters, Toy,
Nagata
5, 12
7, 14 103 Kataoka, Outters, Toy,
Swanburg
7, 14
Overall
Outcome
1–16
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.
§ 1.136(a)(1)(iv).
AFFIRMED