Saturn Licensing LLC

Patent Trials and Appeals Board

Apr 2, 2021

2019006326 (P.T.A.B. Apr. 2, 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.
15/696,442 09/06/2017 Yasuaki YAMAGISHI 507079US 2725
22850 7590 04/02/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SCHNURR, JOHN R
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUAKI YAMAGISHI
Appeal 2019-006326
Application 15/696,442
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–18, all of the pending claims.
Claim 1 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Saturn Licensing LLC, the
assignee of the subject application. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to “an information processing apparatus, an
information processing method, and a program, and particularly to an
information processing apparatus, an information processing method, and a
program suitable for use in a case where content displayed on a certain
screen device which configures a home network is identified by an ACR
(Automatic Content Recognition) service and metadata corresponding to the
content is displayed on a different screen device or an application is
executed in accordance with the progression of the content.” Spec. ¶ 1. The
claims cover displaying to a TV viewer related content about the program
while the viewer is watching a program. Claim 2, reproduced below, is
illustrative:
2. A reception apparatus, comprising:
circuitry configured to
process a plurality of content for concurrent display to a
user on a first display;
extract signature data from one of the plurality of content
in response to a request received from a terminal apparatus,
provide the extracted signature data to an automatic
content recognition (ACR) server,
in response to providing the extracted signature to the
ACR server, receive an ACR response from the ACR server,
and
provide the ACR response received from the ACR server
to the terminal apparatus via a home network, wherein
the terminal apparatus includes a second display that is
separate from the first display.
Appeal Br. 14. Claims Appendix.

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REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Hwang US 2009/0144787 A1 June 4, 2009
Moon US 2013/0047178 A1 Feb. 21, 2013
REJECTIONS
The Examiner rejects claims 2–5, 7–13, and 15–18 under 35 U.S.C.
§ 102(e) as anticipated by Moon. Final Act. 3.
The Examiner also rejects claims 6 and 14 under 35 U.S.C. § 103(a)
as obvious over the combined teachings of Moon and Hwang. Final Act. 5.
ISSUES
First Issue: Has the Examiner erred in rejecting claim 2 because it is a
requirement of claim 2 that the same (i.e., a single) reception apparatus
include circuitry that performs each of the steps recited in the claim?
Second Issue: Has the Examiner erred in finding Moon discloses the
limitations
[L1] in response to providing the extracted signature to the
ACR server, receive an ACR response from the ACR server,
and
[L2] provide the ACR response received from the ACR server
to the terminal apparatus via a home network,
as recited in the independent claim 2?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments set forth in the Appeal Brief and the Reply Brief. We are not

2 All citations herein to the references are to the first named inventor only.
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persuaded by Appellant’s arguments. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2–6) and (2) the findings, reasons, and explanations set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Brief (Ans. 3–5) and concur with the conclusions reached by the Examiner.3
We add the following for emphasis.
First Issue
The Examiner rejects claim 2 as anticipated by Moon, finding that it
discloses each and every limitation recited in the claim. Appellant contends
Moon does not anticipate claim 2 because Moon disclose all the features of
claim 2 within the same apparatus. Appeal Br. 5–6, Reply Br. 3–4. This
argument is not persuasive for two reasons. First, although Appellant asserts
a requirement that all operations be performed by a single “reception
apparatus,” the recited “reception apparatus” appears only in the preamble of
the claim. A preamble limits the claim only when it “is ‘necessary to give
life, meaning, and vitality’ to the claim.” MPEP § 2111.02 (citing Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
Here, the “reception apparatus” does not supply antecedent basis for
any limitation in the body of the claim, nor does it supply structure needed to
make the body a structurally complete invention. Arctic Cat Inc. v. GEP

3 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed.
Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate
the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13
(Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not
expressly make any independent factual determinations or legal
conclusions,” because it had expressly adopted the Examiner’s findings.).

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Power Prods., 919 F.3d 1320, 1329 (Fed. Cir. 2019) (concluding preamble
not limiting where it does not provide antecedent basis for any limitation in
the body of the claim and does not supply structure needed to make the body
of the claim a structurally complete invention). Because the preamble is not
limiting, we discern no requirement that the steps of the claim be performed
by circuitry that is part of a single reception apparatus as argued by
Appellant.
Moreover, even if the preamble could be considered limiting, there
still would be no reason to limit “reception apparatus” to a single reception
apparatus. The claim recites “[a] reception apparatus.” which in patent
parlance, means “one or more reception apparatuses.” SanDisk Corp. v.
Kingston Tech. Co., 695 F.3d 1348, 1360 (Fed. Cir. 2012) (stating general
rule that the use of the indefinite articles “a” or “an” means “one or more”).
As such, we discern no requirement in language of claim 2 that all steps
must be performed by a single apparatus. We, therefore, are not persuaded
by Appellant’s argument that Moon is deficient because the same reception
apparatus does not perform each recited feature in the claim. See Appeal Br.
5–6.
Second Issue
Appellant also specifically argues that Moon does not teach
limitations L1 and L2. Appellant argues the Examiner improperly relies on
Moon’s ACR capability response S4307 as a response from the finger print
server 22, and thus does not disclose the limitations L1 and L2. See Appeal
Br. 8 (citing Moon, Fig. 6). Appellant further argues Moon does not
disclose that the terminal device 400 sends a response from the fingerprint
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server 22 to another terminal device. See Appeal Br. 9 (citing Moon, Figs.
6, 88).
The Examiner finds Moon discloses these limitations. Specifically,
the Examiner finds Moon’s video display device 100 and terminal device
400 disclose the recited “display” and “terminal apparatus,” respectively.
Final Act. 3–4. The Examiner further finds Moon’s fingerprint server 22
discloses the recited “ACR server.” Id. Regarding limitation L1, the
Examiner finds Moon’s Fig. 6 featuring replies received by the video display
device 100 from the fingerprint server 22 following extracting of
information S213, discloses the disputed limitation L1: “in response to
providing the extracted signature to the ACR server, receive an ACR
response from the ACR server.” Id, Ans. 4. Regarding limitation L2, the
Examiner finds Moon’s Fig. 88 (steps S213–S225), which depicts the
pairing and interworking between the terminal device 400 and the video
display device 100, discloses providing ACR responses to the terminal
apparatus via a network. See Final Act. 4, citing Moon Figs. 6, 88, 967–979,
1047, 1055, and Ans. 4–5.
We are not persuaded by Appellant’s argument because we find
Moon’s terminal device 400 that performs operations S213 to S225 in Figure
6 discloses that the recited terminal device also receives the responses
received by the video display service 100 from the fingerprint server 22. See
Moon ¶ 977, Figs. 6, 88. Therefore, because Moon’s ACR response reaches
the terminal device 400, we find it discloses the disputed limitation “provide
the ACR response received from the ACR server to the terminal apparatus
via a home network.”
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Accordingly, we are not persuaded the Examiner erred in finding
Moon’s disclosure of the disputed limitations of independent claim 2.

Dependent Claim 3
Dependent claim 3 recites
3. The reception apparatus according to claim 2, wherein the
terminal apparatus is configured to acquire an application based
on the ACR response.
Appellant argues “The Office Action identifies the ACR capability
response S4307 the recited ‘ACR response.’ However, Applicant submits
that the cited portions of Moon for disclosing the features of claim 3 are
unrelated to the ACR capability response S4307.” Appeal Br. 11.
Appellant further argues “even assuming arguendo that the ACR
capability response S4307 of Moon discloses the recited ‘ACR response,’
which Applicant submits it does not, Moon fails to disclose or suggest that
the terminal device 400 acquires an application in response to receiving the
ACR capability response S4307.” Appeal Br. 12.
We are not persuaded by Appellant’s arguments because the
Examiner does not map the claimed “ACR response” to Moon’s S4307, but
rather maps it to Moon’s response from the fingerprint server 22. See Final
Act. 4, Ans. 5.
Accordingly, we are not persuaded the Examiner erred in finding
Moon’s disclosure of the disputed limitations of dependent claim 3.

Remaining Claims
Appellant presents no separate arguments for patentability of any
other claims. Accordingly, we treat claim 2 as representative of the
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remaining claims, and we sustain the Examiner’s rejections of these claims
for the reasons stated with respect to claim 2. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s rejection of the pending claims.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–5, 7–13,
15–18
102(e) Moon 2–5, 7–13,
15–18

6, 14 103(a) Moon, Hwang 6, 14
Overall
Outcome
2–18
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED