Sony Europe Limited

Patent Trials and Appeals Board

Nov 10, 2020

15427091 - (D) (P.T.A.B. Nov. 10, 2020)

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.
15/427,091 02/08/2017 Jose Alexandre SIMOES RODRIGUES 500927US 1906
22850 7590 11/10/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SHEPARD, JUSTIN E
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
11/10/2020 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 JOSE ALEXANDRE SIMOES RODRIGUES, and
TASSILO VOLKER RAESIG
____________________

Appeal 2020-002069
Application 15/427,091
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
JASON V. MORGAN, Administrative Patent Judges.

MacDONALD, 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 1–20. Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, and designate our affirmance as a new ground of
rejection.

1 Appellant identifies the real party in interest is Sony Europe B.V.
Appeal Br. 1.
Appeal 2020-002069
Application 15/427,091

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CLAIMED SUBJECT MATTER
Claims 1 and 12 are illustrative of the claimed subject matter
(emphasis and bracketed material added):
1. An electronic device, comprising:
[A.] an interface configured to:
[i.] provide a bidirectional communication link over
a network;
[ii.] receive a content item transmitted via the
internet; and
[iii.] receive a data feed, originating from a single
network address, comprising textual data
wrapped in a tag structure associated with the
content item based on information identifying the
content item; and
[B.] circuitry configured to:
[i.] decode the content item;
[ii.] execute a software stack configured to interpret
the textual data to identify, based on control
information, a part of the data feed to exclude
from being output with the content item; and
[iii.] control an output of the data feed without the part
identified to be excluded by the software stack.
12. The electronic device according to claim 1, wherein the data
feed includes uniform resource identifiers (URIs) identifying
content.
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Application 15/427,091

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REFERENCES
All citations herein are by reference to the first named inventor only.
The Examiner relies on the following references:
Name Reference Date
Anderson US 2003/0084128 A1 May 1, 2003
Shelton US 2006/0125962 A1 June 15, 2006
Yaussy US 2010/0058423 A1 Mar. 4, 2010
O’Shaughnessy US 8,601,162 B1 Dec. 3, 2013

REJECTIONS
A.
The Examiner rejects claims 1–8, 10–12, and 15–20 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Yaussy, Anderson, and
O’Shaughnessy. Final Act. 2–6.
We select claim 1 as the representative claim for this rejection.
Appellant does not argue separate patentability for claims 2–8, 10–12, and
15–20. Except for our ultimate decision, we do not address the merits of the
Examiner’s § 103 rejection of claims 2–8, 10–12, and 15–20 further herein.
B.
The Examiner rejects claims 9, 13, and 14 under 35 U.S.C. § 103 as
being unpatentable over the combination of Yaussy, Anderson, Shelton, and
O’Shaughnessy. Final Act. 7–8.
To the extent that Appellant discusses claims 9, 13, and 14, Appellant
merely references the arguments directed to claim 1. Appeal Br. 7. Such a
repeated argument (or referenced argument) is not an argument for “separate
patentability.” Thus, the rejection of these claims turns on our decision as to
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claim 1. Except for our ultimate decision, we do not address the merits of
the § 103 rejection of claims 9, 13, and 14 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
Claim 1 defines that the data feed, including the part to be
excluded, originates from a single network address.
In contrast, O’Shaughnessy describes a system for sharing
network addresses for, for example, syndication feeds.
O’Shaughnessy at col. 5:20−41 and col. 11:19−28. . . .
Thus, O’Shaughnessy describes filtering content based on
network address such that access to a particular network address
is permitted or denied based on parental authorization. If a
particular network address is restricted by the parental
authorization, the network address is filtered from the
syndication feed so that the user does not have access to the
network address. O’Shaughnessy does not describe identifying
“a part of” of the content of a network address “to exclude from
being output with the content item.” Instead, O’Shaughnessy
describes entirely removing a network address from a feed
including a plurality of network addresses in order to deny access
to (i.e., exclude) the entirety of the content of the removed
network address.
Moreover, O’Shaughnessy describes a syndication feed
that includes a plurality of network addresses. O’Shaughnessy at
co[l]. 14:4−20. Th[u]s, the syndication feed of O’Shaughnessy
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originates from multiple network addresses, not a single network
address as required by Claim 1 of the application.
Appeal Br. 5–6 (emphasis added).
We are unpersuaded by Appellant’s argument. We agree with
Appellant to the extent that column 14, lines 4–20, of O’Shaughnessy is
“network address” centric as to the controlled filtering of access by a child
(i.e., an entire network address is filtered). However, we disagree with
Appellant’s ultimate conclusion that the claimed identifying a part of the
data feed (from a single network address) to exclude from being output is not
obvious over the combination of Yaussy, Anderson, and O’Shaughnessy.
We determine that a single network address (as claimed) having plural
corresponding hyperlinks is well-known (e.g., plural distinct data content
with different hyperlinks at the same network address). For example, “a
shared favorites web page may include a list of hyperlinks corresponding to
each network address an individual user has designated as a shared network
address.” O’Shaughnessy, col. 14:28–31 (emphasis added).
Further, we determine that filtering an individual hyperlink, of a list of
hyperlinks corresponding to a single network address, is a predictable
extension of O’Shaughnessy’s coarse network address centric controlled
filtering to the finer level of an individual one of the hyperlinks
corresponding to part of the overall data content at a single network
address.2
The principles underlying these cases are instructive when
the question is whether a patent claiming the combination of

2 See also, Fieweger (US 9,069,436 Bl; filed March 31, 2006) at figure 1C,
figure 1D, column 4, lines 26–41, and column 10, lines 4–15, which also
discloses filtering of individual hyperlinks.
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elements of prior art is obvious. When a work is available in one
field of endeavor, design incentives and other market forces can
prompt variations of it, either in the same field or a different one.
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same reason,
if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (emphases added).
Further, Appellants have not presented evidence sufficient to show
that combining the prior art was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418–19).
We conclude that controlled hyperlink filtering is a predictable
variation of O’Shaughnessy’s known network address filtering and would
have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention.
Because our reasoning differs from the Examiner’s, pursuant to our
authority under 37 C.F.R. § 41.50(b), we designate our analysis above as a
new ground of rejection of claim 1 (and as to analogous or dependent claims
thereof) under 35 U.S.C. § 103.
B.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
Indeed, O’Shaughnessy needs to include multiple network
addresses in its syndication feed since O’Shaughnessy can only
remove a network address in its entirety. Were O’Shaughnessy
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to include a single network address in its syndication feed, the
syndication feed would have no information if a network
address is removed. This results frustrates the intended purpose
of O’Shaughnessy, providing a syndicated feed of information,
and therefore such an interpretation of O’Shaughnessy cannot
form the basis of an obviousness-type rejection. MPEP 2143.01
citing In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir.
1984) (“If proposed modification would render the prior art
invention being modified unsatisfactory for its intended
purpose, then there is no suggestion or motivation to make the
proposed modification”). Therefore, O’Shaughnessy does not
disclose or suggest identifying “based on control information, a
part of the data feed to exclude from being output with the
content item,” where the data feed originates “from a single
network address,” and controlling “an output of the data feed
without the part identified to be excluded,” as recited in Claim 1.
Appeal Br. 6 (emphases added).
We are unpersuaded by Appellant’s argument. Appellant is simply
mistaken in arguing that in the proposed scenario of a single network
address, O’Shaughnessy is unsatisfactory for its intended purpose. Rather,
O’Shaughnessy merely operates as intended for that single network address
scenario. Appellant does not establish that the single network address
scenario is excluded from O’Shaughnessy operating parameters. That is,
Appellant does not establish that multiple network addresses are required
before O’Shaughnessy can remove a network address in its entirety.

CONCLUSION
The Examiner has not erred in rejecting claims 1–20 as being
unpatentable under 35 U.S.C. § 103.
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The Examiner’s rejections of claims 1–20 as being unpatentable under
35 U.S.C. § 103 are affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed New
Ground
1–8, 10–
12, 15–20
103 Yaussy, Anderson,
O’Shaughnessy
1–8, 10–
12, 15–20
1–8, 10–
12, 15–20
9, 13, 14 103 Yaussy, Anderson,
O’Shaughnessy,
Shelton
9, 13, 14 9, 13, 14
Overall
Outcome
1–20 1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 15/427,091

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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

AFFIRMED; 37 C.F.R. 41.50(b)