Ex Parte Kandanala et alDownload PDFPatent Trial and Appeal BoardJul 25, 201613196949 (P.T.A.B. Jul. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/196,949 08/03/2011 25537 7590 07/27/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Venket S. Kandanala 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. 20110160 4799 EXAMINER BAIG, SAHARA ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 07/27/2016 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VENKET S. KANDANALA, NICKY PINAKIN JOSHI, ANAND N. SANKARAN, RAJESH NARAYANAN, LISA A. CAPUTO, KARTHIK SRINIVASAN, MOUSUMI DASGUPTA, JUBISH C. PARAMBATH, and SUDHARSAN SELVAKUMAR Appeal2015-003772 Application 13/196,949 Technology Center 2400 Before JEAN R. HOMERE, ERIC B. CHEN, and KEVIN C. TROCK, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-003772 Application 13/196,949 This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-20, all the claims pending in the application. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Appellants' invention relates to providing a television service via a customer device, that includes receiving a customer input invoking an interactive mode pertaining to the television service and retrieving a graphical user with an interactive half-screen and a program half-screen. (Abstract.) Claim 1 is exemplary, with disputed limitation is italics: 1. A method comprising: providing a television service via a customer device; receiving a customer input to invoke an interactive mode pertammg to the telev1s10n service; retrieving a graphical user interface comprising an interactive half-screen and a program half-screen, wherein the interactive half- screen is a same size as the program half-screen, and the interactive half-screen and the program half-screen occupy an entire space of the graphical user interface; displaying the graphical user interface via the customer device, wherein the interactive half-screen includes one or more interactive graphical elements and the program half-screen includes a program window that displays a program, wherein the one or more interactive elements are unrelated to the program; receiving another customer input to access another graphical user interface; retrieving the other graphical user interface; and 2 Appeal2015-003772 Application 13/196,949 displaying the other graphical user interface via the customer device, wherein the other graphical user interface includes another interactive half-screen and another program half-screen. Claims 1, 2, 4, 9, 10, 12, 14, and 16-19 stand rejected under 35 U.S.C. § 102(b) as anticipated by Yang (US 2009/0260035 Al; Oct. 15, 2009). Claims 3, 7, 11, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yang and Gordon (US 2007/0283390 Al; Dec. 6, 2007). Claims 5, 6, 8, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yang and West (US 2011/0239253 Al; Sept. 29, 2011). Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yang and Suk (US 2012/0023524 Al; Jan. 26, 2012). ANALYSIS The Examiner rejected independent claims 1, 9, and 16 under 35 U.S.C. § 102(b) as anticipated by Yang. (Final Act. 2-3.) In particular, the Examiner found that [t]his teaching [a split-screen where two channels are able to be viewed at once] in combination with the "half-screen" teachings disclosed in paragraph 0031 of Yang where the half-screen channel browser display enables the viewing of a pre-selected channel and the display of a two-dimensional array of channels (at least one of which is unrelated to the displayed channel) as shown in Figure 2 meets the appellants['] claim limitation. (Ans. 9.) However, in an anticipation rejection, "it is not enough that the prior art reference ... includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference must "clearly and unequivocally disclose the claimed 3 Appeal2015-003772 Application 13/196,949 [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference." Id. (quoting In re Arkley, 455 F.2d 586, 587 (CCPA 1972)). Thus, while "[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection ... it has no place in the making of a 102, anticipation rejection." Arkley, 455 F.2d at 587-88. The Examiner's rejection of independent claims 1, 9, and 16 under 3 5 U.S.C. § 102(b) is improper because it is based upon picking, choosing, and combining the two separate embodiments set forth hereinbelow. Therefore, we do not sustain the rejection of these claims. Claims 2, 4, 10, 12, 14, and 17-19 depend from claims 1, 9, and 16. Accordingly, we do not sustain the rejection of claims 2, 4, 10, 12, 14, and 17-19 under 35 U.S.C. § 102(b) for the same reasons discussed with respect to claims 1, 9, and 16. Furthermore, we do not sustain the rejection of dependent claims 3, 5, 6-8, 11, 13, 15, and 20 under 35 U.S.C. § 103(a) because the Examiner has not established a prim a facie case for unpatentability. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) We enter the following new ground of rejection: Claims 1, 9, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yang. Yang relates to "displaying channel information and visual content in a two-dimensional array." (i-f 2.) In the "Background of the Invention" section, Yang explains that"[ s ]plit-screen or picture-in-picture, where two channels are able to be viewed at once, has ... become common in the 4 Appeal2015-003772 Application 13/196,949 television units currently sold." (if 5.) In one embodiment, as illustrated in Figure 2, Yang explains that half-screen channel browser display 202 enables viewing of a pre-selected channel shown in the background and a two-dimensional array of channels shown in the foreground. (if 31.) The combination of the prior art split-screen embodiment of Yang with the Figure 2 embodiment of Yang is nothing more than incorporating the known pre-selected viewing channel and the known two-dimensional array of channels into the known split-screen configuration for television units, to yield predictable results. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). Such combination would result in displaying the half screen two-dimensional array on one side of the split-screen, while displaying the pre-selected viewing channel on the other side of the split- screen. Accordingly, Yang teaches the limitation "displaying the graphical user interface via the customer device, wherein the interactive half-screen includes one or more interactive graphical elements and the program half- screen includes a program window that displays a program, wherein the one or more interactive elements are unrelated to the program." Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject independent claims 1, 9, and 16 as unpatentable over Yang under 35 U.S.C. § 103(a). Because the Patent Trial and Appeal Board is a review body, rather than a place of initial examination, we have not reviewed dependent claims 2-8, 10-15, and 17-20 to the extent necessary to determine whether Yang, alone or in combination with Gordon, West, or Suk renders any of 5 Appeal2015-003772 Application 13/196,949 these claims obvious. We leave it to the Examiner to determine the appropriateness of any further rejections of dependent claims 2-8, 10-15, and 17-20 under 35 U.S.C. § 103(a). 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 that 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 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 proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims: ( 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 prosecution 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 .... DECISION The Examiner's decision rejecting claims 1-20 is reversed. A new ground of rejection has been entered under 37 C.F.R. § 41.50(b) for claims 1, 9, and 16, rejected under 35 U.S.C. § 103(a) as unpatentable over Yang. REVERSED 37 C.F.R. § 41.50(b) 6 Copy with citationCopy as parenthetical citation