Ex Parte Lilleness et al

Patent Trial and Appeal Board

Dec 12, 2017

13801307 (P.T.A.B. Dec. 12, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/801,307 03/13/2013 Robert P. Lilleness 81230.71US11 9233
34018 7590
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
PITARO, RYAN F
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
chiipmail @ gtlaw .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT P. LILLENESS, HAN-SHENG YUH,
WEIDONG WILLIAM WANG, and WAYNE SCOTT
Appeal 2017-005945
Application 13/801,307
Technology Center 2100
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
SCOTT B. HOWARD, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention includes a “platform,” such as a Web tablet,
PDA, personal computer, or remote control, that initiates (1) playing media
content, and (2) retrieving related information from an information source
responsive to activating a platform command key. See generally Abstract;
Spec. 1—3, 10; Figs. 13—14. Claim 1 is illustrative:
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1. A method for providing access to information about media
content of a media content provider, comprising:
displaying in a display of the platform a user interface element
representative of a media content provider;
in response to a sensed interaction with the user interface element
displayed in the display of the platform, causing the platform to both
transmit a command to cause the appliance to perform an operation to
thereby provide access via the appliance to a first media content available
from the media content provider and a command to cause a retrieval of
information related to a second media content available from the media
content provider from an address wherein the address is uniquely associate
with the media content provider and a mapping between the address and the
user interface element is stored in a memory of the platform prior to the
sensed interaction with the user interface element; and
causing the retrieved information related to the second media content
available from the media content provider to be displayed in the display of
the platform.
THE REJECTIONS
The Examiner provisionally rejected claims 1—17 on the ground of
nonstatutory double patenting as unpatentable over claims 1—5 and 7—15 of
copending Application No. 13/801,157. Final Act. 3—4.1
1 Throughout this opinion, we refer to (1) the Final Rejection mailed April 5,
2016 (“Final Act.”); (2) the Appeal Brief filed September 27, 2016 (“App.
Br.”); (3) the Examiner’s Answer mailed January 3, 2017 (“Ans.”); and (4)
the Reply Brief filed February 24, 2017 (“Reply Br.”).
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The Examiner rejected claims 1—11 and 14—17 under 35 U.S.C.
§ 103(a) as unpatentable over Mitchell (US 2002/0162120 Al; Oct. 31,
2002), Maa (US 2004/0068750 Al; Apr. 8, 2004), and Goulden (US
5,956,025; Sept. 21, 1999). Final Act. 4-11.
The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Mitchell, Maa, Goulden, and Oku (US 2001/0051997 Al;
Dec. 13,2001). Final Act. 11—12.
RELATED APPEALS
On pages 2 and 3 of the Appeal Brief and page 10 of the Reply Brief,
Appellants inform us of ten related appeals where the Board rendered
decisions. See Ex parte Dresti, No. 2009-004828 (BPAI May 17, 2010); Ex
parte Lilleness, No. 2011-007127 (PTAB Oct. 28, 2013) (“Lilleness /’); Ex
parte Lilleness, No. 2015-005536 (PTAB Nov. 18, 2016) (“Lilleness IE); Ex
parte Chambers, No. 2011-011493 (PTAB Nov. 25, 2013); Ex parte Arling,
No. 2012-012188 (PTAB Sept. 1, 2015); Ex parte Dresti, No. 2011-007406
(PTAB Sept. 24, 2013); Ex parte Huang, No. 2012-009621 (PTAB Feb. 3,
2015); Ex parte Arling, No. 2011-005834 (PTAB Nov. 7, 2013); Ex parte
Thompson, No. 2013-003049 (PTAB July 28, 2015); Ex parte Huang, No.
2014-001814 (PTAB Apr. 4, 2016).
On page 3 of the Appeal Brief, Appellants also inform us of four then-
pending appeals, three of which have been decided. See Ex parte Huang,
No. 2015-006186 (PTAB Nov. 2, 2016); Ex parte Chambers, No. 2015-
004737 (PTAB Jan. 18, 2017); Ex parte Lilleness, No. 2017-002558 (PTAB
June 26, 2017) (“Lilleness HE).
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One of these appeals, namely Lilleness III, involves the same prior art
references at issue here. Another appeal, Lilleness II, involves the Mitchell
reference which is also at issue here.
THE PROVISIONAL DOUBLE PATENTING REJECTION
Because the provisional double patenting rejections (Final Act. 2—5)
are not ripe for decision, we decline to reach them. See Ex parte Moncla, 95
USPQ2d 1884, 1885 (BPAI 2010) (precedential); see also Ex parte Jerg,
No. 2011-000044, 2012 WL 1375142, at *3 (BPAI 2012) (expanded panel)
(informative) (“Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections.”).
Notably, claims 1—5 and 7—15 from copending Application No.
13/801,157 on which the provisional rejection was based (Final Act. 3) were
cancelled. Although the Examiner refers to a different set of claims from
that copending application on pages 3 to 7 of the Answer in connection with
the provisional double patenting rejection, namely claims 16—29, claim 16
was nonetheless amended after the Board’s decision in that case. See
13/801,157, Amd’t filed Aug. 21, 2017.
Under these circumstances, the provisional double patenting rejection
is not ripe for decision. Therefore, we decline to reach the provisional
rejection.
THE REJECTION OVER MITCHELL, MAA, AND GOULDEN
The Examiner finds that Mitchell discloses every recited element of
claim 16 except for displaying a user interface element representing a media
content provider, but cites Goulden for teaching this feature in concluding
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that the claim would have been obvious. Final Act. 4—7. Although the
Examiner finds that Mitchell inherently (1) transmits a command to cause
the appliance to provide media content, and (2) retrieves information from a
specified address responsive to sensed platform interaction, the Examiner
nonetheless cites Maa for teaching these features “in the event that the
Applicant disagrees with the inherency.” Final Act. 5—7.
Appellants argue that Mitchell does not inherently disclose the
claimed invention because, among other things, the set top box (STB)
determines the address from which information is received after (1) the
appliance accesses content, and (2) a user interface element is activated on a
remote control device. App. Br. 6—8. Although Appellants acknowledge
that Mitchell preloads Uniform Resource Locators (URLs), they are not
viewed until later in the television program (i.e., not until the program is
viewed). App. Br. 6—7. According to Appellants, the television must
already be tuned to a television program before the URLs are displayed for
activation. App. Br. 7. Although Appellants also acknowledge that a web
browser can automatically navigate to a website using pre-loaded URLs, this
automatic navigation is independent of user action and occurs only when
triggered by the STB via a trigger extracted from television signal that was
previously tuned to. App. Br. 7—8; Reply Br. 2—3. As such, Appellants
contend, Mitchell does not teach or suggest transmitting the two recited
commands responsive to sensed interaction with the user interface element
as claimed. Id.
Appellants add that Maa is likewise deficient in this regard because
Maa’s system would not map a URL to channel tuning interface element
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before activating the interface element such that the platform responds to
activating the interface element as claimed. App. Br. 9—11; Reply Br. 4—5.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Mitchell, Maa, and Goulden collectively would have taught or
suggested, responsive to a sensed interaction with a displayed user interface
element, causing a platform to transmit (1) a command to cause an appliance
to perform an operation to provide access to first media content via the
appliance, and (2) a command to cause retrieval of information related to
second media content from an address, where a mapping between the
address and the user interface element is stored in the platform’s memory
before the sensed interaction?
ANALYSIS
As noted above, the Examiner relies principally on Mitchell for
teaching the above-noted disputed clause of independent claim 1, including
the mapping limitation. See Final Act. 5—6. The Examiner, however, also
cites Maa for teaching claim 1 ’s disputed clause except for the mapping
limitation. See Final Act. 6—7. Therefore, Maa is essentially cumulative to
the teachings of Mitchell, at least with respect to the common elements of
claim 1 ’s disputed clause for which the references were cited.
On this record, we see no error in the Examiner’s reliance on Mitchell
for teaching the command transmissions recited in claim 1. When a user in
Mitchell interacts to change a channel via channel up or down commands,
entering specific channel numbers, or via an electronic program guide
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(EPG), a corresponding web site or other supplemental content is
automatically rendered. See Final Act. 5 (noting that Mitchell’s system
monitors the television channel to which the STB is tuned, correlates an
associated URL address, and automatically navigates to the associated web
site).
In Mitchell, after STB 102 receives URL addresses embedded in a
television signal, namely in its vertical blanking interval (VBI), the STB
then sends those URLs to a remote device 204 where they are processed to
enable accessing supplemental content via the Internet and displaying it on
remote display 220. Mitchell, Abstract; H 23, 58, 77; Fig. 2. As shown in
step 502 of Mitchell’s Figure 5, this process is triggered by the user
activating the remote device by, for example, pressing a designated button
232, 234 to place the remote device in a receive mode to receive the URL
addresses from the STB. Mitchell 175. Notably, control buttons 234 can
also include channel selection, thus at least suggesting that a channel
selection control button can also be used to activate the remote device. See
Mitchell 139 (“One of the control buttons 234 may also be used to set the
remote device 204 to the receive mode.”) (emphasis added).
Notably, Mitchell’s paragraph 61 adds that, responsive to user action,
such as a “click” or activation of a dedicated button (or other interface), the
user can navigate to supplementary content when an icon or prompt is
presented to the user on the remote display 220 to announce the
supplemental content’s availability. For instance, one or more display
buttons 232 can be used to “accept” a displayed URL address upon receipt
by the remote device 204, resulting in navigation to that address. Mitchell
161.
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Based on this functionality, Mitchell at least suggests that interacting
with a user interface element would not only cause the remote device to
request media associated with a particular channel, namely a television
program, but also information related to that program. In this scenario, the
STB would (1) receive a particular channel’s television signal with the
embedded URL; (2) transmit that television signal to the television; and (3)
transmit the URL to the remote device. See Mitchell, Abstract. Once the
remote device receives the URL, it will display supplemental content related
to the particular channel’s television program. See Mitchell 177; Fig. 5
(steps 512, 514). As noted above, this display can be responsive to the user
accepting displayed URL addresses via user interface interaction to navigate
to those addresses. See Mitchell 161.
This functionality, then, at least suggests that the recited commands
are transmitted from the platform responsive to sensed interaction with a
user interface element, not only by changing channels to provide access to
first media content (i.e., a television program), but also by accepting an
associated displayed URL address to retrieve information related to second,
web-based media content. As noted above, this interaction not only triggers
the extraction and transmission of that URL to the remote device so that
associated supplemental content is displayed at that device, but also
transmission of the associated command and address from the platform to
access that content. See Mitchell H 61, 77; Fig. 5 (steps 512, 514).
Therefore, we find Mitchell at least suggests transmitting the recited
commands from a platform responsive to sensed interaction with a user
interface element, where the user interface element can be displayed and
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represent a media content provider as suggested by Goulden. See Final Act.
6—7 (citing Goulden Fig. 6).
In addition, URLs and associated content can be pre-loaded in
Mitchell such that the browser first checks the local cache for supplemental
content in lieu of retrieving the content from the Internet. Mitchell 168. In
view of this caching, Mitchell at least suggests a mapping between the URL
address and the user interface element that is stored in the platform before
the sensed interaction with the user interface element that selects these URLs
to display the cached content. See Mitchell H 61, 68.
Appellants’ contention that Mitchell’s pre-loaded URLs are not
viewed until later in the television program (App. Br. 6—8) is unavailing.
Notably, this argument pertains to a particular optional feature of Mitchell’s
caching technique in light of Mitchell’s permissive language in this regard.
See Mitchell 171 (“The URL address provided up front can be accompanied
by instructions . . . not to display the URL address . . . until later in the
television program.”) (emphasis added). In any event, Mitchell’s pre-loaded
URLs and associated cached content at least suggests the recited stored
mapping as noted previously.
Therefore, because Mitchell and Goulden collectively at least suggest
all limitations of claim 1, we see no error in the Examiner’s rejection based
on those references. Although the Examiner’s reliance on Maa is technically
cumulative to Mitchell’s teachings with respect to claim 1 ’s disputed clause
as noted previously, we nonetheless see no harmful error in the Examiner’s
reliance on Maa for the limited purpose for which it was cited in the
rejection. See Final Act. 6—7.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—11 and 14—17 not argued separately with
particularity.2
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 12
and 13. Final Act. 11—12. Because this rejection is not argued separately
with particularity, we are not persuaded of error in this rejection for the
reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1—17 under § 103.
We do not reach the Examiner’s provisional double patenting
rejections.
DECISION
We affirm the Examiner’s decision to reject claims 1—17.
2 Despite claim 1 lacking antecedent basis for “the platform” and “the
appliance,” we leave to the Examiner to consider whether these
inconsistencies render the claim indefinite under § 112, second paragraph
after this opinion. Although the Board is authorized to reject claims under 37
C.F.R. § 41.50(b), no inference should be drawn when the Board elects not
to do so. See MPEP § 1213.02.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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