Ex Parte LIM et al

Patent Trial and Appeal Board

Jan 22, 2019

14527146 (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/527,146 10/29/2014
68103 7590 01/24/2019
Jefferson IP Law, LLP
1130 Connecticut Ave., NW, Suite 420
Washington, DC 20036
FIRST NAMED INVENTOR
Chae-Whan LIM
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.
0201-0417-5 2197
EXAMINER
CORBO, NICHOLAS T
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
usdocketing@jeffersonip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAE-WHAN LIM and HYUN-JUNG KIM
Appeal2018-005102
Application 14/527,146 1
Technology Center 2400
Before DAVID M. KOHUT, ERIC B. CHEN, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-12, and 14--24. Claims 4 and 13 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as "Samsung Electronics Co.,
Ltd." App. Br. 2.
Appeal2018-005102
Application 14/527, 146
STATEMENT OF THE CASE
The present invention is a media device that receives media and
command data from a wireless terminal ( e.g., cellphone), decodes the media
data in accordance with the command data, and outputs the decoded media
data to a connected display device ( e.g., television) for reproduction.
Spec. 2:20-30, 4:14--5:14, Fig. 1.
Claims 1, 11, 16, and 18 are independent. Claim 1 is illustrative
( disputed limitations in italics).
1. An apparatus comprising:
a transceiver configured to communicate with a first electronic
device; and
a control unit operatively coupled with the transceiver, the
control unit configured to:
receive, from the first electronic device via the transceiver,
information corresponding to a playback location of
multimedia data being presented at the first electronic
device, the multimedia data to be presented at a second
electronic device operatively coupled with the apparatus,
based at least in part on the information;
receive,from the first electronic device via the transceiver,
at least one portion of the multimedia data being presented
at the first electronic device; and
transmit, to the second electronic device based at least in
part on the information, the at least one portion of the
multimedia data.
App. Br. 11 (Claims App.).
2
Appeal2018-005102
Application 14/527, 146
THE REJECTIONS
Claims 1, 2, 5, 6, 8, 10-12, 14--16, 18, and 19--23 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Rakib (US 2002/0044225 Al;
Apr. 18, 2002), Palin (EP 1 180 903 Al; Feb. 20, 2002), and Bell
(WO 2004/032507 Al; April 15, 2004). Final Act. (May 3, 2017) 5-14.
Claims 3, 7, and 17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Rakib, Bell, Palin, and Lee (US 2002/0062313 Al;
May 23, 2002). Final Act. 14--15.
Claim 9 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Rakib, Bell, Palin, and Ciciora (US 5,815,297; Sept. 29, 1998).
Final Act. 16-17.
Claim 24 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Rakib, Bell, Palin, and Admitted Prior Art. Final Act. 17-18.
ISSUES
(1) Under§ I03(a), has the Examiner erred in proposing a
modification of Rakib's invention in view of Palin?
(2) Has the Examiner erred in finding that Palin teaches "receive,
from the first electronic device via the transceiver, at least one portion of the
multimedia data being presented as the first electronic device," as recited in
claim 1?
ANALYSIS
Reason to Combine
Appellants argue, and we are persuaded, that the Examiner presents an
insufficient rationale to modify Rakib' s invention in view of Palin. All
3
Appeal2018-005102
Application 14/527, 146
claims are rejected over this modification. We explain the Examiner's error
with reference to claim 1.
The apparatus of claim 1 includes a transceiver and control unit that
relay multimedia data from a first device to a second device. Specifically,
the transceiver relays multimedia data of the first device to the control unit,
which then relays the multimedia data to the second device.
The Examiner finds that the recited transceiver, control unit, first
device, and second device are taught by Rakib's transceiver (128), gateway
(112, 116, 118),2 remote control device (100) having a media display (herein
"remote"), 3 and television (128), 4 respectively. Final Act. 6-7; Ans. 3; see
also Rakib' s Fig. 7. The Examiner acknowledges that "Rakib in view of
Bell is unclear as to at least one portion of the multimedia data is received
from the first electronic device." Final Act. 8. The Examiner then finds
Palin teaches transmitting multimedia data from wireless terminal 20 to
2 The Examiner maps the claimed control unit to Rakib 's operating system
116 and CPU 118, which cannot alone teach the claimed control unit
because they 116, 118 do not actually receive the multimedia data. Rather,
116, 118 operate switch 112 which receives and then passes the data ( to the
remote 100, television 128, and/or a hard disk 114). We consequently
understand the rejection as mapping the claimed control unit to the switch
112, operating system 116, and CPU 118 (referenced herein as the
"gateway").
3 Rakib illustrates an optional media display 92 for only a remote control
device 70 of Figure 4. Rakib expressly states, however, such a display can
be incorporated into the remote control device 100 of Figure 3. See
Rakib if 77.
4 Rakib assigns the same reference numeral, 128, to the transceiver and
television. They are, however, plainly separate devices.
4
Appeal2018-005102
Application 14/527, 146
media device/TV receiver 30 over RF link 22 for output on a display. Id.
The Examiner concludes that
it would have been obvious to a person having ordinary skill in
the art to incorporate the known technique of outputting
multimedia data from a wireless terminal to be displayed on a
larger external display device of Palin with the known system of
Rakib in view of Bell in order to alleviate the problems that
visually impaired people experience watching the limited size of
the displays of mobile terminals by allowing users to enjoy
watching multiformatted images/video on a larger display.
Id. We do not agree with the Examiner's articulated rationale for the
combination.
Appellants argue that the record lacks a rational underpinning to
modify Rakib such that multimedia data is transmitted from Rakib 's remote
control device to Rakib's television. App. Br. 5; Reply Br. 2. Specifically,
Appellants contend:
[T]he gateway ... stores/processes the multimedia data that is
ultimately viewed on the TV 128 .... [I]t is unclear what would
motivate one of skill in the art to alter this configuration such that
the multimedia data is provided from the remote controller 100 [.]
There are certainly many reasons why one of skill in the art
would not be motivated to change this configuration[,] including
the need to dramatically increase the storage and processing
capabilities of the remote controller 100 if it were relied upon for
transmitting not only a control signal but also the multimedia
data that was to be viewed by the TV.
App. Br. 5. We agree with Appellants inasmuch as the Examiner's findings
lack a sufficient explanation for why a person of ordinary skill in the art
would modify Rakib. The Examiner's stated reason-to display multimedia
content "on a larger external display device of Palin ... in order to alleviate
5
Appeal2018-005102
Application 14/527, 146
the problems that visually impaired people experience"- is already
addressed in Rakib, which discloses television 128 on which can be shown
any content that the user can view on remote control device 100 (i.e., content
delivered from gateway 102). Reply Br. 2. Users could "enjoy watching
multiformatted images/video on a larger display" (Final Act. 8) in Rakib
without modifying Rakib at all, much less in view of Palin such that
multimedia data is routed through Rakib's remote control device on its way
to the larger display. We are, therefore, persuaded by Appellants' argument
that the record lacks a rational underpinning to modify Rakib in view of
Palin.
Reliance on Palin
Appellants argue, and we are persuaded, that the Examiner also erred
in finding Palin teaches "receiv[ing], from the first electronic device via the
transceiver, at least one portion of the multimedia data being presented at the
first electronic device," as recited in claim 1. Independent claims 11, 16,
and 18 recite commensurate limitations.
Claim 1 specifies that "at least one portion of the multimedia data [is]
presented at the first electronic device" and the relay "transmit[ s ], to the
second electronic device ... the at least one portion of the multimedia data."
Thus, at least a portion of multimedia data is both presented at the first
device and transmitted to the second device.
The Examiner finds Palin's relay of video/audio data from mobile
terminal 20 to external display device 30 teaches at least one portion of
multimedia data is received from the first electronic device. Final Act. 8.
6
Appeal2018-005102
Application 14/527, 146
The Examiner acknowledges that Palin's data "presented" at mobile terminal
20 (i.e., "mobile terminal part 54" of data frames 50, 52) is not the same data
relayed to external display device 30, which receives only "external display
device part 56" of data frames 50, 52 (Ans. 4; see also Palin ,r 23), but finds
that "the broad terminology of the claims" does not require that "the
identical frame or picture that is being shown on the display on the mobile
terminal is to be displayed on the [ external display device] simultaneously"
(id. at 5). The Examiner finds that the limitation is met by Palin's teaching
that "basic information about the current weather in Helsinki ... can be
displayed on the display of the mobile [] terminal 20 and pictorial data may
be forwarded to the external display device, such as a television receiver, for
better viewing." Ans. 5 (citing Palin ,r 35).
Appellants argue that the example in paragraph 35 "is simply an
example of the distinctions discussed above," i.e., between mobile phone
part 54 that is presented only on mobile terminal 20 and external display
device part 56 that is presented only on external display device 30. Reply
Br. 3.
We agree with Appellants' argument. The Examiner has not shown
that Palin teaches that the data received from the first electronic device is at
least a portion of "the multimedia data being presented at the first electronic
device." Palin teaches that the data "being presented at" the first electronic
device is only mobile terminal part 54, whereas the multimedia data being
"received" from the first electronic device is only external display device
part 56. The data being "received" from the first electronic device,
therefore, is not "the multimedia data being presented at the first electronic
7
Appeal2018-005102
Application 14/527, 146
device," but is instead data from a separate part of data frames 50, 52.
Paragraph 35 of Palin, as Appellants correctly note, merely describes an
embodiment in which the data in mobile terminal part 54 conveys "basic
information about the current weather in Helsinki" whereas the data in
external device display part 56 conveys "pictorial data" such as "a live or
satellite picture of Helsinki, a weather map, or a detailed graphical
illustration of the weather forecast for Helsinki city." Palin ,r 35.
Conclusion
For the reasons given above, we do not sustain the rejections of
claims 1-3, 5-12, and 14--24.
DECISION
The Examiner's decision rejecting claims 1-3, 5-12, and 14--24 is
reversed.
REVERSED
8