Ex Parte Stahl et al

Patent Trials and Appeals Board

Feb 15, 2019

13699310 - (D) (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/699,310 01/30/2013 Thomas Anthony Stahl
24498 7590 02/20/2019
Vincent E. Duffy
THOMSON Licensing
19868 Collins Road
CANYON COUNTRY, CA 91351
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.
PU100128 3445
EXAMINER
CASTRO, ALFONSO
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
mike.pugel@eurekovation.com
vincent.duffy@technicolor.com
Patricia. Verlangieri@InterDigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ANTHONY STAHL, DARREL WAYNE RANDALL,
and AARON MICHAEL SMITH 1
Appeal2017-003328
Application 13/699,310
Technology Center 2400
Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
JAMES DEJMEK, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-25. Claims 26-37 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Thomas Licensing,
France. See Appeal Br. 3.
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Application 13/699,310
Invention
Embodiments of Appellants' claimed invention on appeal relate to:
[A] system and method for providing wireless broadcast and/ or
locally stored entertainment services on a people transporter,
such as an airplane, a bus, or a train, and more particularly to a
system and method for providing program guide according to
whether the people transporter is within or without an area
authorized to receive wireless broadcast and whether the user
desires display of channels from the wireless broadcast in the
program guide. Spec. 1.
Representative Claim
1. A method for use in a mobile content distribution
system, said system having content stored locally and capable of
receiving content wirelessly from a wireless service provider,
compnsmg:
determining if said system is within an area authorized to
receive content from a first wireless service provider;
if said system is not within said authorized area, enabling
display of a program guide including channels from said locally
stored content but no channel from said first wireless service
provider, wherein the locally stored content is stored on a people
transporter, and selectable to be watched using the program
guide; and
if said mobile system is within an area authorized to
receive content from said first wireless service provider, the
method further comprising:
[L 1] determining if a user signal has been received for
receiving live wireless program guide information from said first
wireless service provider; and
[L2] if said user signal has been received, acquiring said
live wireless program guide information and enabling display of
said program guide including channels from said locally stored
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content and channels from said first wireless service provider
included in said live wireless program guide information.
(Emphasis added regarding the contested limitations LI and L2).
Rejection
Claims 1-25 are rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Sklar et al. (US
5,801,751, issued Sept. 1, 1998, hereinafter referred to as "Sklar"), in view
of Hammond (US 2002/ 0152470 Al, published Oct. 17, 2002).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We have reviewed Appellants' arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's responses to
Appellants' arguments. Appellants do not proffer sufficient argument or
evidence to persuade us of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). For at least the reasons
discussed below, we agree with and adopt the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness, as set forth in the
Final Action and Answer. In our analysis below, we highlight and address
specific findings and arguments for emphasis.
GROUPING OF CLAIMS
Based upon Appellants' arguments (App. Br. 7-9), and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of the single
obviousness rejection of claims 1-25 on the basis of representative claim 1.
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Contested Limitations LI and L2 of Independent Claim 1
Appellants contest the Examiner's findings regarding the following
limitations L 1 and L2 of independent claim 1:
[L 1] determining if a user signal has been received for
receiving live wireless program guide information from said first
wireless service provider; and
[L2] if said user signal has been received, acquiring said
live wireless program guide information and enabling display of
said program guide including channels from said locally stored
content and channels from said first wireless service provider
included in said live wireless program guide information.
Claim 1 (emphasis added). See Appeal Br. 7-9.
At the outset, we note the above contested steps or acts are recited in
similar form having commensurate scope in remaining independent system
claim 14.
Appellants understand the Examiner does not rely on Sklar to disclose
contested limitations L 1 and L2 of claim 1. See Appeal Br. 7-9. Thus,
Appellants generally focus their arguments on the Examiner's findings
(Final Act. 6-7), regarding Hammond, paragraphs 44--48, 62, and 63, as
allegedly disclosing the contested limitations. See Appeal Br. 7-9; Reply
Br. 2-7.
Appellants also contend Hammond "teaches away" from the claimed
invention "by disclosing a program guide which only provides the display
and selection of recorded (i.e., locally stored) programs, and does not
provide the display and selection of any live programs, contrary to the
present claimed invention." Appeal Br. 7. Appellants urge that "Hammond
teaches a system which records all of the programs that the system has
received." Id. (emphasis added).
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In support, Appellants contend:
The system in Hammond merely makes a program selection
from two locally recorded sources, a "RECORD PROGRAM"
storage medium 77 or the other "RECORD PROGRM"
storage medium 83, as shown in Fig. 6A and Fig. 6B, and
clearly described in [0062] and [0063] of Hammond. First,
Hammond clearly states in [0063] that "recorded programs 83
may also be selected at the mixer for display on the screen 82",
as shown in Fig. 6B. Also as shown in Fig. 6B, the mixer 81 of
Hammond also selects programs from "D" which are in fact
from another "RECORD PROGRAM" storage medium 77
shown in FIG. 6A. Accordingly, again, Hammond's system
and therefore its EPG are related only to programs which are all
already locally recorded or stored, contrary to the present
claimed invention.
Appeal Br. 7-8.
Appellants thus submit the proposed combination of Sklar and
Hammond does not disclose or suggest at least limitations L 1 and L2 of
claim 1. App. Br. 8. Appellants further contend the Examiner has not
established any probability or expectation of success in combining the cited
references to arrive at the claimed invention. App. Br. 9.
In response, the Examiner further explains the basis for the rejection:
[T]he Appellants appear to stipulate that Hammond discloses a
program guide which provides the display and selection of
recorded (i.e., locally stored) programs. By the same token, the
Appellants argue that Hammond does not provide the display
and selection of any live programs. The Examiner agrees with
the Appellant that Hammond does teach a program guide which
provides for display and selection of recorded (i.e., locally
stored) programs but the Examiner disagrees that Hammond
does not provide the display and selection of any live programs.
Ans. 5 (emphasis added).
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Claim Construction 2
As an initial matter of claim construction, we conclude there is no
language in claim 1 that precludes the wireless service provider electronic
2 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec. 7, 11. 4--10: "all
statements herein reciting principles, aspects, and implementations of the
present principles, as well as specific examples thereof, are intended to
encompass both structural and functional equivalents thereof. Additionally,
it is intended that such equivalents include both currently known equivalents
as well as equivalents developed in the future (i.e., any elements
developed that perform the same function, regardless of structure)."
(Emphasis added).
We direct the Examiner's attention in the event of further prosecution
of this application to In re Fuetterer (319 F.2d 259, 263 (CCPA 1963)),
wherein the Court of Customs and Patent Appeals explained:
In the Fullam case [In re Fullam, 161 F.2d 247, 73 USPQ 399
(CCPA 1947)], this court stated that some claims were properly
rejected as "functional in claiming merely the desired result
well known to and sought after by workers skilled in the art."
Claims directed merely to a "desired result" have long been
considered objectionable primarily because they cover any
means which anyone may ever discover of producing the result.
See, e.g., O'Reilly v. Morse, 15 How. 62; Heidbrink v.
McKesson, 290 F. 665. (Emphasis in original.)
See also 3 7 C.F .R. § 1. 79 - Reservation clauses not permitted ("A
reservation for a future application of subject matter disclosed but not
claimed in a pending application will not be permitted in the pending
application, but an application disclosing unclaimed subject matter may
contain a reference to a later filed application of the same applicant or
owned by a common assignee disclosing and claiming that subject matter.").
See also MPEP § 608.0l(e) ("Reservation Clauses Not Permitted [R-
08.2012]").
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program guide (EPG) and associated program content information from
being stored along with previously stored local content for later delayed use.
Rather, claim 1 merely conditionally restricts a channel of "said first
wireless service provider" from being displayed in the program guide with
the included channels of "said locally stored content" when "said system is
not within said authorized area." (Emphasis added). Moreover, claim 1 is
silent regarding any details of an extrinsic authorized area agreement with a
wireless service provider, or other regulatory restriction, that would preclude
time-shifted display of program content ( as opposed to merely restricting
EPG content when the system "is not within said authorized area," as
claimed). Claim 1. 3
Turning to the evidence cited by the Examiner, we find at least
Hammond teaches or suggests the contested "determining" limitation L 1,
which occurs subsequent to the step of acquiring an in-service satellite
(block 71 ) (para. 61 ), whereupon "the satellite EPG (Electronic Program
Guide) is downloaded from the satellite (block 73 ). " Hammond ,r 62.
Regarding Appellants' "teaching away" argument, our reviewing
court guides:
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
3 Cf Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417,
456 (1984) (holding that time shifting of TV program content falls under the
fair use doctrine - "One may search the Copyright Act in vain for any sign
that the elected representatives of the millions of people who watch
television every day have made it unlawful to copy a program for later
viewing at home, or have enacted a flat prohibition against the sale of
machines that make such copying possible.").
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the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) ( citations omitted).
However, a "finding that the prior art as a whole suggests the desirability of
a particular combination need not be supported by a finding that the prior art
suggests that the combination claimed by the patent applicant is the
preferred, or most desirable, combination." In re Fulton, 391 F.3d 1195,
1200 (Fed. Cir. 2004). Teaching an alternative or equivalent method,
however, does not teach away from the use of a claimed method. In re
Dunn, 349 F.2d 433,438 (CCPA 1965). See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference
does not teach away [ ... ] if it merely expresses a general preference for an
alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed.").
Here, because both Hammond and Sklar pertain to in-flight satellite
TV reception, we find they are in the same field of endeavor and therefore
are analogous art to the claimed invention. See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). Specifically, we find Appellants' "teaching away"
argument unavailing, because we find nothing in Hammond or Sklar that
criticizes, discredits, or otherwise discourages the invention claimed.
In response to Appellants' contention that "Hammond is addressing a
different problem than the present claimed invention" (Reply Br. 4), our
reviewing court guides it is irrelevant that the prior art and the present
invention may have different purposes. See Nat 'l Steel Car, Ltd. v.
Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding
that two inventions were designed to resolve different problems ... is
insufficient to demonstrate that one invention teaches away from another.").
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It is sufficient that references suggest doing what Appellants did, although
the Appellants' particular purpose was different from that of the references.
In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372
F.2d 535, 539 (CCPA 1967)). For a prima facie case of obviousness to be
established, the reference need not recognize the same problem solved by
the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). The
Supreme Court provides further guidance: "[N]either the particular
motivation nor the avowed purpose of the [Appellants] controls" when
performing an obviousness analysis. KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007).
In reviewing the record, we find Appellants are arguing the references
separately. Appellants essentially attack Hammond in isolation, and do not
substantively traverse the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness, which is based upon Sklar in
combination with Hammond. 4
Turning to the evidence cited by the Examiner (Ans. 9, footnote 14),
Sklar expressly describes both real time TV satellite reception on an aircraft,
and also delayed reception that has been stored for use when the aircraft is
out of range of any satellite provider:
An example of the operation of the present invention is a
flight leaving the West coast of the United States, heading
4 Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
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East and flying over the Atlantic Ocean to Europe. The
aircraft would be within the coverage area of the DBS
satellites for five or more hours, during which time the
digitized television data would be received and stored on
board the aircraft. This data includes programming for each
of the approximately 150 channels transmitted by the satellites
18. During this phase of the flight, the passengers have real-
time access to these programs. After leaving the East coast, the
stored television data would be presented to the passengers.
Thus, for the remainder of the flight, when the aircraft is out of
range of the satellites 18, the passengers still have access to
television programming, although it is a time delayed version.
Sklar col. 5, 11. 53-67 ( emphasis added).
Moreover, to the extent that Hammond stores or buffers EPG or TV
content received when the aircraft (i.e., "people transporter") is within a
particular content provider's satellite coverage area (see Fig. 6A, record
storage 77; ,r 62), we find extending Hammond's capabilities to include real
time TV reception on an aircraft, as expressly taught by Sklar ( column 5,
lines 53---67), would have merely been the predictable use of prior art
elements according to their established functions-an obvious improvement.
See KSR, 550 U.S. at 417; see also id. ("[I]f 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.").
Thus, we agree with the Examiner that claim 1, limitation L2, would
have been a predictable result that also would have been obvious to try. See
Ans. 5. Even without experimentation, simple logic suggests there are only
three possibilities: (1) enabling the EPG display of local channels from
locally stored content, or (2) enabling the EPG display of the received live
(real time satellite) programming guide, or (3) enabling both, as recited in
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limitation L2. We find it self-evident that the live wireless programming
guide (and associated live satellite TV content) will not be available for
viewing, unless: (1) the system is within the authorized wireless coverage
area, or, (2), the wireless EPG and associated TV content have been
previously locally stored.
Thus, there are a finite number of identified, predictable solutions to
suggest that Appellants' claimed method and system would have been
obvious. Appellants have not proffered any evidence properly entered into
the record proving that skilled artisans would not have reasonably expected
success if the teachings of the Sklar and Hammond references were so
combined. Our reviewing court guides: "[ o ]bviousness does not require
absolute predictability of success ... all that is required is a reasonable
expectation of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(citing In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988)).
Nor is there any evidence of record indicating that a person of
ordinary skill would have needed to "vary all parameters or try each of
numerous possible choices," or "explore a new technology or general
approach ... where the prior art gave only general guidance as to the
particular form of the claimed invention or how to achieve it," which would
counsel against an invention being obvious to try. Kubin, 561 F.3d at 1359
(quoting In re O'Farrell, 853 F.2d 894,903 (Fed. Cir. 1988)).
We therefore find the Examiner's reason to combine the teachings of
Sklar and Hammond is supported by articulated reasoning with sufficient
rational underpinning to justify the Examiner's legal conclusion of
obviousness.
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We again emphasize that the Examiner's ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, "'the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made."' Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also
MPEP § 2123.
This reasoning is applicable here. However, in the event that our
reviewing court would disagree, we further emphasize the conditional
language recited in claim 1: (in bold)
if said user signal has been received, acquiring said live
wireless program guide information and enabling display of
said program guide including channels from said locally stored
content and channels from said first wireless service provider
included in said live wireless program guide information.
Claim 1 ( emphasis added).
See Ex parte Schulhauser, Appeal No. 2013-007847, at *9 (PTAB,
April 28, 2016) (precedential) (holding
The Examiner did not need to present evidence of the
obviousness of the remaining method steps of claim 1 that are
not required to be performed under a broadest reasonable
interpretation of the claim (e.g., instances in which the
electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the
determining step and the remaining steps of claim 1 has not been
met.);
see also Ex parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4--5
(BPAI Jan. 27, 2011).
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Here, we apply the controlling guidance of Schulhauser, and
additionally find the Examiner need not present evidence of the obviousness
of the conditional method step ("if said user signal has been received"), as
recited in claim 1, because this conditional step is not positively recited as
being actually performed under a broadest reasonable interpretation of the
claim. 5
Even assuming, arguendo, that the recited condition precedent is
actually reached, in considering representative independent claim 1 as a
whole, we further conclude that Appellants' claimed "program guide" (and
any associated program content) is non-functional descriptive material
(NFDM) intended for human viewing. Although an interactive program
guide graphical user interface might generally be otherwise construed as
functional, such functional interactivity with the program guide is not recited
in claim 1.
The rvfanual of Patent Examining Procedure (MPEP) provides
applicable guidance: "where the claim as a whole is directed to conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists." MPEP
5 See, also e.g., Applera Corp. v. Illumina, Inc., 375 F. App'x 12, 21 (Fed.
Cir. 2010) (unpublished) (affirming a district court's interpretation of a
method claim as including a step that need not be practiced if the condition
for practicing the step is not met); Cybersettle, Inc. v. Nat 'l Arbitration
Forum, Inc., 243 F. App'x 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.").
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§ 2111.05 (III.) (9th Ed., Rev. 08.2017, Last Revised Jan. 2018). See also
Ex parte Nehls, 88 USPQ2d 1883, 1889 (BP AI 2008) (precedential) ("[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.").
Therefore, in applying the procedural guidance of the MPEP, and the
controlling guidance of Nehls, we broadly but reasonably construe the
recited displayed "program guide" (and any associated program content) as
non-functional descriptive material merely intended for human perception.
For at least the aforementioned reasons, and on this record, we are not
persuaded of error regarding the Examiner's factual findings for contested
limitations L 1 and L2 of representative independent claim 1. On this record,
we find a preponderance of the evidence supports the Examiner's underlying
factual findings and ultimate legal conclusion of obviousness for
representative independent claim 1. Claims 2-25 (not argued separately) fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Accordingly, we sustain the
Examiner's rejection under pre-AIA 35 U.S.C. § 103(a) of claims 1-25.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
In particular, Appellants' have not shown good cause why we should
consider Appellants' new arguments (Reply Br. 6) and untimely new
evidence (i.e., two Comcast screen shots), which were introduced into the
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record for the first time in the Reply Brief (7). See 3 7 C.F .R. § 41.41 (b )( 1)
("A reply brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other Evidence.").
CONCLUSION
The Examiner did not err in rejecting claims 1-25 under pre-AIA
35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1-25 under
35 U.S.C. § 103(a).
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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