Ex Parte SugaharaDownload PDFPatent Trial and Appeal BoardJul 26, 201612188780 (P.T.A.B. Jul. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/188,780 08/08/2008 27683 7590 07/28/2016 HA YNES AND BOONE, LLP IP Section 2323 Victory A venue Suite 700 Dallas, TX 75219 FIRST NAMED INVENTOR Kaytaro George Sugahara 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. 44436.3 5648 EXAMINER NGUYEN,ANV ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 07/28/2016 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): ipdocketing@haynesboone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KA YTARO GEORGE SUGAHARA Appeal2015-002198 Application 12/188,780 Technology Center 2400 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-002198 Application 12/188,780 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-34. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. A. INVENTION According to Appellant, the claimed invention "generally relates to interactive live and pre-recorded broadcasts over computers and televisions, and more specifically relates to a method of providing additional information concerning the substance of a broadcast to a viewer on demand". Spec. i12. B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A method for providing information to a viewer of a digital broadcast, the method comprising the steps of: transmitting the digital broadcast of an event wherein the digital broadcast comprises an audio digital component, a video digital component, and an information interface in a digital data stream, and wherein the information interface includes a plurality of keywords that are generated based on the content of the digital broadcast; providing the digital broadcast for display on a first video display of a device; rece1vmg a user activation input for the information interface; 2 Appeal2015-002198 Application 12/188,780 providing the information interface for display on a second video display of the device, wherein the information interface is operable to display the plurality of keywords; receiving a user request input for information from the information interface, wherein the user request input for information includes a selection of at least one of the plurality of keywords; receiving the user request input for information to a broadcaster; receiving a user selection input of a desired format in which an information component is to be presented; and providing the information component for display on one of the video displays in response to and in accordance with the user request input for information and the user selection input of the desired format, wherein the information component includes information retrieved using the at least one of the plurality of keywords that is included in the user request input and that was generated based on the content of the digital broadcast. C. REJECTIONS The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal: Lowe et al. ("Lowe") us 5,462,275 Oct. 31, 1995 Allport us 6,104,334 Aug. 15, 2000 Joao US 2002/0108125 Al Aug. 8,2002 Ellis et al. ("Ellis") US 2004/0117831 Al June 17, 2004 Egan et al. ("Egan") US 2005/0036359 Al Feb. 17,2005 Sull et al. ("Sull") US 2005/0204385 Al Sept. 15, 2005 Abrams US 2006/0104600 Al May 18, 2006 Cain US 2006/0291506 Al Dec. 28, 2006 Dorai et al. ("Dorai") US 2007 /0055695 Al Mar. 8, 2007 Chis aka US 2007 /0061299 Al Mar. 15, 2007 3 Appeal2015-002198 Application 12/188,780 Kitagawa Wu et al. ("Wu") Kraus US 2008/0016529 Al Jan. 17, 2008 US 2008/0098450 Al Apr. 24, 2008 US 2008/0147558 Al June 19, 2008 Claims 1, 2, 7, 8, 10, and 31-34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, and Kitagawa. Claims 3-5 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, and Egan. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, Egan, and Cain. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, and Cain. Claims 12, 13, and 19-29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, and Ellis. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, Abrams, and Lowe. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, and Sull. 4 Appeal2015-002198 Application 12/188,780 Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, and Dorai. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, Dorai, and Kraus. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Joao, Chisaka, Kitagawa, Ellis, and Allport. II. ISSUE The principal issue before us is whether the Examiner erred in finding the combination of Wu, Joao, Chisaka, and Kitagawa teaches or would have suggested the disputed limitation "wherein the information interface includes a plurality of keywords that are generated based on the content of the digital broadcast;" and "wherein the information component includes information retrieved using the at least one of the plurality of keywords that is included in the user request input and that was generated based on the content of the digital broadcast." (Claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Wu 1. Wu teaches digital broadcast on two devices. i-f 46. 5 Appeal2015-002198 Application 12/188,780 Chis aka 2. Chisaka teaches displaying keywords extracted from program information, where the user selects a keyword from a keyword list. i-fi-1 21, 43. Kitagawa 3. Kitagawa discloses the content-related information search and acquisition section 14 receives title information created from the digital broadcast, including the title of the viewer-selected content and the keywords regarding the content. i1 77. 4. The digital broadcast receiving terminal 2 automatically searches for and acquires content-related information. If the digital broadcast receiving terminal 2 does not automatically search and acquire the content- related information, the viewer would access a relevant website and input keywords regarding the desired content for search purposes. i172. Joao 5. Joao discloses the viewer can view and respond to the desired program, event, game, etc. i-f 172. Joao's central broadcasting system provides the viewer with the requested program, event, etc., in the requested form or format. i-f 162. IV. ANALYSIS Appellant contends "Kitagawa does not teach transmission of keywords from broadcaster" (App. Br. 11 ). Appellant also contends "Kitagawa does not teach displaying keywords to a viewer" (App. Br. 12). Appellant moreover contends "The combination of Chisaka and Kitagawa is improper" because "Kitagawa also teaches against the use of user-selectable keywords." (App. Br. 13). 6 Appeal2015-002198 Application 12/188,780 We note Appellant's argument that "Kitagawa does not teach transmission of keywords from broadcaster" (App. Br. 11) is not commensurate with the scope of the claim. In particular, claim 1 does not recite keywords which are transmitted "from [a] broadcaster." Instead, the disputed limitation of claim 1 recites "keywords ... generated based on the content of the digital broadcast," which has a broader scope and does not necessarily limit the keywords generated to be directly transmitted from a broadcaster. Given the support found in the Specification (i-f 51 ), and on this record, we are not persuaded the Examiner's broader reading is overly broad or unreasonable. (Ans. 2-3) 1 2 We also note Appellant is arguing the references separately as the Examiner relies on Wu, not Kitagawa, for teaching claim term "digital broadcast." (Final Act. 2, FF 1 ). We further note the Examiner relies on Joao, Chisaka, and Wu, not Kitagawa, for teaching the claim limitations containing claim term "display." (Ans. 5; Final Act. 3---6). More specifically, the Examiner relies on Joao, not Kitagawa, for teaching or suggesting claim 1 's limitation "providing the information component for 1 See Spec. i-f 51, describing an embodiment where the keywords are automatically generated based on the content, at the site of the video display: "The keywords may be selected and transmitted by the broadcaster based on the content or automatically generated based on the content, as in step 63 0. In the case of automatic selection, such keywords may be generated at the site of the video display (such as by the set top box) or generated at the studio and transmitted with the audio and video components of the signal. (emphasis added). 2 Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 7 Appeal2015-002198 Application 12/188,780 display on one of the video displays." (Final Act. 4--5, FF 5). Furthermore, the Examiner relies on Chisaka, not Kitagawa, for teaching or suggesting claim limitation "wherein the information interface is operable to display the plurality of keywords." (Final Act. 6, FF 2). Similarly, the Examiner relies on Wu, not Kitagawa, for teaching or suggesting claim limitation "providing the digital broadcast for display on a first video display of a device." (Final Act. 3, FF 1 ). We are also unpersuaded by Appellant's improper combination and "teaching away" arguments concerning Kitagawa, because we do not find Kitagawa teaches against the use of user-selectable keywords. We agree with the Examiner's finding an artisan would have been motivated to combine the teachings of Kitagawa with Wu, Joao, and Chisaka to allow a user to select the content-related information item of interest quickly and conveniently. (Final Act. 7). reviewln particular; we find that; although Kitagawa teaches automatically searching for content-related information (FF 3--4), such teaching does not preclude user selection of keywords. In fact, Kitagawa discloses that if there is no automatic search, the user would input/select the keywords. Id. 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 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 reference does not teach away if it merely expresses a general preference for an alternative invention from 8 Appeal2015-002198 Application 12/188,780 amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed." In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). When combining references to establish obviousness, the appropriate consideration is whether the proposed combination would work for its intended purpose, not whether the combination is inconsistent with the stated goal of one of the references, as Appellant argues. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009). Here, Kitagawa's mere expression of a general preference for automatic searching over user-input searching does not constitute a teaching away from the alternative because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. See Fulton, 391 F.3d at 1201. Based on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1. As Appellant has not provided separate arguments with respect to independent claim 31, or dependent claims 2, 7, 8, 10, and 32-34, rejected on the same basis as claim 1, we similarly sustain the Examiner's rejection of these claims under 35 U.S.C. § 103(a). We also sustain not separately argued claims 3---6, 9, and 11-30. 9 Appeal2015-002198 Application 12/188,780 CONCLUSION The Examiner did not err with respect to obviousness rejections of claims 1-34 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1-34. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation