Ex Parte Sugahara

Patent Trial and Appeal Board

Jul 26, 2016

12188780 (P.T.A.B. Jul. 26, 2016)

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;
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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
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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.
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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.
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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).
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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).
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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
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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.
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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
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