SATURN LICENSING LLC

Patent Trials and Appeals Board

Mar 9, 2020

14342917 - (D) (P.T.A.B. Mar. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/342,917 03/05/2014 Jun Kitahara 429764US 8200
22850 7590 03/09/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PENG, HSIUNGFEI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN KITAHARA and NAOHISA KITAZATO
Appeal 2018-006914
Application 14/342,917
Technology Center 2400

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–7. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). Oral argument was held on February
25, 2020. A copy of the transcript will be added to the record in due course.
We AFFIRM.

1 We refer to the Specification, filed March 5, 2014 (“Spec.”); Final Office
Action, mailed August 30, 2017 (“Final Act.”); Appeal Brief, filed January
30, 2018 (“Appeal Br.”); Examiner’s Answer, mailed April 19, 2018
(“Ans.”); and Reply Brief, filed June 19, 2018 (Reply Br.).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the assignee, Saturn
Licensing LLC. Appeal Br. 3.
Appeal 2018-006914
Application 14/342,917
2
CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to:
In an information processing system capable of controlling an
application related to a broadcast content by an AIT
[(Application Information Table), a] “SUSPEND” [control code]
is newly added to a set of application control codes of an ETSI
[(European Telecommunications Standards Institute)] standard.
By executing “SUSPEND”, a new function of setting an
application from an executed state to a pause state can be added.
As a result, control involving storing a processing result up to an
application end point and resuming processing while taking over
the past processing result when the application is activated next
time can be realized.
Abstract.
Claim 1, reproduced below with element labels added in brackets, is
illustrative of the claimed subject matter:
1. An information processing apparatus, comprising:
circuitry configured to
[(i)] receive and process a broadcast content to be
reproduced:
[(ii)] acquire an application information table with which
suspend information can be set as control information for
controlling a first application related to the broadcast content set,
when the application information table including the suspend
information is acquired, the first application being executed to a
pause state based on the suspend control information;
[(iii)] acquire a new application information table in which
information is set to start a second application;
[(iv)] determine from the new application table whether
the first application is to be paused, ended, or run concurrently
with the second application;
[(v)] set the first application to be paused, ended, or run
concurrently with the second application in accordance with the
new application information table; and
Appeal 2018-006914
Application 14/342,917
3
[(vi)] run the first application concurrently with the second
application when the first application is set to be run concurrently
with the second application,
[(vii)] wherein running the first application and the
running second application are distinct from reproduction of the
broadcast content.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Menand et al. US 5,563,648 Oct. 8, 1996
Wilcox et al. US 2003/0028885 A1 Feb. 6, 2003
REJECTION
Claims 1–7 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Menand in view of Wilcox. Final Act. 2–7.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
We select claim 1 as the representative claim for the rejection.
Appellant does not argue separate patentability for claims 2–7. Except for
our ultimate decision, we do not address the § 103(a) rejection of claims 2–7
further herein.
Having reviewed the Appellant’s arguments regarding this § 103(a)
rejection, we are not persuaded the Examiner erred. We agree with and
adopt the Examiner’s findings and reasoning in the Final Office Action and
the Answer as our own and add any additional findings of fact appearing
below for emphasis.
Appeal 2018-006914
Application 14/342,917
4
ANALYSIS
The Examiner finds Menand’s audio video interactive (AVI) receiver
teaches circuitry performing the steps of elements (i) through (v) of claim 1,
i.e., all steps except that the reference is not explicit that the first and second
applications run concurrently and distinct from reproduction of the broadcast
content as recited by claim elements (vi) and (vii). Final Act. 3–4. To cure
the noted deficiency of Menand, the Examiner applies Wilcox’s disclosure
of a navigational user interface for interactive television. Id. at 4.
According to the Examiner:
In an analogous art, Wilcox discloses a resident
application (the first application) may be set to initiate another
application such as pizza ordering application (the second
application) and run concurrently with the second application on
the client terminal, wherein running the first application and the
running second application are distinct from reproduction of the
broadcast content (e.g., see Para 174; the resident application as
described in Para 173 and pizza order application are distinct
from reproduction of the broadcast content).
Id. The Examiner determines it would have been obvious to modify
Menand’s system to include concurrently running first and second
applications as disclosed by Wilcox “to eliminate the need to exit from the
active state, thus reduce the processing overhead when reactivated.” Id.
Appellant’s first contention of error is that:
[W]hile the portions of Menand et al. cited for that teaching
describe minimizing or suspending an application, they are silent
with regard to running it concurrently with a second application.
Therefore, insofar as the rejection depends on that alleged
teaching of Menand et al., it does not make out even a prima facie
case of obviousness.
Appeal 2018-006914
Application 14/342,917
5
Appeal Br. 11 (emphasis added). The Examiner responds, explaining
claim 1 recites the argued concurrent running functionality, alleged as
missing from Menand, in the alternative to other qualifying functions
including pausing, which is taught by Menand. Ans. 7. “Menand discloses
at least one of the limitations which, in this case, is setting the first
application to be paused.” Id.
Appellant’s first contention is unpersuasive for the reason explained
by the Examiner. Id. The Examiner applies Wilcox, not Menand as argued,
for teaching concurrent running limitation (vi). In particular, Appellant’s
argument fails to address the Examiner’s finding that (i) Menand teaches one
of the three claimed functions recited in the alternative,3 i.e., to set the first
application to be paused (Final Act. 3–4, citing Menand col. 12, l. 62 – col.
13, l. 2)4 and (ii) Wilcox’s resident application running together with a pizza
ordering application teaches the disputed first and second applications are
run concurrently (Final Act. 4, citing Wilcox ¶¶ 173–174).5 Thus,
Appellant’s argument is an improper attack on the references individually
where the rejection is based on the combination of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellant next contends the combination is improper because the
result would render Wilcox’s user interface unsatisfactory for its intended

3 “[D]etermine from the new application table whether the first application is
to be [1] paused, [2] ended, or [3] run concurrently with the second
application.” Claim 1, element (iv).
4 “Each [special signal] packet contains data directing that the currently
executing AVI program is to suspend execution.” Menand col. 12, ll. 59–61.
5 “Once executed, both the resident application and the pizza application run
concurrently on the client terminal 9.” Wilcox ¶ 174.
Appeal 2018-006914
Application 14/342,917
6
purpose or would have changed it principle of operation. Appeal Br. 12–13.
According to Appellant, combining Menand’s pause function with Wilcox’s
interface would result in inconsistent, unpredictable behavior by pausing or
ending functionality provided by the resident application. Id. The Examiner
responds, explaining Wilcox is relied upon for teaching running applications
concurrently, not for pausing or ending an application. Ans. 8. The
Examiner further disagrees with Appellant’s premise that Wilcox’s resident
application cannot be paused. Id. at 9.
Appellant’s contention is unpersuasive. As noted by the Examiner,
Wilcox is relied upon for running applications concurrently. It is Menand
that is to be modified by incorporating Wilcox’s concurrent running of
applications, not Wilcox to incorporate Menand’s pause feature. Final Act.
4. Thus, Appellant’s argument does not address the combination made by
the Examiner.
Furthermore, Appellant’s argument is unpersuasive because it (i) is
not supported by sufficient evidence and (ii) relies on bodily incorporation
of one reference into another. In particular, Appellant fails to provide
sufficient evidence that Wilcox’s resident application could not be paused,
particularly for some short period of time, without causing substantial
degradation to its operation, e.g., resulting in an unacceptable delay in
responding to user input. Mere attorney argument and conclusory
statements, which are unsupported by factual evidence, and are entitled to
little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997);
In re De Blauwe, 736 F.2d, 699 705 (Fed. Cir. 1984). Attorney argument is
not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can
such argument take the place of evidence lacking in the record.
Appeal 2018-006914
Application 14/342,917
7
Furthermore, Appellant’s argument improperly relies on bodily
incorporation of Menand’s teachings rather than what the combination of
Menand and Wilcox fairly suggests.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
Keller, 642 F.2d at 425 (citations omitted). The artisan is not compelled to
mechanically follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Instead, the skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420–21. Here, Appellant
has not demonstrated that the Examiner’s proffered combination in support
of the conclusion of obviousness would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
419–20). Thus, we are not persuaded that the combination of Menand and
Wilcox would result in the invention of either reference being rendered
unsatisfactory for its intended purpose or changed its principle of operation.
For the reasons discussed above, Appellant’s contentions are not
persuasive of reversible Examiner error. Accordingly, we sustain the
rejection of claim 1 under 35 U.S.C. § 103(a) over Menand and Wilcox
Appeal 2018-006914
Application 14/342,917
8
together with the rejection of claims 2–7, which are not argued separately
with particularity.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–7 103(a) Menand, Wilcox 1–7
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED