Ex Parte Cansino et al

Patent Trial and Appeal Board

Nov 30, 2018

14191288 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/191,288 02/26/2014
141451 7590 11/30/2018
AT&T Legal Dept. - [HDP]
Attention: Patent Docketing, Room 2A-207
One AT&T Way
Bedminster, NJ 07921
FIRST NAMED INVENTOR
Don E. Cansino
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.
DTV210053B 1072
EXAMINER
ALCON, FERNANDO
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
11/30/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONE. CANSINO, BRADY C. TSURUTANI,
EARL J. BONOVICH, and CHARLES W. BEESON
Appeal2017-000121
Application 14/191,288 1
Technology Center 2400
Before MAHSHID D. SAADAT, BARBARA A. BENOIT, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 45-51 and 81-86, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Technology
The application relates to "using a second screen device [ e.g., a
'[m]obile touch-screen device' such as an 'iPad'] for interacting with a set
top box to enhance a user experience." Spec. ,r,r 5, 4.
1 According to Appellants, the real party in interest is The DIRECTV Group,
Inc. App. Br. 2.
Appeal2017-000121
Application 14/191,288
Illustrative Claims
Claims 45 and 49 are illustrative and reproduced below with the
limitations at issue emphasized:
45. A method comprising:
saving a screen image signal of a display of a second
screen device;
communicating the screen image signal to a set top box;
and
displaying the screen image signal on the display
associated with the set top box.
49. A method as recited in claim 45 wherein displaying the
screen image signal comprises displaying the screen image
signal through a hypertext transfer protocol engine of the set top
box.
Rejections
Claims 45 and 81 stand rejected under 35 U.S.C. § I03(a) as obvious
over the combination of Ueda et al. (US 2009/0262661 Al; Oct. 22, 2009)
and Zhang et al. (US 2008/0127253 Al; May 29, 2008). Final Act. 3.
Claims 46-48 and 82-84 stand rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Ueda, Zhang, and Mowrey et al. (US
2012/0174155 Al; July 5, 2012). Final Act. 4.
Claim 49 stands rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Ueda, Zhang, and Istvan et al. (US 2006/0085835 Al;
Apr. 20, 2006). Final Act. 6.
Claims 50 and 85 stand rejected under 35 U.S.C. § I03(a) as obvious
over the combination of Ueda, Zhang, and Yoshikai et al. (US
2002/0078172 Al; June 20, 2002). Final Act. 7.
2
Appeal2017-000121
Application 14/191,288
Claims 51 and 86 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Ueda, Zhang, Istvan, and Yoshikai. Final Act. 7-8.
Related Appeal
Appellants identify "Application Serial No. 14/191,276" as involving
a related appeal (Appeal No. 2017-000345). App. Br. 2. Both that
application and the present application are divisional applications from U.S.
Application No. 13/224,206.
ISSUES
1. Did the Examiner err in finding the combination of Ueda and
Zhang teaches or suggests "saving a screen image signal of a display of a
second screen device," as recited in claim 45?
2. Did the Examiner err in finding Istvan teaches or suggests
"displaying the screen image signal through a hypertext transfer protocol
engine of the set top box," as recited in claim 49?
ANALYSIS
Claims 45-48, 50, 51, and 81---86
Independent claim 45 recites "saving a screen image signal of a
display of a second screen device." The phrase "a display of a second screen
device" is distinguished from the later-introduced "a set top box" and "the
display associated with the set top box." Independent claim 81 contains
similar recitations.
The Examiner explains the rejection as follows:
Ueda has been relied upon for disclosing storing a still image,
such as a picture taken with mobile phone, communicating the
image to a set top box, and displaying the image on a display
associated with the set top box. Zhang has been relied upon for
3
Appeal2017-000121
Application 14/191,288
disclosing that it was known to capture a screen image signal. ...
[T]he combination of Ueda and Zhang would result in a second
screen device which includes screen capture capability and allow
forwarding and viewing of a screen captured still image to be
displayed on a display device associated with a set-top box.
Ans. 4; see also Final Act. 3--4.
According to Appellants, "Ueda describes ... [using] 'the mobile
phone handset 11 to transfer photographs (still images), movies, or like
content from the mobile phone handset 11 to the television receiver 18"' and
"the content being displayed on display device 17." App. Br. 5 (quoting
Ueda ,r 184, citing Ueda ,r 183). Appellants argue, however, that "Ueda ...
is silent as to ... saving a screen image of a display of that mobile phone
handset 11." J d.
Appellants also argue "Zhang ... teaches that the frame grabber 108
captures an image corresponding to what the set-top box 104 is outputting,"
but that television 110 is not the display of frame grabber 108 and therefore
"framegrabber 108 does not capture and/or save a screen image of a display
of the framegrabber 108." App. Br. 6.
However, as explained above, the Examiner relied upon Zhang, not
Ueda, for teaching to capture a screenshot. Ans. 4; Final Act. 3--4. In
particular, "[t]he framegrabber 108 ... captures a 'screenshot'
corresponding to an image displayed on the television 110 at a specific
instant in time." Zhang ,r 42; see also id. ,r,r 70, 81. Similarly, Ueda, not
Zhang, was relied upon for teaching to send an image from a mobile phone
to a set top box. Ans. 4; Final Act. 3--4. Thus, the Examiner's proposed
combination teaches a mobile phone (as in Ueda) taking a screenshot (as in
Zhang) and sending the image to the set top box (as in Ueda). Ans. 4; Final
Act. 3--4. In the Appeal Brief, Appellants are attacking Ueda individually or
4
Appeal2017-000121
Application 14/191,288
Zhang individually rather than the combination of Ueda and Zhang relied
upon by the Examiner. "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Moreover, by regulation, "any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal." 37 C.F.R. § 4I.37(c)(l)(iv);
see also 37 C.F.R. § 41.41(b)(2).
Accordingly, we sustain the Examiner's rejection of independent
claims 45 and 81.
Claims 46--48 and 82-84
For dependent claims 46-48 and 82-84, Appellants contend that
"Mowrey does not remedy the deficiencies of Ueda and Zhang." App. Br. 7.
We are not persuaded that Ueda and Zhang are deficient for the reasons
discussed above.
Accordingly, we sustain the Examiner's rejection of claims 46-48 and
82-84.
Claims 5 0 and 85
For dependent claims 50 and 85, Appellants contend that "Yoshikai
does not remedy the deficiencies of Ueda and Zhang." App. Br. 8. We are
not persuaded that Ueda and Zhang are deficient for the reasons discussed
above.
Accordingly, we sustain the Examiner's rejection of claims 50 and 85.
5
Appeal2017-000121
Application 14/191,288
Claims 51 and 86
For dependent claims 51 and 86, Appellants contend that "Istvan and
Yoshikai do not remedy the deficiencies of Ueda and Zhang." App. Br. 9.
We are not persuaded that Ueda and Zhang are deficient for the reasons
discussed above.
Accordingly, we sustain the Examiner's rejection of claims 51 and 86.
Claim 49
Dependent claim 49 further recites "displaying the screen image
signal through a hypertext transfer protocol engine of the set top box."
The Examiner finds that "Istvan discloses it is known to provide
remote device service via a web server module of a computing system,"
citing paragraphs 71-7 4 of Istvan "where a web server 404 within CM reads
on a HTTP engine." Final Act. 6.
Appellants argue that in Istvan, "the web server 404 is not within a set
top box, such as set top box 350." App. Br. 8; see also Reply Br. 3--4.
The Examiner responds that "[t]he Final Action, however, does not
state the web server is within a set top box" but that "[t]he CM is
functionally equivalent to a set-top box in embodiments." Ans. 4 ( citing
Istvan ,r 30).
"[I]t is incumbent upon the Patent Office in the first instance to set
forth clearly why it regards a claim to be ... obvious or otherwise
defective." In re Mullin, 481 F.2d 1333, 1336 (CCPA 1973). "The
pertinence of each reference, if not apparent, must be clearly explained."
3 7 C.F .R. § 1.104( c )(2 ). "[T]here must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
6
Appeal2017-000121
Application 14/191,288
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007) (quoting Kahn).
Here, Istvan may have some relevance to claim 49. For example, we
note that Istvan discloses "a Web server 404 ... may be ... part of the CM
system 335" (i-f 71) and "the CM system may ... receive ... external content
3 60a ... directly from the source of that content, and ... directly control the
presentation of that content to the user(s) on the display device 311" (i-f 30).
Elsewhere, Istvan also discloses that the CM system 335 communicates
using an "HTTP service" or "using Web service calls over HTTP." Istvan
,r,r 38-39. Nevertheless, given the limited record here where the Examiner
"does not state the web server is within a set top box" and instead merely
determines the CM system is "functionally equivalent to a set-top box," the
Examiner has not sufficiently articulated how Istvan is being relied upon or
how Istvan's hardware being "functionally equivalent" renders obvious the
claimed limitation "displaying the screen image signal through a hypertext
transfer protocol engine of the set top box." Ans. 4 (emphasis omitted).
Accordingly, we do not sustain the Examiner's rejection of claim 49.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 45--48, 50, 51, and 81-86, but we reverse the Examiner's decision
rejecting claim 49.
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.
§ 41.50(±).
AFFIRMED-IN-PART
7