Ex Parte Chen et al

Patent Trial and Appeal Board

Apr 15, 2013

11289095 (P.T.A.B. Apr. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YEN-FU CHEN, JOHN HANS HANDY-BOSMA,
and KEITH RAYMOND WALKER
____________

Appeal 2010-010350
Application 11/289,095
Technology Center 2400
____________

Before DENISE M. POTHIER, BARBARA A. BENOIT,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 8, 10-13, and 15-21, which constitute all the claims pending in this
application. See App. Br. 4.1 Claims 1-7, 9, and 14 are cancelled. See id.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to the Appeal Brief filed March 1, 2010
(“App. Br.”), the Examiner’s Answer mailed May 12, 2010 (“Ans.”), and the
Reply Brief filed July 12, 2010 (“Reply Br.”).
Appeal 2010-010350
Application 11/289,095

2
THE INVENTION
Appellants’ invention relates to space shifting media broadcasts. See
Spec. ¶ 0001. Claim 8, which is illustrative of the invention, reads as
follows:
8. A computer implemented method for space-
shifting media broadcast programs, the computer
implemented method comprising:
receiving a request at a media server to space-shift
a media broadcast program, wherein receiving the
request to space-shift the media broadcast program
includes receiving a user identifier;
selecting a device from a list of devices in a
network to which the media broadcast program is to be
space-shifted;
space-shifting the media broadcast program to the
device, wherein space-shifting comprises saving the
media broadcast program to a file, along with
information indicating where a user stopped the media
broadcast program and a media type;
recommencing the media broadcast program on the
device from the point where the user stopped the media
broadcast program;
saving a plurality of media settings particular to
the media broadcast program, wherein the plurality of
media settings are associated with an individual user and
the plurality of media settings include a volume, a
brightness, and a plurality of playback options; and
wherein recommencing the media broadcast
program on the device includes applying the plurality of
media settings to the device, wherein the plurality of
media settings are particular to the media broadcast
program.
Appeal 2010-010350
Application 11/289,095

3
THE REJECTIONS
The Examiner relies on the following prior art in rejecting the claims:
Gardell US 6,049,831 Apr. 11, 2000
Ellis US 2002/0174430 A1 Nov. 21, 2002
Liebenow US 6,530,083 B1 Mar. 4, 2003
Dew US 2003/0107675 A1 June 12, 2003
Tecot US 2005/0097623 A1 May 5, 2005
Ahn US 2005/0246622 A1 Nov. 3, 2005
Nakata US 2006/0271993 A1 Nov. 30, 2006
(filed Nov. 25, 1997)
Bovee US 7,415,310 B2 Aug. 19, 2008
(filed Sept. 15, 2005)
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Tecot in view of Ahn and Dew. See Ans. 3-5.
Claims 10, 12, 15, 16, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tecot and Liebenow. See Ans. 6-9.
Claim 202 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tecot, Liebenow, and Ahn. See Ans. 9-10.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tecot, Liebenow, and Dew. See Ans. 10.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tecot, Liebenow, Nakata, Bovee, Dew, and Gardell. See Ans. 11-14.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tecot, Liebenow, and Ellis. See Ans. 14-15.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tecot, Liebenow, Ahn, Dew, and Gardell. See Ans. 15-16.

2 The Examiner also states that claim 5 is rejected. See Ans. 9. However,
claim 5 is cancelled. See App. Br. 4.
Appeal 2010-010350
Application 11/289,095

4
ANALYSIS
REJECTION OF CLAIM 8 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Tecot teaches each limitation of claim 8
except for “saving a plurality of media settings particular to the media
broadcast program, wherein the plurality of media settings are associated
with an individual user and the plurality of media settings include a volume
[and] a brightness,” which he finds taught by Ahn, and “wherein
recommencing the media broadcast program on the device includes applying
the plurality of media settings to the device,” which he finds taught by Dew.
See Ans. 4-5.
Appellants contend that Dew does not teach a plurality of media
settings that are particular to the media broadcast program. See App. Br. 11.
Instead, Appellants argue, Dew’s media settings are tied to a particular
physical location where the device displaying the media is located. See id.
The Examiner responds that Dew is not cited to show media settings that are
particular to the media broadcast program. See Ans. 16-17. Rather, Ahn
teaches associating media settings with a particular program. See id. Dew is
cited simply to show that stored media settings can be applied to a device
when recommencing the media broadcast program on that device. See Ans.
17. Thus, Appellants’ argument is not commensurate with the rejection.
In reply, Appellants argue that Ahn’s service state variables are not
associated with an individual user. See Reply Br. 2. Similarly, Appellants
argue that Dew’s media settings are not associated with an individual user.
See id. These arguments could have been, but were not raised in the Appeal
Brief; accordingly they have been waived. See, e.g., Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
Appeal 2010-010350
Application 11/289,095

5
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Appellants also contend that Tecot does not teach “wherein space-
shifting comprises saving the media broadcast program to a file, along with
information indicating . . . a media type.” See App. Br. 12-13. The
Examiner responds that Tecot teaches saving bookmark information along
with the media broadcast program wherein the bookmark information
includes an identification of the program (i.e., the multimedia content)
bookmarked, such as “The Piano” or “Friends,” which would identify the
media type as “movie” or “sitcom,” respectively. Ans. 17. Appellants reply
that this identification is arbitrary and does not indicate a media type. See
Reply Br. 3-4.
Appellants have not identified any definition of “media type” in the
Specification. Indeed, the Specification does not provide examples of media
types. Instead, the Specification merely states that “[u]ser manager 304 . . .
stores the media information for each individual user, including media type.
. . .” Spec. ¶ 0030. Thus, Appellants have not persuasively explained why
the claim language excludes the identification information cited by the
Examiner. Moreover, we note that it was well-known to encode media files
in industry standard file formats, which indicate a “type” of media stored in
those files. See, e.g., Nakata, ¶ 0051 (MPEG1, MPEG2, MPEG4, etc.);
Gardell, Fig. 2 (MPEG I frames and HTML); Ellis, ¶ 0004 (MPEG).
Appellants further contend that a person of ordinary skill in the art
would not have combined Dew with Tecot and Ahn. Specifically,
Appellants argue that Dew teaches the importance of providing “device-
related” modifications and that this important feature of Dew would be
Appeal 2010-010350
Application 11/289,095

6
“defeated/eliminated” if they were modified to be “program-related”
modifications. App. Br. 11, 13. However, “[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Examiner does not propose incorporating Dew’s location-based media
settings into Tecot. Rather, the Examiner relies on Ahn – not Dew – to show
a teaching that it was known to have media settings particular to a broadcast
program and further concludes that a person of ordinary skill in the art
would have recognized from Dew’s teaching that media settings (whether
location-based or particular to a program) could be applied to a device when
recommencing the media broadcast program on that device. See Ans. 4-5,
17-18. Appellants have not adequately explained why this conclusion is
erroneous.
Accordingly, we sustain the rejection of claim 8.

REJECTION OF CLAIMS 10, 12, 15, 16, AND 19 UNDER 35 U.S.C. § 103(a)
Claims 10 and 12
The Examiner finds that Tecot teaches each limitation of claim 10
except for “a user manager for creating and managing user . . . profiles for
users on the network,” which the Examiner finds taught in Liebenow. See
Ans. 6-7. Liebenow teaches a technique for adjusting media settings (e.g.,
volume and brightness) for an information handling system (e.g., a
convergent television/computer system). See Liebenow, Abstract; col. 9, ll.
Appeal 2010-010350
Application 11/289,095

7
8-14. Such settings can be stored in individual user preference profiles for
each identified user. See Liebenow, col. 8, ll. 30-38.
Appellants contend that Tecot does not teach a user manager for
managing user identifications. See App. Br. 14-15. The Examiner responds
that this is inherent in Tecot’s teaching of including user identifiers in
bookmarks because “[w]ithout a user manager coordinating user ID
information, there would be no means for what would otherwise be an
inexplicable appearance of correct user ID information in the bookmark
when it is created.” Ans. 18. In reply, Appellants argue that it is not
inherent in Tecot to have a user manager that both creates and manages user
identifications and user profiles. See Reply Br. 4. However, this is not what
the Examiner finds. Rather, the Examiner finds that Tecot inherently
teaches a user manager for creating and managing user identification, that
Liebenow teaches a user manager that creates and manages user profiles,
and that a person of ordinary skill in the art would have combined those
teachings. See Ans. 6-7, 18. Appellants’ argument amounts to an attack on
Tecot individually without consideration of the Examiner’s combination, an
approach we find unpersuasive. See Keller, 642 F.2d at 426 (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”).
Appellants also contend that the limitation “a shifting mechanism for
space-shifting the media broadcast program . . .” is directed to how the
space-shifting operation is activated or initiated. See App. Br. 15. Under
that assumption, Appellants argue that Tecot teaches activating a space-
shifting operation by generating a bookmark rather than by selecting a
device from a list. See App. Br. 16. We are not persuaded. The claim
Appeal 2010-010350
Application 11/289,095

8
language in question does not recite “initiating” or “activating” a space-
shifting operation. Rather, it more broadly recites “a shifting mechanism for
space-shifting.” Thus, we disagree with the assumption on which
Appellants’ argument is based. Even so, we agree with the Examiner (Ans.
19) that Tecot does teach the initiation or activation of space-shifting by
selecting a destination from a list. See, e.g., Tecot, ¶¶ 0139-40, 0145.
Appellants further argue, without elaboration, that “[s]electing a
location . . . is very different from selecting a second device, as claimed.”
App. Br. 17; see also Reply Br. 4. As Tecot teaches different devices at
different locations, see, e.g., Figure 1, we fail to see the distinction
Appellants draw. See also Ans. 19-20.
Accordingly, we sustain the rejection of claim 10 and its dependent
claim 12 not argued separately with particularity.

Claims 15 and 19
Claim 15 depends on claim 10. Appellants argue that Tecot does not
teach a selection of a device from a list of devices that is performed by the
“actual media server” (as opposed to at the selected device itself). App. Br.
17-18. Tecot teaches a “Pull-Based Resumption Architecture” (Tecot, ¶¶
0107-36) and a “Push-Based Resumption Architecture” (Tecot, ¶¶ 0137-46),
both of which are cited to by the Examiner, see Ans. 7-83. Appellants argue
that the pull-based architecture “simply ‘waits’ for a system for which the
program is going to resume play on to request resumption of the program,”

3 Since the Examiner cites to the push-based architecture in the rejection,
including Tecot’s description at ¶ 0146 (see Ans. 7-8), we disagree with
Appellants (App. Br. 18) that this is a new position.
Appeal 2010-010350
Application 11/289,095

9
and thus does not teach a media server selecting a device. Ans. 17. Because
we agree with the Examiner’s finding that the push-based architecture
teaches the claimed selection of a device, we do not reach Appellants’
arguments regarding the pull-based architecture.
Regarding Tecot’s push-based architecture, Appellants argue that
claim 10, from which claim 15 depends, recites both a “media server” and a
“device server,” and that the Examiner’s rejection improperly maps two
claim limitations to one “hub.” See App. Br. 18. The Examiner responds
that the “hub” described in Tecot is a complex device with numerous
components, including components that meet both the “media server” and
“device manager” elements. See Ans. 21-22. We agree with the Examiner.
Appellants have not persuasively explained why the claim language
excludes separate modules within a single device.
Appellants also contend that Tecot, paragraph 0146, does not teach a
selection of a device from a list of devices. See App. Br. 18. We disagree.
In conjunction with paragraph 0145, and as further explained at paragraphs
0147-52, paragraph 0146 shows that the user’s selection from a list is
implemented by Tecot’s hub. See also Ans. 22.
In reply, Appellants argue that Tecot does not disclose a list of
devices. Because this argument could have been, but was not raised in the
Appeal Brief, it has been waived. See Borden, 93 USPQ2d at 1474. In any
case, this limitation is taught or suggested at least at Tecot, paragraph 0145
(“[A] GUI may present several selected location options, and the viewer
chooses one”), given that each location has different devices.
Accordingly, we sustain the rejection of claim 15 and its dependent
claim 19 not argued separately with particularity.
Appeal 2010-010350
Application 11/289,095

10
Claim 16
Claim 16 depends on claim 15. Appellants contend that a skilled
artisan would not have been motivated to modify Tecot’s user identifiers
(stored in Tecot’s bookmarks) to also be associated with user profiles. See
App. Br. 19. According to Appellants, Tecot’s user identifiers are, by
design, associated with the bookmarks, which are embedded with the
content, and are used to identify who made the bookmarks. See id.
Appellants contend that Tecot’s user identifications are maintained in the
bookmarks themselves, and thus it would be disadvantageous to maintain
them in multiple locations. See Reply Br. 5. Appellants argue that there
would have been no reason to modify Tecot to have user identifiers in user
profiles because it would add overhead with no advantages. See App. Br.
19; Reply Br. 5.
The Examiner, in turn, finds that associating user identifiers with both
the bookmarks and user profiles would actually reduce overhead by allowing
information from the user profiles to be incorporated into the bookmarks.
See Ans. 23. We are not persuaded that Tecot discourages or teaches away
from the proposed combination, and instead conclude that the Examiner’s
stated reasons to combine Tecot and Liebenow have some rational
underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)4.

4 Appellants argue that they have satisfied their burden by providing
articulated reasoning with rational underpinning as to why a skilled artisan
Appeal 2010-010350
Application 11/289,095

11
Accordingly, we sustain the rejection of claim 16.

REJECTION OF CLAIM 20 UNDER 35 U.S.C. § 103(a)
Claim 20 depends on claim 19. Appellants do not separately argue
claim 20 with particularity. See App. Br. 20. Accordingly, we sustain the
rejection of claim 20 for the reasons given above for claims 10, 15, and 19.

REJECTION OF CLAIM 11 UNDER 35 U.S.C. § 103(a)
Claim 11 depends on claim 10. The Examiner finds that Tecot and
Liebenow teach “wherein the media server controls other devices that store
media broadcast programs” and that Dew teaches “wherein the device
man[a]ger controls a volume and brightness on a plurality of devices.” See
Ans. 10.
Specifically, the Examiner cites to Tecot’s paragraph 0078, which
states that “multimedia content may be at another communicatively coupled
location on the network rather than on the hub.” See Ans. 10. Appellants
argue that this disclosure does not teach that the hub controls other devices
that store media broadcast programs. See App. Br. 20-21. We are not
persuaded. If Tecot’s hub is storing information to and retrieving
information from a device at another location, it is controlling the device at
least as to the storing and retrieving functions. Appellants point to no

would not have been motivated to modify Tecot. See Reply Br. 5. This is
not the standard. Rather, it’s the Examiner who may meet his burden of
putting forth a prima facie case of obviousness, in part, by articulating a
reason to combine that has some rational underpinning. See Kahn, 441 F.3d
at 986, 988.
Appeal 2010-010350
Application 11/289,095

12
special definition of “control,” or any limiting description in the
Specification that would preclude such a reading.
Appellants also argue, with reference to a similar argument for claim
15, that the Examiner improperly maps Tecot’s hub to both a device
manager and a media server. See App. Br. 21-22. For the reasons given for
claim 15, we are not persuaded.
Appellants further contend that Dew does not teach controlling a
volume and a brightness on a plurality of devices, and instead teaches
automatically adjusting settings specific to a given display system. See App.
Br. 22 (citing Dew, ¶ 0020). According to Appellants, Dew only describes
an ability to control a single device. See App. Br. 22. The Examiner
responds that although Dew does not explicitly disclose controlling volume
and brightness on more than one device, it does teach controlling volume
and brightness based on location, which can include several rooms in a
house. See Ans. 25. From this, the Examiner infers that Dew is better read
to implicitly teach controlling multiple devices as opposed to teaching
physically moving a single television from room to room. See id. We agree
with the Examiner that Dew at least suggests controlling a volume and
brightness on a plurality of devices.
Finally, Appellants argue that the Examiner has failed to articulate a
reason with rational underpinning to combine Tecot, Liebenow, and Dew.
See App. Br. 22-23. In response, the Examiner concludes that a person of
skill in the art would have incorporated Dew’s teaching to accommodate
users that have different preferences. See Ans. 26. Appellants have not
adequately explained why this conclusion lacks rational underpinning.
Accordingly, we sustain the rejection of claim 11.
Appeal 2010-010350
Application 11/289,095

13
REJECTION OF CLAIM 13 UNDER 35 U.S.C. § 103(a)
Claim 13 depends on claim 10. Regarding the additional limitations
of claim 13, the Examiner finds that:
1) Tecot teaches a device manager that comprises a graphical user
interface and a database and that the device manager queues
requested media;
2) Nakata teaches a device manager that controls which devices
participate in a system;
3) Liebenow teaches adjusting the volume for an individual user’s
settings;
4) Dew teaches a device manager that adjusts volume and brightness
by adjusting the media broadcast program sent to a particular
device; and
5) Gardell teaches a device manager that applies a modifier to a
plurality of media settings, depending on the particular device the
media broadcast program is being sent to.
See Ans. 11-14.
Appellants contend that the Examiner’s finding as to Dew is
erroneous because Dew teaches adjusting a circuit used to play a program
and therefore does not teach adjusting “the actual program itself.” App. Br.
23-24. The Examiner responds that adjusting the settings of a video circuit
for a particular device constitutes a way of adjusting the volume and
brightness of a program sent to the device. See Ans. 26. The Examiner
distinguishes between adjusting the media broadcast program generally,
which is claimed, and adjusting the actual values of the video data prior to
sending the video data to the device, which the Examiner infers to be
Appellants’ narrow construction of the claim language. See Ans. 26-27.
Appellants do not adequately explain why the claim language should be
Appeal 2010-010350
Application 11/289,095

14
limited to the latter case. Thus, Appellants’ argument is not commensurate
in scope with the claim language.
Appellants also contend that Gardell does not teach applying a
modifier to a plurality of media settings. See App. Br. 24. Instead,
Appellants argue, Gardell teaches a web page translation (e.g., from HTML
to MPEG I-frame) that does not include applying any type of modifier to a
plurality of media settings. See id. Appellants further argue that Gardell
does not teach that a modifier is applied to a plurality of media settings
depending on a particular device that the media broadcast program is sent to.
See id. The Examiner finds these limitations taught in Gardell’s disclosure
of applying modifications to settings such as screen size and color and
applying those modifications discriminately based on the particular device
the content is being sent to. See Ans. 27. Appellants do not adequately
explain why these findings are erroneous or how Appellants would construe
the claim language to exclude a transformation of a web page wherein media
settings such as screen size and color are modified. Thus, we are not
persuaded of error.
In reply, Appellants argue that Gardell does not teach a media
broadcast program. See Reply Br. 7. Because this argument could have
been, but was not raised in the Appeal Brief, it has been waived. See
Borden, 93 USPQ2d at 1474. Nonetheless, the rejection of claim 13 is based
on the collective teachings of the cited references, including teaching the
recited media broadcast program.
Appellants also challenge the Examiner’s reasons for combining the
references. Specifically, Appellants contend that the Examiner is using
“impermissible ‘bootstrap motivation’,” to support the combination of Tecot
Appeal 2010-010350
Application 11/289,095

15
and Liebenow with Nakata. App. Br. 24-26. According to Appellants, the
Examiner’s articulated reason to combine the secondary reference, Nakata,
with Tecot and Liebenow, boils down to “‘because the secondary reference
says so’ without taking into account ‘why’ it would have been obvious” to
modify the primary references. App. Br. 25. Appellants further challenge,
on similar grounds, the Examiner’s reasons to add Bovee, Dew, and Gardell
to the combination. See App. Br. 26.
For his part, the Examiner finds Nakata and Tecot to be “closely
analogous” and explains that Nakata is cited to remedy an insignificant and
readily recognizable deficiency in Tecot and that a skilled artisan would
need only “fill in the blank” missing from Tecot. Ans. 27-28. Similarly,
with respect to Bovee, the Examiner explains that Tecot strongly suggests
the desirability of turning on a remote device to resume play of the media
when a space-shifting command is given, but does not explicitly disclose a
mechanism for doing so, a gap he fills with Bovee’s teaching. See Ans. 28-
29. As to Gardell, the Examiner concludes that a person of ordinary skill
would have incorporated its teachings with the other cited references
because of recognition that different devices have different display
requirements. See Ans. 29. We conclude that the Examiner has articulated
reasons, with some rational underpinning, for incorporating the teachings of
each of these references.
More generally, Appellants accuse the Examiner of “piece-mealing
together selected snippets from six (6) different references,” which
Appellants contend evidences the impermissible use of hindsight. App. Br.
26. The Examiner disagrees, arguing that Appellants have not shown that
any of the stated motivations to combine rely solely upon material in the
Appeal 2010-010350
Application 11/289,095

16
Specification. See Ans. 29. “Reliance on a large number of references in a
rejection does not, without more, weigh against the obviousness of the
claimed invention.” MPEP § 2145(V). On the other hand, “a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Thus,
“[a] factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” Id. at 421. The issue is whether claim 13 claims “combination
of [] known devices according to their established functions,” id. at 418, or
instead claims a combination in which “the elements worked together in an
unexpected and fruitful manner,” id. at 416. In other words, we “must ask
whether the improvement [of claim 13] is more than the predictable use of
prior art elements according to their established functions.” Id. at 417.
Appellants argue generally that applying the teachings of the
additional five references to the teaching of Tecot would result in an
“unnatural combination” that would “substantially modif[y]” Tecot’s central
controller. App. Br. 27. The Examiner disagrees, finding that incorporating
each of the proposed features of the additional references into Tecot’s
teaching would require little more than the simple inclusion of independent
software routines that would leave Tecot’s architecture and functionality
otherwise unaffected. See Ans. 30-31.
The only specific challenge Appellants raise with respect to the
Examiner’s combination is that Dew teaches applying volume and
brightness control at an end-device rather than at a central controller such as
Tecot’s hub that the Examiner maps to the claimed “device manager.” See
Appeal 2010-010350
Application 11/289,095

17
App. Br. 27. The Examiner rebuts this argument by explaining that he does
not cite Dew for the location of the application of media settings, but rather
for the location of the source of the instructions that cause the media settings
to be applied, namely from a processor remote from the end-device that
displays the media broadcast. See Ans. 30. In light of the teachings of
Tecot, the remote processor is Tecot’s hub. See id. Appellants do not
adequately explain why these findings are erroneous.
In sum, we are not persuaded that the combination of claim 13 recites
elements that work together in an unpredictable, unexpected, or fruitful
manner. Here, “[t]he large number of cited references does not negate the
obviousness of the combination, for the prior art uses the various elements
for the same purposes as they are used by appellants, making the claimed
invention as a whole obvious . . . .” In re Gorman, 933 F.2d 982, 987 (Fed.
Cir. 1991). Nor have Appellants shown sufficiently that the Examiner’s
conclusions were improperly reliant upon ex post reasoning. Thus, we agree
with the Examiner that claim 13 is obvious.
Accordingly, we sustain the rejection of claim 13.

REJECTION OF CLAIMS 17 AND 18 UNDER 35 U.S.C. § 103(a)
Claim 18 depends on claim 17, which depends on claim 16.
Appellants do not separately argue claims 17 and 18 with particularity. See
App. Br. 28. Accordingly, we sustain the rejection of claims 17 and 18 for
the reasons given above for claims 10, 15, and 16.

Appeal 2010-010350
Application 11/289,095

18
REJECTION OF CLAIM 21 UNDER 35 U.S.C. § 103(a)
Claim 21 depends on claim 8. The Examiner finds that Gardell,
which the Examiner characterizes as analogous art, teaches the additional
limitation of claim 21. See Ans. 15-16. Gardell teaches translating web
pages by a browser core into user interface component definitions and page
information and transmitting those definitions and information to a user
device (such as a set top box or screenphone), which recomposes the page
into a different format for presentation on the device. See Gardell, Abstract.
Appellants contend that Gardell teaches a fixed built-in browser client
interface, which is not described as modifying broadcast program media
settings, and is thus distinguishable from modifying media settings based on
device type. App. Br. 29-30. In response, the Examiner finds client
interfaces that alter the content sent to a client device based on the client
device’s display capabilities is an interface that modifies media settings
based on the device. See Ans. 32. We agree. The best reading of Gardell’s
browser client interface, which receives a media file of one format and
transforms it to a media file of another format, is that it changes media
settings during this transformation. See Gardell, col. 3, ll. 35-65. Appellants
have not persuasively explained why the Examiner’s finding is erroneous.
For example, Appellants have not adequately explained why the alleged
“fixed” or “built-in” nature of Gardell’s browser client interface suggests
that it is not modifying media settings based on the device on which the
media is to be displayed.
In reply, Appellants argue that Gardell does not teach a media
broadcast program. See Reply Br. 7. Because this argument could have
Appeal 2010-010350
Application 11/289,095

19
been, but was not raised in the Appeal Brief, it has been waived. See
Borden, 93 USPQ2d at 1474.
Appellants also contend that Gardell does not teach modifying media
settings that are “particular to a media broadcast program.” App. Br. 30.
However, Gardell is not cited for this point. Rather, the Examiner finds this
limitation in Ahn. See Ans. 4-5. Thus, Appellants’ argument is not
commensurate with the rejection.
Finally, Appellants argue that the Examiner has not articulated a
reason, with rational underpinning, for modifying the combination of Tecot,
Liebenow, Ahn, and Dew to incorporate Gardell’s modification of media
settings. See App. Br. 30. Appellants again argue that the Examiner is
“bootstrapping” a motivation to combine by relying solely on Gardell’s
teaching to show why it would have been obvious to incorporate that
teaching. See id. For the reasons given above, we are not persuaded that the
Examiner has improperly “bootstrapped” a motivation to combine Gardell
with the other references. Thus, Appellants have not persuaded us of error
in the Examiner’s conclusion that claim 21 would have been obvious.
Accordingly, we sustain the rejection of claim 21.

ORDER
The decision of the Examiner to reject claims 8, 10-13, and 15-21 is
affirmed.

Appeal 2010-010350
Application 11/289,095

20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

rwk