Ex Parte Colter et al

Patent Trial and Appeal Board

Aug 8, 2016

12684088 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/684,088 01107/2010
62204 7590 08/10/2016
GENERAL ELECTRIC COMPANY (LICENSING)
ATTN: Brandon, 59W - 105U
1 RIVER ROAD
SCHENECTADY, NY 12345
David Colter
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.
259134-2 (GEL8083.141) 4475
EXAMINER
TILAHUN, ALAZAR
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
vivian.brandon@ge.com
rlt@zpspatents.com
docket@fyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte DAVID COLTER, ALEX CHUNG,
MARC McCONNAUGHEY, STEPHANIE OTTO, and
MICHAEL ONAITIS
Appeal2015-002135
Application 12/684,088
Technology Center 2400
Before JOHN P. PINKERTON, JOSEPH P. LENTIVECH, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1--4 and 6-20, which are the only claims pending in the
application. Claim 5 is canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify General Electric Company as the real party in interest.
App. Br. 1.
Appeal2015-002135
Application 12/684,088
STATEivIENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention is generally directed to
an electronic navigation system to present a range of categories and content
items within each category to the user. The navigation system is
implemented as a cascading menu presented as a plurality of tiers with each
tier having a plurality of seats, which Appellants state is similar to viewing
an audience seating from a stage. Spec. i-f 9. 2
Claim 1 is representative and reproduced below (with the disputed
limitations emphasized):
1. A method of presenting a television menu comprising:
determining a source from which content is being
provided to the television;
determining a television mode based on the source from
which content is being provided to the television;
assembling a plurality of first and second tier seats based
on the television mode, as determined by the source from which
content is being provided to the television;
displaying a first tier comprising the plurality of first tier
seats, wherein the first tier is directed to the determined
television mode;
displaying a second tier comprising the plurality of
second tier seats wherein each of the second tier seats is
partially obscured by a corresponding one of the first tier seats;
2 Our Decision refers to the Final Action mailed Dec. 13, 2013 ("Final
Act."); Appellants' Appeal Brief filed June 23, 2014 ("App. Br."); the
Examiner's Answer mailed Sept. 30, 2014 ("Ans."); Appellants' Reply Brief
filed Nov. 26, 2014 ("Reply Br."), and the original Specification filed Jan. 7,
2010 ("Spec.").
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Application 12/684,088
providing a moveable indicator to identify one of the first
tier seats as an active seat;
taking an action when the active seat is activated.
Rejections on Appeal
Claims 1--4, 6, 7, 9-14, 16---18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Parker et al. (US 2009/0089834 Al;
published Apr. 2, 2009) ("Parker") and Kataoka et al. (US 2006/0236251
Al; published Oct. 19, 2006) ("Kataoka"). Final Act. 2-13.
Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker, Kataoka, and Lemmons et al. (US 2004/0216160
Al; published Oct. 28, 2004) ("Lemmons"). Final Act. 13-14.
ISsues:
Issues
Appellants' arguments in the Briefs present us with the following
1. Does the combination of Parker and Kataoka teach or
suggest "determining a television mode based on the
source from which content is being provided to the
television," as recited in claim 1, and as similarly recited
in claim 12?
2. Does Lemmons teach or suggest "if the empty seat exists,
applying default data to the empty seat," as recited in
claim 8, and as similarly recited in claim 15?
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Appeal2015-002135
Application 12/684,088
ANALYSIS
Issue 1
Appellants contend the combination of Parker and Kataoka fails to
teach or suggest "determining a television mode based on the source from
which content is being provided to the television," as recited in claim 1, and
as similarly recited in claim 12. App. Br. 4--10. To clarify the term "mode,"
Appellants argue paragraph 34 of the Specification states "the system
determines which mode it is in so that the proper menu can be displayed. "3
See id. at 5. Thus, according to Appellants, a person of ordinary skill in the
art "would clearly recognize that the television mode of claim 1 is related to
the content source of the television, whether it is broadcast video content,
DVD, DVR, game system, camera, or any other type of content displayed on
a television." Id. at 5.
Regarding paragraph 65 of Kataoka, which the Examiner relies on in
the Final Action as teaching the disputed limitation of claim 1 (see Final
Act. 5), Appellants argue it fails to teach the disputed limitation because ( 1)
it teaches an information reading mode that relates to how the menu is
displayed, while the mode of claim 1 relates to the content begin displayed
by the television, and (2) the menu selection screen of Kataoka requires
input from the user and, therefore, "it cannot be said that the mode is
determined 'based on the source from which content is being provided to the
television,' as called for in claim 1." App. Br. 4--6, 9-10.
3 This statement appears in paragraph 33 of the Specification, and we
assume Appellants mistakenly refer to paragraph 34 in the Appeal Brief.
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Application 12/684,088
Regarding paragraph 83 of Kataoka, which the Examiner relies on in
the Answer as teaching the disputed limitation of claim 1 (see Ans. 3--4),
Appellants argue as follows:
As such, one skilled in the art would recognize that Paragraph
[0083] discloses changing the content provided to the television
based on the selection of a user. However, there is no mention
therein regarding a television mode based on the source.
Consequently, even when considering the Examiner's additional
reference to Paragraph [0083] of Kataoka, the reference still
fails to teach or suggest determining a television mode based on
the source from which content is being provided to the
television.
Reply Br. 1-2; see also id. at 3.
Appellants also argue, "[ e ]ven assuming, arguendo, that one skilled in
the art could interpret reading and displaying the content corresponding to
the selected thumbnail in Kataoka as both determining a source from which
content is being provided and determining a television mode based on the
source, the combination of references fails to teach assembling a plurality of
first and second tier seats based on the television mode, as called for in claim
1." Id. at 2--4.
We are not persuaded by Appellants' arguments that the Examiner has
erred. Although we agree with Appellants that paragraph 65 of Kataoka
does not teach the disputed limitation because it teaches a mode for
determining how content is to be displayed, rather than determining the
mode based on the content being provided to the television, we agree with
the Examiner that paragraph 83 of Kataoka does teach or suggest the
disputed limitation of claim 1. See Ans. 3--4. While we also agree with
Appellants that the term "mode" refers to content being provided to the
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Application 12/684,088
television, the term, as used in the claims and described in the Specification,
is broad and can be reasonably interpreted to apply to any aspect of the
content provided by a television source. See, e.g., Spec. i-fi-133, 46-47.
Accordingly, we agree with the Examiner that paragraph 83 of Kataoka
teaches, when the decision key is operated in the state where the thumbnail
has focus, (1) a content source, such as broadcast receiving apparatus 12, is
selected, (2) the mode, such as an "on-the-air program" category, is
determined, and (3) the television program now on the air is displayed on the
screen. See Kataoka i1 83; Ans. 3-6. Thus, we agree with the Examiner that
Kataoka teaches "determining a television mode based on the source from
which content is being provided to the television," as recited in claim 1, and
as similarly recited in claim 12.
Regarding Appellants' arguments that the combination of references
fails to teach "assembling a plurality of first and second tier seats based on
the television mode," as recited in claim 1, and as similarly recited in claim
12, we note these arguments were not raised in the Appeal Brief, but were
raised for the first time in the Reply Brief. Because these arguments are
raised by Appellants for the first time in the Reply Brief without a showing
of good cause, they are waived. See 37 C.F.R. § 41.41(b)(2) (2012); see
also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
("[T]he reply brief [is not] 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.").
For these reasons, we sustain the Examiner's rejection of claims 1 and
12, as well as dependent claims 2--4, 6, 7, 9-14, and 16-20, which are not
argued separately.
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Issue 2
Appellants argue Lemmons fails to teach or suggest "if the empty seat
exists, applying default data to the empty seat," as recited in claim 8, and as
similarly recited in claim 15. App. Br. 10-11; Reply Br. 4--5. The Examiner
finds paragraph 103 of Lemmons teaches this limitation because it teaches
"the emptied cell may be later filled with another channel, or it may be left
empty, thereby reducing the size of the favorite channel line-up." Ans. 6-7.
We agree with Appellants because, as Appellants' argue, Lemmons teaches
that an empty cell may be filled by a viewer "press[ing] the Select key while
the cursor is on the cell 406" (see Lemmons i-f 102), which involves user
selection of the channel, rather than default data. See Reply Br. 4--5. Thus,
we do not sustain the Examiner's rejection of claims 8 and 15.
DECISION
We affirm the Examiner's rejection of claims 1--4, 6, 7, 9-14, and 16-
20 under 35 U.S.C. § 103(a).
We reverse the Examiner's rejection of claims 8 and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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