Ex Parte Conroy et al

Patent Trial and Appeal Board

Apr 24, 2018

11895410 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/895,410 08/24/2007
14868 7590 04/26/2018
Patent Docketing
200 Bellevue Parkway, Suite 300
Attention: Docketing
Wilmington, DE 19809
FIRST NAMED INVENTOR
Kevin M. Conroy
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.
0320-110 1878
EXAMINER
SUGENT, JAMES F
ART UNIT PAPER NUMBER
NOTIFICATION DATE DELIVERY MODE
04/26/2018 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):
docketing@interdigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN M. CONROY and NEGAR MOSHIRI
Appeal2017-000717
Application 11/895,410
Technology Center 2100
Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and
ADAM J. PYONIN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-000717
Application 11/895,410
STATEMENT OF THE CASE
We have jurisdiction under 35 U.S.C. § 6(b). On November 4, 2014,
a panel of the Board of Patent Appeals and Interferences mailed a "Decision
on Appeal" ("Prior Board Decision") for the present application, reversing
the rejection of then-pending claims 1-8 and 25-27 under 35 U.S.C.
§ 103(a) as being unpatentable over Rogers (U.S. 2006/0195512, published
Aug. 31, 2006), Brigham, and Kusano (U.S. 2003/0169299 Al, published
Sept. 11, 2003); and then-pending claims 9-24 and 28-31 under§ 103(a) as
being unpatentable over Rogers and Brigham. Prosecution was re-opened;
independent claims 1, 9, and 17 and dependent claims 3, 5-8, 11, 14--16, 18-
25, 30, and 31 were amended, and newly rejected by the Examiner.
Appellants appeal under 35 U.S.C. § 134(a) from this rejection of claims 1-
31.
We affirm. 1
THE INVENTION
The claims are directed to playlist creation tools for television user
interfaces. Spec., Title. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A playlist generation system comprising:
a television;
a storage device for storing media items and selectively
replaying said media items;
1 As with the Prior Board Decision, we refer to the Specification ("Spec.");
filed Aug. 24, 2007; the Final Office Action, mailed Oct. 2, 2015 ("Final
Act."); Appeal Brief, filed June 3, 2016 ("App. Br."); the Examiner's
Answer, mailed Aug. 12, 2006 ("Ans."). The Reply Brief filed Oct. 12,
2016 is noted but it is not cited herein.
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Application 11/895,410
a user interface for creating a playlist displayed on said
television using images which correspond to said stored media
items; and
a 3D pointing device for providing pointing and selection
inputs to said user interface to add said images corresponding to
said stored media items to said displayed playlist,
wherein in a first user interface view, said images
corresponding to said stored media items are displayed as
bookshelves of images,
wherein each of said images corresponds to each of said
stored media items.
(App. Br., Claims Appendix, 22).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Katinsky et al.,
Rogers et al.,
Radloff et al.,
Brigham II et al.,
Banks et al.
US 6,452,609 B 1
US 2006/0195512 Al
US 2006/0267995 Al
US 7,499,027 B2
US 7,657,846 B2
Sept. 17, 2002; hereinafter "Katinsky"
Aug. 31, 2006; hereinafter "Rogers"
Nov. 30, 2006; hereinafter "Radloff'
Mar. 3, 2009; hereinafter "Brigham"
Feb. 2, 2010; hereinafter "Banks"
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 4--8, 10, 18, 20, 21, and 25-27 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Katinsky, Radloff, Brigham, and
Banks. Final Act. 5-9, 13, 17-19.
Claim 3, 11, and 19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Katinsky, Radloff, Brigham, Banks, and Rogers. Final
Act. 9, 13-14, 19.
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Application 11/895,410
Claims 9, 12-17, 22-24, and 28-31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Katinsky, Brigham, and Banks. Final
Act. 9-17.
ANALYSIS
Appellants' contentions are unpersuasive of reversible Examiner error.
We adopt as our own ( 1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 3-19, Ans. 2-17)
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 18-27) and we concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Reopening of Prosecution
We are not persuaded by Appellants' contention the Examiner
committed error in conducting additional searching after a prior decision by
the Board (App. Br. 6-7).
The line of demarcation between appealable matters for the
[Board of Patent Appeals and Interferences] (Board) and
petitionable matters for the Director of the U.S. Patent and
Trademark Office (Director) should be carefully observed. The
Board will not ordinarily hear a question that should be decided
by the Director on petition, and the Director will not ordinarily
entertain a petition where the question presented is a matter
appealable to the Board.
MPEP § 1201, 9th ed. The decision to reopen prosecution and conduct
additional searching is a procedural question that is resolved by petition. In
the present case, Appellants have not pointed to any evidence in the record
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Application 11/895,410
to indicate the filing of such petition. Furthermore, MPEP 1214.04 provides
that:
If the examiner has specific knowledge of the existence of a
particular reference or references which indicate
nonpatentability of any of the appealed claims as to which the
examiner was reversed, he or she should submit the matter to the
Technology Center (TC) Director for authorization
to reopen prosecution under 37 CPR 1.198 for the purpose of
entering the new rejection. [Citations omitted.]
Here, the technology center Director gave approval to reopen
prosecution as evidenced by signature (Non-Final Act. of April 23, 2015,
p. 2). Appellants are reminded that it is the responsibility, and the mission of
the USPTO, to raise issues ofunpatentability any time they arise during the
prosecution of an application. Indeed, the "Commissioner has an obligation
to refuse to grant a patent if he believes that doing so would be contrary to
law." BlackLight Power, Inc. v. Rogan, 295 F.3d 1269, 1274 (Fed. Cir. 2002)
(internal citations omitted).
Rejections Under 35 U.S.C. § 103(a)
Claims 1, 3, 6, 9, 11-17, 19, and 22-31
The Examiner finds Katinsky's playlist media icons teach images
corresponding to each of the stored media items of claim 1. Final Act. 5. In
response, Appellants contend Katinsky' s icons 32 only indicate the media
type and are neither unique to each media object nor selectable such that,
contrary to the requirements of claim 1, "each image does not correspond to
each stored media item." App. Br. 11. (Underlining omitted.) The
Examiner responds, concluding Appellants' argument is improperly based on
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Application 11/895,410
limitations not present in the claims, i.e., that each graphical icon be unique
to each media item. Ans. 19.
Appellants' contention is unpersuasive because, as explained by the
Examiner, Appellants' argument is not commensurate in scope with claim 1.
Appellants provide insufficient evidence or argument to persuade us that the
claim limitation "each of said images corresponds to each of said stored
media items" requires each of the images be unique with respect to
respective ones of the stored media items. Furthermore, even if there was
such a requirement, Katinsky's media type icons are unique to respective
media items at least in those situations wherein each media item in the
play list is of a different media type. Still further, Appellants fail to explain
why Katinsky's graphic icon 32, indicating the media type, in combination
with text 34, explaining the content of the media object, fails to teach or
suggest images corresponding to each of the stored media objects. See
Katinsky 4:52-56, Fig. 2C. Therefore, for these additional reasons,
Appellants' contention is further unpersuasive of reversible Examiner error.
Appellants further contend the prior art fails to teach or suggest
images corresponding to the stored media items are displayed as
bookshelves of images as required by claim 1. App. Br. 11-15. In
particular, the Examiner finds Banks' s stacks of icon documents piled in
rows and columns is suggestive of a bookcase arrangement of song
collections grouped by genre in a library. Final Act. 6; Banks Figs. 4, 5B,
6: 18-23, 60-66. Appellants contend the stacks of icons are not bookshelves
because each of the elements within a stack are not individually identifiable
( e.g., by title) as would be the case of traditional books shelved in a physical
bookcase. App. Br. 12. Appellants argue the disputed bookshelves of
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images must be interpreted in light of the Specification and Figs. 4A--4D and
4F--4G disclosing six bookshelves, each bookshelf depicted as a 5 x 4
rectangular array of images, each image associated with an album of musical
recordings. App. Br. 13. Appellant rely on a "Google definition" of a stack
in arguing Banks' s stacks are not equivalent to "a shelf on which books can
be stored." Id. Appellants further argue Banks' s stacked icons are not in a
one-to-one relationship with items stored as required by claim 1. App. Br.
15.
The Examiner responds, characterizing Appellants' arguments as
based on the intended meaning of the disputed bookshelves of images
limitation rather than what is recited by the claim. Ans. 20. The Examiner
further finds Appellants' Specification lacks a definition of what is meant by
bookshelves and that one definition of bookshelves is "an open shelf for
holding books." The Examiner concludes, under a broadest reasonable
interpretation, "the stack icons taught in the Banks reference ... teach the
limitation of 'images corresponding to said stored media items are displayed
as bookshelves of images."' Ans. 20.
Appellants' arguments are unpersuasive of Examiner error.
Appellants provide insufficient evidence or reasoning to persuade us the
Examiner's interpretation of the disputed bookshelf is unreasonably broad or
inconsistent with the Specification. The Specification only discloses, by
way of example, bookshelves consisting of a rectangular array of images,
and that the user may "zoom in" to bookshelves to show only a subset of
files therein. See Spec. ,r,r 31-33. We are not persuaded other arrangements
of images, including Banks' s stacks of individual images, are not included
within the meaning of a bookshelf. Thus, as depicted in the following
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Application 11/895,410
annotated comparison 1 of Appellants' Figure 4A and Figure 4 of Banks, we
agree that, consistent with the Specification, Banks teaches or suggests the
disputed limitation wherein Banks' s stacks of images teach or suggest
bookshelves of images.
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Appellants' Figure 4A Bank's Figure 4
Annotated Comparison 1 of Appellants' Figure 4A and Figure 4 of Banks
We are also not persuaded of Examiner error by Appellants' argument
that Banks is deficient because Banks' s stacked icons are not in a one-to-one
relationship with items stored. Such argument is neither commensurate with
the claim nor does it address the Examiner's findings. In particular, the
"corresponding" language of claim 1 does not require the argued "one to one
ratio of each image [corresponding] to each stored item." See App. Br. 15.
Furthermore, the Examiner relies on Katinsky, not Banks, for the argued
"corresponding" feature:
the Katinsky reference teaches the recitation of "[ e Jach media
icon 30 represents a media object" and can be seen at Fig. 2C -
that is, for every media item ("Gore Pushes for IRS Reform,"
"Joe Kennedy Will Not Seek Re-Election," "Vote Gore in 2000")
has an associated icon (small TV icon) to associate it as a video
media item.
Ans. 19; see also Final Act 5. Thus, Appellants' argument fails to consider
the combination of Katinsky and Banks and, instead, improperly attacks the
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Application 11/895,410
individual references. "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., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d413, 425 (CCPA 1981)).
We further note claim 1 does not specify whether the recitation
regarding "bookshelves" requires a plurality of bookshelves or whether the
plural use of the noun is a mere grammatical construct providing for one or
more bookshelves. Thus, under a broad but reasonable interpretation, an
alternative mapping of claim 1 includes Banks' s overall array of stacked
icons as depicted in Banks' s Figure 4 corresponding to one or more of
Appellants' six 5 x 4 arrays of images (i.e., media items displayed as
bookshelves) in Figure 4A of the drawings as illustrated in the following
annotated figure.
324
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Appellants' Figure 4A Bank's Figure 4
Armot,3ted Comparison 2 of Appellanti;' Figure 4A and Figure 4 of Banks
Further, even if claim 1 were to require a plurality of image arrays or
"bookshelves", the mere duplication of image arrays has no patentable
significance unless a new and unexpected result is produced. See In re
Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP 2144.04.
For the reasons discussed above, Appellants' contentions in
connection with the rejection of claim 1 are unpersuasive of Examiner error.
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Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a)
together with the rejections of claim 1, 3, 6, 9, 11-17, 19, and 22-31 which
are not argued separately with particularity.
Claims 2, 3, 10, 11, 18, and 19
Claim 2 recites that the user interface of claim 1 further includes a
playlist region bar wherein the images corresponding to media items to be
played are arranged in an order in which they are to be played. The
Examiner finds Radloff' s transport bar of asset regions teaches or suggests
the playlist bar of claim 2. Final Act. 7. Appellants argue the reference is
deficient because, rather than displaying images, Radloff depicts the space
apportioned to various asset regions based on relative program lengths, the
size of the space apportioned representing playback time. App. Br. 16. The
Examiner responds, explaining it is the combination of Katinsky's images
and Radloff' s region bar, not "Radloff by itself', that teaches or suggests the
disputed limitations of claim 2. Ans. 22.
We agree with the Examiner. Appellants' contention of error fails to
address the Examiner's findings concerning Katinsky's images in
combination with Radloff and, therefore, is unpersuasive of reversible
Examiner error. Accordingly, we sustain the rejection of claim 2 rejected
under 35 U.S.C. § 103(a) and, for the same reasons, sustain the rejection of
claims 10 and 18 together with the rejection of claims 3, 11, and 19 which
are not argued separately with particularity.
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Claims 4, 5, 20, and 21
Claim 4 recites that the playlist can be alternately (i) displayed along
with user interface control elements associated therewith or (ii) reduced to
an icon representation of the playlist. The Examiner finds Microsoft's
Internet Explorer web browser as disclosed by Katinsky includes a button
for minimizing the browser window to an icon displayed on an operating
system task bar thereby teaching or suggesting the disputed limitations of
claim 4. Final Act. 7. Appellants contend Katinsky fails to disclose a
minimized play list, an icon representation of the play list, or a user interface
that controls elements associated with the play list. App. Br. 17. The
Examiner responds, finding Katinsky' s media access page can be accessed
with a web browser thereby invoking the minimize, maximize, and close
buttons provided by Microsoft Internet Explorer and Windows software.
Ans. 23.
Appellants' contention is unpersuasive of Examiner error. In
particular, Appellants fail to address the Examiner's findings concerning
Katinsky's disclosed use of Microsoft's Internet Explorer providing
functionality that minimizes a window displaying a playlist so as to display a
corresponding Explorer icon in a Windows task bar thereby teaching the
disputed limitations of claim 4. Accordingly, we sustain the rejection of
claim 4 under 35 U.S.C. § 103(a) and, for the same reasons, the rejection of
claim 20 together with the rejection of claims 5 and 21 which are not argued
separately with particularity.
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Claim 7
Claim 7 recites the playlist can be selectively displayed to overlay
some of the images corresponding to the stored media items in some of the
bookshelves. The Examiner finds Katinsky's disclosure of a "plurality of
playlists in tabbed form, with the media objects in each playlist [teaches or
suggests the] stored media items overlapping the objects in the other
playlists" as required by claim 7. Final Act. 8. Appellants contend
Katinsky's play list is a separate part of the user interface and, "[h]ence, there
is no 'playlist' which can 'overlay' the 'images corresponding to said stored
media items,' because the 'stored media items,' are those not yet added to
the playlist, as disclosed in Appellant's claimed combinations." App. Br. 18.
Appellants' contention is unpersuasive of Examiner error. Katinsky's
Figure 6B depicts multiple play lists selectable using respective tabs 72.
Katinsky col. 5, 11. 35-54. One skilled in the art would have understood that
only the playlist selected using the associated tab would be displayed, the
selected playlist overlaying the non-selected playlists. Therefore, we agree
with the Examiner in finding Katinsky teaches or suggests the disputed
limitations. Accordingly, we sustain the rejection of claim 7 under 35 U.S.C.
§ 103(a).
Claim 8
Claim 8 recites a second user interface view associated with one of the
images corresponding to one of said stored media items, wherein at least one
user interface control element is displayed on the television which permits
the user to add (i) all of a plurality of stored media subitems to the playlist or
(ii) individual ones of the plurality of stored media subitems to said play list.
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The Examiner finds Katinsky' s checkboxes 54 located to the left of media
icon copy 40 and causing the selective playing or skipping of the item
teaches or suggests the disputed second user interface view. Final Act. 8;
Katinsky Fig. 4. According to Appellants, Banks, applied for teaching the
first user interface view of claim 1, does not teach a second user interface
view, only the "grouping of files in stacks, not the retrieval or selection of
only one file in the stack." App. Br. 18. Appellants argue, to select a
document, "a user is required to go through the many documents in the
stacks to retrieve the desired file. This process would involve multiple user
interface views, not just two." Id. Appellants further argue Katinsky also
fails to teach or suggest the subject matter of claim 8. App. Br. 19. The
Examiner responds, finding Banks does teach the retrieval or selection of
only one file in the stack "wherein a single thumbnail of one of the stack
items is displayed such that the one of the stack items is a subitem." Ans.
25.
Appellants' contentions are not persuasive of Examiner error. In
particular, Appellants fail to explain why Katinsky' s check boxes, which are
used to include or skip a selection to be played, fail to teach or suggest the
disputed limitation. For example, Appellants do not explain why provision
of the check boxes fails to teach or suggest the disputed second user
interface view or why selective playing of the stored media present in the
playlist, i.e., subitems selected for playing, is not equivalent to and fails to
teach selectively adding the subitems to a sublisting, i.e., a playlist
consisting of only the checked media items. Accordingly, we sustain the
rejection of claim 8.
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DECISION
We affirm the Examiner's decision to reject claims 1-31 under 35
U.S.C. § 103(a).
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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