Ex Parte Covell et al

Patent Trial and Appeal Board

Apr 6, 2017

11149719 (P.T.A.B. Apr. 6, 2017)

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.
11/149,719 06/10/2005 Michele Coveil 82212824 3021
22879
HP Tnr
7590 04/10/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
KASSIM, KHALED M
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELE COVELL, SUMIT ROY,
JOHN ANKCORN, and FREDERIC HUVE
Appeal 2015-006798
Application 11/149,719
Technology Center 2400
Before CARL W. WHITEHEAD JR., DENISE M. POTHIER, and STEVEN
M. AMUNDSON, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—44. App. Br. 4.1 On June 20, 2012, another Board
panel reversed the Examiner’s decision to reject claims 1—44. The claims
have since been amended. We have jurisdiction under 35 U.S.C. § 6(b).
1 Throughout this opinion, we refer to (1) the Final Action (Final Act.)
mailed November 5, 2014, (2) the Appeal Brief (App. Br.) filed February 5,
2015, (3) the Examiner’s Answer (Ans.) mailed May 18, 2015, and (4) the
Reply Brief (Reply Br.) filed July 14, 2015.
Appeal 2015-006798
Application 11/149,719
We affirm.
The Invention
Appellants’ invention relates to overcoming problems that arise when
presenting multiple media streams (e.g., de-synchronization video and
audio) concurrently within a thin device, including when a user interactively
controls the playback rate of a presentation. See Spec. 12:15—28, 14:8—23,
15:4—26. For example, media stream generating system 120 can implement
one of three alternatives to overcome these problems (e.g., decoupled
time-scale modification (TSM)) for interactively controlling streaming
media to thin device 110. See id. at 15:29-17:8, Figs. 1, 5.
Claim 1 is reproduced below with emphasis:
1. An interactive media response method comprising:
determining display capabilities of a thin device;
generating media at a media stream generation system,
wherein said media stream generation system provides
interactive control of said generated media by utilizing a
software application resident in said media stream generation
system to modify said generated media subsequent to said
media generation, and wherein said media is generated with
time scale modification to provide said interactive control, said
generated media comprising:
a visual prompt for display on said thin device based on
said determination; and
an audio prompt for presentation on said thin device;
sending said visual prompt and said audio prompt to said
thin device, wherein said sending of said visual prompt and said
audio prompt are synchronized based on a correlation of said
visual prompt and said audio prompt; and
displaying said visual prompt on said thin device.
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Application 11/149,719
The Rejections
The Examiner relies on the following as evidence of unpatentability:
Whitham
Lee
Choi
Smith
US 2003/0009281 A1
US 7,089,313 B2
US 2007/0168188 A1
WO 99/31856
Jan. 9, 2003
Aug. 8, 2006
July 19, 2007
June 24, 1999
Wolfgang Mueller et al., Interactive Multimodal User Interfaces for
Mobile Devices, Procs. of the 37th Hawaii Int’l Conf. on Sys. Sciences
1-12 (2004).
Claims 1—5, 11—15, 22—26, 33—37, and 39-43 are rejected under 35
U.S.C. § 103(a) as unpatentable over Smith, Lee, Whitham, and Choi. Pinal
Act. 2—28.
Claims 6—10, 16—21, 27—32, 38, and 44 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Smith, Lee, Whitham, Choi, and Mueller.
Pinal Act. 28—34.
THE OBVIOUSNESS REJECTION OVER SMITH, LEE,
WHITHAM, AND CHOI
Regarding independent claim 1, the Examiner finds that Smith, Lee,
and Whitham teach many of its limitations, including the step of “said media
steam generation system provides interactive control of said generated media
by utilizing a software application.” Final Act. 2—6. The Examiner turns to
Choi in combination with the Smith/Lee/Whitham system to teach the
“media is generated with time scale modification to provide said interactive
control.” Final Act. 6.
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Application 11/149,719
Appellants argue each of Smith, Lee, Whitham, and Choi fails to
teach the recited “media is generated with time scale modification to provide
said interactive control.” App. Br. 9-12; Reply Br. 2. Appellants admit
Choi teaches “’a time-scale modification’” but assert the reference does not
describe generating the media with this modification “to provide said
interactive control” as recited. Id. at 11.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Smith, Lee, Whitham, and Choi collectively would have taught or
suggested “generating media at a media stream generation system . . .
wherein said media is generated with time scale modification to provide said
interactive control”?
ANALYSIS
Based on the record before us, the Examiner has not erred in rejecting
representative, independent claim 1 as proposed. The limitation in dispute
calls for “generating media at a media stream generation system . . . wherein
said media is generated with time scale modification to provide said
interactive control.”2 Concerning this recitation, many of Appellants’
arguments attack each cited reference individually without considering what
the combination teaches as whole. App. Br. 9 (stating “neither Smith, Lee,
2 Independent claims 11, 22, 33, and 39 have similarly disputed language to
claim 1. These claims are not separately argued. App. Br. 9-12. We select
claim 1 as representative.
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Application 11/149,719
nor Whitham teach[es], describe[s], or suggest[s]” the above-quoted
limitation), 11 (stating the interactive multimedia tour guide “as disclosed in
Whitham, does not teach, describe, or suggest” the disputed language)
(bolding omitted), 12 (stating “Choi. . . does not specifically teach, describe,
or suggest” the disputed claim language); Reply Br. 3 (stating “neither Choi
nor Whitham discloses using time scale modification to provide interactive
control”) (bolding omitted).
We find Appellants’ arguments unavailing. In particular, Choi “must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). That is, the Examiner determines the combination of Smith, Lee, and
Whitham teaches generating media at a media stream generation system and
the generation system provides interactive control of the generated media by
using a software application. Final Act. 4—6 and Ans. 3 (both citing
Whitham || 2, 18, 27, 30, 40, Abstract). The Examiner turns to Choi in
combination with the Smith/Eee/Whitham system to teach the generated
media “with time scale modification” that “provide[s] said interactive
control” as recited. Final Act. 6—7 and Ans. 4 (both citing Choi 9, 13,
14); see also Ans. 4 (stating “since Whitham disclose[s] providing
interactive control for media generated media and Choi disclose[s] using
time-scale modification for the media, the combination of the prior art
applied discloses the argued limitation”) (italics added).
As such, we disagree that the rejection “addresse[s] claim 1 in a
piecemeal fashion” (Reply Br. 2) or that “the only source for the [the
disputed] subject matter is the claims themselves” (Reply Br. 3). Rather, the
Examiner has considered the claim as a whole and has applied teachings of
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Application 11/149,719
the references collectively in concluding the combination yields the argued
recitation of “generating media at a media stream generation system . . .
wherein said media is generated with time scale modification to provide said
interactive control.” Final Act. 4—6; see also Ans. 3^4.
Appellants also contend the Final Action does not “explain the
differences between the asserted art and Appellants’ claimed features.”
App. Br. 9. We disagree. For example, the Examiner finds “Smith is silent
about how a telecommunication system determines display capabilities of a
thin device and then generates content based on such determination” (Final
Act. 3) and turns to Lee in combination with Smith to teach the noted, claim
features (id. at 3 4). As another example, the Examiner finds the “Smith-
Lee combination does not teach [the] media stream generation system
provides interactive control of said generated media by utilizing a software
application resident in said media stream generation system to modify said
generated media subsequent to said media generation” (id. at 4) (emphasis
omitted) and turns to Whitham in combination with the Smith/Lee system to
teach the noted, claim features (id. at 5—6).
Appellants further argue that the “Office Action fails to explain why
these differences would have been obvious to one of ordinary skill in the
art.” App. Br. 9. We disagree. The Examiner explains that one skilled in
the art would have “considered” (e.g., an ordinarily skilled artisan would
have found obvious) combining Lee’s teaching of determining display
capabilities and supporting such capabilities in remote operation with Smith
in order “employ [such capabilities] in Smith’s multi-modal user interface”
environment. Final Act. 3. The Examiner also states “[i]t would have been
obvious for one of ordinary skill in the art at the time of the invention to
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combine the teachings of Smith, Lee, and Whitham in order to manage
communication between multiple electronic devices [Lee: Col. 1 / lines 43-
44] and to leverage the possibility of modifying the tour while en route by
using the interactive multimedia tour guide [Whitham: 0027].” Id. at 6.
For the first time in the Reply Brief, Appellants contend that the
rejection presented by the Examiner uses “hindsight” (Reply Br. 3), does not
“provide a sufficient rationale for the proposed modification” {id.), and “the
provided rationale is merely circular logic” {id. at 4) (bolding omitted).
Such arguments are waived. See 37 C.F.R. §41.41(b)(2) (“[a]ny argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer . . . will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown.”)
In any event, we are not persuaded. As noted above, the Examiner
provides several reasons with a rational underpinning for combining the
references. See Final Act. 6. Granted, at one point, the Examiner states that
“[o]ne skilled in the art would have employed Choi[’s] time scale
modification method to generate media and provide the interactive control,”
but further explains that the proposed combination also “provide[s] various
useful time-scale modification functions to the system.” Id. To elaborate,
one skilled in the art would have recognized to apply Choi’s time-scale
modification (TSM) technique to the Smith/Lee/Whitham method, including
during the steps of generating media at a media stream generation system
that provides user interactive control, in order to maintain reproduction time
accurately and to avoid lip sync problems (e.g., useful TSM functions). See
Choi 19, cited in both Final Act. 6 and Ans. 3. The record therefore reflects
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reasons to combine the teachings of the cited references supported by
articulated reasoning with some rational underpinning to justify the
obviousness conclusion.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2—5, 11—15, 22—26,
33—37, and 39-43 not separately argued (App. Br. 7—12).
THE REMAINING OBVIOUSNESS REJECTION
Claims 6—10, 16—21, 27—32, 38, and 44 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Smith, Lee, Whitham, Choi, and Mueller.
Ans. 28—34. For this rejection, Appellants contend the claims are patentable
because they include the recitations of independent claims 1, 11, 22, 33, or
39 (App. Br. 12) as well as repeat some of the arguments presented for claim
1 {id. at 12—13). As noted above, we are not persuaded.
Accordingly, Appellants have not persuaded us of error in the
rejection of claims 6—10, 16—21, 27—32, 38, and 44.
DECISION
We affirm the Examiner’s rejection of claims 1—44 under § 103.
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
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