Ex Parte GARDELL et al

Patent Trials and Appeals Board

Apr 22, 2019

12174963 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/174,963 07/17/2008
83579 7590 04/24/2019
LEVEL 3 COMMUNICATIONS, LLC
Attn: Patent Docketing
1025 Eldorado Blvd.
Broomfield, CO 80021
FIRST NAMED INVENTOR
Steven E. GARDELL
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.
0353-US-C2 9719
EXAMINER
STRANGE, AARON N
ART UNIT PAPER NUMBER
2448
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
patent.docketing@level3.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN E. GARDELL, DENISE A. NELSON, and
BRUCE REICHLEN
Appeal2017-004900
Application 12/174,963
Technology Center 2400
Before JOHN P. PINKERTON, JON M. JURGOVAN, and
NABEEL U. KHAN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 46-66, which are all of the claims pending in this application.
Claims 1--45 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Level 3 Communications, LLC as the real party in
interest. Br. 2.
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Application 12/174,963
STATEMENT OF THE CASE
Introduction
Appellants disclosed and claimed invention relates generally to
accessing a network, and in particular to apparatus and methods for
accessing of a network using a variety of types of apparatus, such as a
set top box for a television or a computer. Spec. 2 1:3-5.
Claim 46 is representative and reproduced below ( with the disputed
limitations emphasized):
46. A client device to connect to a user device including a
display, comprising:
one or more processor operable to execute a browser
client to:
combine image information related to network
information with user interface definition information related to
the network information to form a recomposed image, and
transmit the recomposed image for presentation via the
display; and
a user interface to receive input from a user, where the
browser client is further to:
determine, based on the user input, which one of the
browser client and a server is to modify the recomposed image,
modify the recomposed image based on a determination that the
browser client is to modify the recomposed image,
transfer the user input to the server based on a
determination that the server is to modify the recomposed
image, and
2 Our Decision refers to the Final Action mailed Apr. 17, 2015 ("Final
Act."); Appellants' Appeal Brief filed Nov. 17, 2015 ("Br.") and Amended
Appeal Brief filed May 23, 2016 ("Supp. Br."); the Examiner's Answer
mailed Nov. 23, 2016 ("Ans."); and the original Specification filed July 17,
2008 ("Spec.").
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Application 12/174,963
receive the modified recomposed image from the server,
and transmit the modified recomposed image to the user device
for display.
Br. 15 (Claims App'x).
Rejections on Appeal
Claims 46-50, 52-58, and 60-66 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Shoff et al. (US 6,240,555 Bl; issued
May 29, 2001) ("Shoff') and Roarty (US 5,883,661; issued Mar. 16, 1999).
Claim 51 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Shoff, Roarty, and Kostresti et al. (US 5,822,324; issued
Oct. 13, 1998) ("Kostresti").
Claim 59 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Shoff, Roarty, and Mighdoll et al. (US 5,918,013; issued
June 29, 1999) ("Mighdoll").
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Appeal Brief and are not persuaded the Examiner erred.
Unless otherwise noted, we adopt as our own the findings and reasons set
forth by the Examiner in the Office Action from which this appeal is taken
(Final Act. 4--12) and in the Examiner's Answer (Ans. 2-9), and we concur
with the conclusions reached by the Examiner. For emphasis, we consider
and highlight specific arguments as presented in the Appeal Brief.
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Rejection of Claims 46-50, 52-58, and 60-66 3 under§ 103(a)
The Examiner finds the combination of Shoff and Roarty teaches or
suggests the disputed limitation of claim 46. Ans. 2-8. Appellants contend
the Examiner erred for three primary reasons.
First, Appellants argue that the cited art does not teach or suggest
determining, "based on the user input," which of the browser and client is to
modify the recomposed image. Br. 6-8. According to Appellants, Shoff
does not disclose anything about the viewer computer (i.e., browser client)
being capable of modifying a recomposed image and, therefore, the viewer
computer cannot be used in a method that determines, based on user input,
whether the browser or server is to modify the recomposed image. 4 Id. at 7.
Second, Appellants argue the cited references do not teach or suggest
determining, based on user input, "which one of the browser client and a
server is to modify the recomposed image." In particular, Appellants argue
that the portion of Shoff cited by the Examiner, column 11, lines 55-59,
merely teaches that the display layout may be changed for various reasons,
but does not teach "that a determination is made between having a browser
client or a server," "that the browser client is making ... the determination,"
3 Appellants argue these claims as a group, focusing on independent claim
46. Br. 6-13. The limitations of claims 60 and 64 that are quoted by
Appellants are commensurate with the corresponding limitations of claim 46
argued by Appellants, and Appellants rely on their arguments with respect to
claim 46 for these limitations of claims 60 and 64. Id. at 12. We consider
claim 46 to be representative and, therefore, we decide the rejection of these
claims on the basis of claim 46. See 37 C.F.R. § 4I.37(c)(l)(iv).
4 Although Appellants also argue that "Roarty does not disclose or suggest
anything about 'modify[ing] a recomposed image' by a browser client," the
Examiner does not rely on Roarty to teach this feature of claim 46. See Ans.
3, 7.
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or "that the determination is made based on the user input." Id. at 9.
Appellants also argue that Shoff s disclosure that supplemental content may
be stored locally or remotely does not "support the conclusion that the client
must determine from which location to source the content." Id. at 11-12.
Third, Appellants argue that the portions of Shoff and Roarty cited by the
Examiner merely teach altering the layout of a display that is not the same as
"modify[ing] the recomposed image," as recited in claim 46. Id. at 10-11.
We are not persuaded by Appellants' arguments that the Examiner
erred. Concerning Appellants' first argument that Shoff "does not disclose
anything about the viewer computer being capable of 'modify[ing] a
recomposed image"' (id. at 7), we first consider construction of the phrase
"modify the recomposed image." In that regard, we note that claim 46
broadly recites that a "recomposed image" is formed by "combin[ing] image
information related to network information with user interface definition
information related to the network information." Br. 15 (Claims App'x).
Appellants' Specification also broadly describes that "[i]mage information is
received by recompose 158, which recomposes an image for display, and
transfers the recomposed image to buffer 162." Spec. 10: 16-18. Claim 46
also recites that the browser client or the server "modify the recomposed
image." Br. 15 (Claims App'x). The term "modify" means "[t]o change in
form or character; alter." THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE 844 (1975). Although Appellants argue that the
Specification discloses that "the modification of the recomposed image
involves, for example, 'highlight[ing] the selection,"' we do not import
limitations from the Specification into the claims. See Phillips v. A WH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane). Thus, we determine
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that the broadest reasonable interpretation of "modify the recomposed
image" is to change in form or character the image formed by combining
image information related to network information with user interface
definition information related to the network information.
Based on the broadest reasonable interpretation of the limitation
"modify the recomposed image," we agree with the Examiner's findings that
Shoff teaches or suggests that Shoffs viewer computer (i.e., browser client)
is capable of modifying a recomposed image based on user input. Ans. 3.
In that regard, the Examiner finds, and we agree, as follows:
Shoff discloses the viewer computer unit may receive a
non-interactive video stream from a headend or other service
provided and receive supplemental content from either local
storage or a remote location. Shoff, 7:51-62. The viewer
computing unit contains a browser used to dynamically render
supplemental content. Id. at 8:45-55. The supplemental content
is rendered along with the video program according to a display
layout and timing instructions. Id. at 10:44-58. For example, the
supplemental content may be overlaid on the video to form a
"recomposed image." Id. The viewer computing unit may
subsequently alter the size of shape of supplemental content in
response to user input, such as selection of a soft button. Id. at
11:51-59. This alteration of the supplemental information
displayed causes modification of the "recomposed image",
resulting in display of the video stream with the new
supplemental information overlaid or inserted. Id. See also
Shoff, fig. 8b and 8c.
Ans. 3.
Regarding Appellants' second argument that the cited references do
not teach or suggest determining, based on user input, "which one of the
browser client and a server is to modify the recomposed image" or that the
"browser client is making the [] determination," the Examiner finds that the
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combination of Shoff and Roarty teaches or suggests these limitations of
claim 46. Id. at 5---6. With respect to Shoff, the Examiner finds as follows:
Shoff discloses the supplemental content may be stored locally,
such as on a CD-ROM, or at a remote location such as a headend.
Shoff, 7:55-62. Shoff further discloses that user input may cause
modification of the supplemental content, including layout, size
or location. Id. at 11:51-55. Selection of displayed buttons may
also result in changes to the content of the supplemental
information displayed, such as secondary menus. Id. at 12:7-23.
Since the supplemental content to be displayed may be stored
locally or remotely, the client must determine whether the
supplemental content is to be retrieved from local storage or
received from a remote location.
Id. at 4.
With respect to Roarty, the Examiner finds that Roarty discloses "that
user input may be provided to the headend to control output back to the
home, resulting in modification of the recomposed image at the server as an
altemati ve to modification at the client." Id. at 4 ( citing Roarty 1 :4 7---6 7);
see also id. at 5. The Examiner also finds that the combination of Shoff and
Roarty teaches or suggests
a system where the client makes a determination between locally
modifying the recomposed image with locally stored data as
taught by Shoff or remotely modifying the recomposed image by
transmitting the user input to the server, which will modify the
recomposed image and return it to the client, as taught by Roarty.
Id. at 4--5; see also id. at 8. The Examiner further finds that "[o]ne of
ordinary skill in the art would have recognized this determination would
depend upon the location of the supplemental content necessary to render
appropriate content selected by the user." Id. at 5.
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We agree with the Examiner's above findings and determine that the
combination of Shoff and Roarty teaches or suggests that the client makes a
determination between locally modifying the recomposed image with locally
stored data, as taught by Shoff, or remotely modifying the recomposed
image by transmitting the user input to the server, which modifies the
recomposed image and returns it to the client, as taught by Roarty. As the
Examiner finds, the test for obviousness is what the combined teachings of
the references would have suggested to those of ordinary skill in the art. Id.
at 8 (citing In re Keller, 642 F.2d 413 (CCPA 1981)); see also Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807---08 (Fed. Cir. 1989) (citation
omitted) ("[T]he question under 35 U.S.C. 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made."). The
combination of Shoff and Roarty at least suggests these disputed limitations
of claim 46. We also note that Appellants do not rebut the Examiner's
above findings.
Regarding Appellants' third argument that Shoff and Roarty merely
teach altering the layout of a display, rather than "modify[ing] the
recomposed image," as recited in claim 46 (see Br. 10-11 ), we are not
persuaded that the Examiner erred because "altering the layout of a display"
as taught by Shoff and Roarty meets the broadest reasonable interpretation
of "modify the recomposed image." As discussed supra, we determine that
the broadest reasonable interpretation of "modify the recomposed image" is
to change in form or character the image formed by combining image
information related to network information with user interface definition
information related to the network information. (Emphasis added). With
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respect to Shoff, the Examiner finds, and we agree, that Shoff teaches that
"user input may cause modification of the supplemental content, including
layout, size or location." Ans. 7 (citing Shoff 1:51-55). Thus, the Examiner
also finds, and we agree, that "[ m ]odification of the supplemental content
clearly results in modification [i.e., a change in form] of the 'recomposed
image' made up of the supplemental content and the video program." Id.
(citing Shoff 10:44--58, 12:7-23). Similarly, with respect to Roarty, the
Examiner finds, and we agree, that Roarty teaches "modify the recomposed
image" because Roarty discloses that "user input may be provided to the
headend to control output back to the home, resulting in modification of the
recomposed image at the server." Id. at 4 ( citing Roarty 1:47---67).
Accordingly, we are not persuaded the Examiner erred in (1) finding
that Shoff and Roarty teach or suggest the disputed limitations of claim 46
and (2) concluding that the combined teachings and suggestions of Shoff and
Roarty render the subject matter of claim 46 obvious under 35 U.S.C.
§ 103(a). Thus, we sustain the Examiner's rejection of claim 46, as well as
independent claims 60 and 64, and dependent claims 47-50, 52-58, 61-63,
65, and 66, under§ 103(a).
Rejection of Claims 51 and 59 under§ 103(a)
Appellants advance no separate, substantive arguments for claims
51 and 59. Instead, Appellants argue these claims are allowable for the
reasons discussed with respect to claim 46. Br. 13. These arguments are not
persuasive because, for the reasons discussed supra, we determine that claim
46 is not allowable. Therefore, we sustain the rejection of dependent claims
51 and 59 under§ 103(a).
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DECISION
We affirm the Examiner's rejections of claims 46-66 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).
AFFIRMED
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