Ex Parte HERIGSTAD et al

Patent Trial and Appeal Board

Jun 28, 2018

14020668 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/020,668 09/06/2013 Dale Alan HERIGSTAD
23483 7590 07/02/2018
WILMERHALE/BOSTON
60 STATE STREET
BOSTON, MA 02109
UNITED ST A TES OF AMERICA
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.
2208844.00122US 1 8175
EXAMINER
EKPO, NNENNA NGOZI
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
whipusptopairs@wilmerhale.com
teresa.maia@wilmerhale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE ALAN HERIGSTAD, NAM HOAI DO,
NHAN MINH DANG, RIEU TRUNG TRAN, QUANG SY DINH,
THANG VIET NGUYEN, LONG HAI NGUYEN,
and LINH CHI NGUYEN
Appeal2017-010570
Application 14/020, 668 1
Technology Center 2400
Before JOSEPH L. DIXON, MARC S. HOFF, and
JOHN P. PINKERTON, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-8, 10-12, 17-22, and 26-31. 2 We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm.
Appellants' invention is a system and method for rendering video
content. A first reception module receives secondary digital content from the
1 The real party in interest is SeeSpace Ltd.
2 Claims 9, 13-16, and 23-25 have been cancelled.
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Application 14/020,668
Internet. A second reception module receives a primary video stream. A
decoding module decodes the primary video stream, and a rendering module
renders digital video content in an overlay above the primary video stream
by using the secondary digital content. An encoding module encodes
rendered digital video content into a video format for display on an output
screen. The digital video content in the overlay may be encoded as a
transparent layer above the primary video stream. See Abstract. Secondary
content is organized in the form of "digital channels," which may be
displayed on a layer on the left side of the screen. Spec. ,r 84. The content of
the digital channel may be available on the right side of the screen. Id.
Claim 1 is exemplary of the claims on appeal:
1. A device for rendering video content comprising:
(a) a media decoder configured to receive and process a primary video
stream for display;
and
(b) a mixer configured to:
receive the primary video stream from the media decoder;
select, retrieve, and update secondary digital content from a plurality
of websites,
wherein the secondary digital content is dynamically related to
currently displayed content of the primary video stream, wherein the
secondary digital content is organized into a plurality of channels, wherein
when one of the plurality of channels is selected, a portion of the secondary
digital content corresponding to the selected channel is displayed, and
wherein each of at least some of the channels corresponds to one of the
plurality of websites; and
generate combined digital video content by rendering the secondary
digital content for display in an overlay above the primary video stream,
wherein the overlay is encoded as a layer above the primary video stream,
wherein the plurality of channels are located at a first side of the combined
digital video content for display, wherein the portion of the secondary digital
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content corresponding to the selected channel is located at a second side of
the combined digital video content for display, and wherein the first side is
different from the second side.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Huber et al. US 2005/0137958 Al June 23, 2005
Fok et al. US 2009/0299817 Al Dec. 03, 2009
Soundararajan US 2011/0141362 Al June 16, 2011
Horodezky et al. US 2011/0320978 Al Dec. 29, 2011
Huston et al. US 8,144,251 B2 Mar. 27, 2012
Goldman et al. US 2012/0317476 Al Dec. 13, 2012
Fino US 2013/0055083 Al Feb.28,2013
Saunders US 8,416,262 B2 Apr. 09, 2013
Jain et al. US 2013/0339840 Al Dec. 19, 2013
Lee et al. US 2015/0095950 Al Apr. 02, 2015
Claims 1, 2, 4, 5, 8, 10-12, 19-22, 26, and 28 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Huston, Huber, and Lee.
Claim 3 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Huston, Huber, Lee, and Sanders.
Claim 6 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Huston, Huber, Lee, and Soundararajan.
Claim 7 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Huston, Huber, Lee, and Jain.
Claims 17 and 18 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Huston, Huber, Lee, and Fino.
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Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Huston, Huber, Lee, and Horodezky.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Huston, Huber, Lee, and Goldman.
Claims 29 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Huston, Huber, Lee, and Fok.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Feb. 9, 2017), the Reply Brief ("Reply Br.," filed Aug. 7,
2017), and the Examiner's Answer ("Ans.," mailed June 5, 2017) for their
respective details.
ISSUES
Does the combination of Huston, Huber, and Lee disclose or fairly
suggest (a) a primary video stream; (b) secondary digital content that is
dynamically related to currently displayed content of the primary video
stream; and ( c) rendering the secondary digital content for display in an
overlay above the primary video stream, wherein a plurality of channels are
located at a first side of the combined digital video content for display, and
the portion of the secondary digital content corresponding to the selected
channel is located at a second side of the combined digital video content?
PRINCIPLES OF LAW
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
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what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.
ANALYSIS
CLAIMS 1, 2, 4, 5, 8, 10-12, 19--22, 26, AND 28
Appellants note that the Examiner admits that Huston and Huber fail
to disclose "the plurality of channels are located at a first side of the
combined digital video content for display, wherein the portion of the
secondary digital content corresponding to the selected channel is located at
a second side of the combined digital video content for display, and wherein
the first side is different from the second side," as is recited in exemplary
claim 1. App. Br. 7-8. Appellants then argue that Lee fails to supply the
missing limitations: "Lee, however, fails to show any secondary digital
content that is 'dynamically related to currently displayed content of the
primary video stream."' App. Br. 9. "The cited portions of Lee appear to
only show what might be primary video content, but not secondary content
that dynamically relates to the displayed primary video stream." Id. In the
alternative, Appellants argue that even if tabs 3210-3240 of Figure 32(a) of
Lee do constitute the plurality of channels of secondary content, Lee Figure
32(a) does not provide any remaining content that can be characterized as
the claimed primary video stream. App. Br. 10.
We are not persuaded by Appellants' arguments.
Appellants' contention that Lee "at best shows how primary video
stream can be browsed and displayed in channels," but "does not show any
secondary digital content that is dynamically related to currently displayed"
primary video content, is not germane to the Examiner's rejection. The
Examiner relies on Huston, rather than Lee, for disclosure of receiving a
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primary video stream from the media decoder. Final Act. 3. The Examiner
relies on Huber for its disclosure of "secondary digital content that is
dynamically related to currently displayed content of the primary video
stream," as called for in claim 1. Final Act. 4. The Examiner then relies on
Lee only for the specific arrangement of the plurality of channels (tabs 3210,
3220, 3230, and 3240) "at a first side of the combined digital video content"
and digital content corresponding to the selected channel (Fig. 32(b ),
"detailed broadcast informations" 3251, 3261, 3271, and 3281) "located at a
second side of the combined digital video content." Ans. 5; Final Act. 4--5.
Appellants make no argument against the combined teachings of
Huston, Huber, and Lee. Appellants make no argument that it would not
have been obvious to combine Huston, Huber, and Lee in the manner set
forth by the Examiner in order to obtain the invention recited in
representative claim 1. Instead, Appellants' argument is confined,
essentially, to the contention that Lee does not teach every display element
of exemplary claim 1. See App. Br. 9-11. This argument against an
individual reference (Lee) is not persuasive to show nonobviousness when a
rejection is based upon a combination of references. Keller, 642 F.2d at 425.
We agree with the Examiner that Huston, Huber, and Lee, taken together,
render obvious the claimed invention.
Because we are not persuaded by Appellants' arguments that the
Examiner erred, we sustain the Examiner's § 103(a) rejection of claims 1, 2,
4, 5, 8, 10-12, 19-22, 26, and 28 over Huston, Huber, and Lee.
CLAIMS 3, 6, 7, 17, 18, 27, AND 29-31
With respect to these claims, Appellants argue only that the further
cited references (i.e., Saunders, Soundararajan, Jain, Fino, Horodezky, Fok,
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and Goldman) also fail to teach the limitations argued supra with respect to
exemplary claim 1. Because we are not persuaded that the Examiner erred in
rejecting claim 1, we also sustain the Examiner's rejection of claims 3, 6, 7,
17, 18, 27, and 29-31, for the same reasons.
CONCLUSIONS
The combination of Huston, Huber, and Lee fairly suggests (a) a
primary video stream; (b) secondary digital content that is dynamically
related to currently displayed content of the primary video stream; and ( c)
rendering the secondary digital content for display in an overlay above the
primary video stream, wherein a plurality of channels are located at a first
side of the combined digital video content for display, and the portion of the
secondary digital content corresponding to the selected channel is located at
a second side of the combined digital video content.
ORDER
The Examiner's decision to reject claims 1-8, 10-12, 17-22, and
26-31 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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