Ex Parte Heughebaert et al

Patent Trial and Appeal Board

Jun 28, 2016

11146251 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111146,251 0610612005 Andre Heughebaert
22850 7590 06/30/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
282633US8X 4858
EXAMINER
PONTIUS, JAMES M
ART UNIT PAPER NUMBER
2488
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE HEUGHEBAERT and LUC DE CEULAER1
Appeal2014-004402
Application 11/146,251
Technology Center 2400
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 57, 58, 62, 63, and 66-91. Claims 1-56, 59---61, 64, and 65 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Sony Europe Limited as the real party in interest.
App. Br. 1.
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Application 11/ 146,251
Introduction
Appellants state their "invention relates to an interactive digital
television system and a method of grouping data objects, in particular to
grouping data objects which are displayed on the interactive digital television
system using input keys on a control unit." Spec. 1 ("Field of the
Invention"). Claim 57 is representative:
57. A computer readable non-transitory storage medium
having recorded thereon code components that, when executed
on a computer will cause that computer to operate a method
compnsmg:
displaying data objects on a display of a system;
highlighting individually one of the displayed data
objects;
using at least one first input key of input keys of a control
unit to cause the display to move the highlighting to successive
displayed data objects; and
using at least one second input key of the input keys of the
control unit to selectively' and individually' assign a currently'
highlighted data object to one or more respective groups while
the plurality of data objects are displayed on the display of the
system such that only the currently highlighted data object is
assigned and no other data objects are assigned by said using at
least one second input key, wherein,
when a data object is assigned to a respective group, a
respective image associated with the respective group is
displayed with the data object, such that the same respective
image is displayed with each data object, of the plurality of data
objects, assigned to the same respective group.
App. Br. V-i (Claims App'x) (disputed requirement emphasized).
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Application 11/ 146,251
Rejections
Claims 57, 58, 62, 63, and 66-91 stand rejected under 35 U.S.C. § 112,
i-f 1 as failing to comply with the written description requirement. Final Act.
7-8.
Claims 57, 58, 62, 63, 71-82, 86, 90, and 91 stand rejected under 35
U.S.C. § 103(a) as obvious over Lemmons (US 6,481,011 Bl; Nov. 12,
2002) and Anderson (US 6,249,316 Bl; June 19, 2001). Final Act. 8-21.
Claims 66-70 and 87-89 stand rejected under 35 U.S.C. § 103(a) as
obvious over Lemmons, Anderson, and Yuen et al. (US 6,239,794 Bl; May
29, 2001). Final Act. 21-25.
Claims 83-85 stand rejected under 35 U.S.C. § 103(a) as obvious over
Lemmons, Anderson, and Takemoto (US 6,335,742 Bl; Jan. 1, 2002). Final
Act. 25-28.
ANALYSIS
35 U.S. C. ¢ 112 f 1 Rejections
The Examiner finds Appellants' Specification does not provide written
description for the requirement "such that only the currently highlighted data
object is assigned and no other data objects [are] assigned by said using at
least one second input key" of independent claim 57, as well as for similarly
recited requirements in the other independent claims (58, 62, and 63). Final
Act. 8. The Examiner further finds "no written description in the
specification for the details of the 'computer readable non-transitory storage
medium' of claims 57-58 that has all the claim limitations associated with the
displaying, highlighting and using limitations" as recited. Id.
Appellants argue Examiner errs because the Specification "describes
that the highlighting can be moved such that all data objects can be
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Application 11/ 146,251
highlighted one by one" and, after the highlighting of a single object, "when
one of keys 12, 14, 16, and 18 is pressed, the highlighted data object is
assigned to a particular group." App. Br. 5 (citing Spec. 9, 11. 15-23).
Appellants further argue"[ w ]ith regard to the feature of a 'computer readable
non-transitory storage medium,' Figure 7 shows [a] hardware platform
including a memory," and the Specification describes implementing the
invention on such hardware. Id. (citing Spec. 12, 11. 13-18).
The Examiner answers that
[n]owhere is there disclosure in Appellant's specification to
exclude any data from being assigned, much less excluding all
other data from being assigned. As evident in the portion of the
specification cited by Appellant, "the system allows assignment
of data objects to four possible groups distinguished by the
colours red, green, blue and yellow." Thus multiple data objects,
and not "only" one data object, are assigned.
Ans. 21.2
The fundamental factual inquiry is whether the specification conveys
with reasonable clarity to an ordinarily skilled artisan that Appellant was in
possession of the invention as claimed. See, e.g., Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 2003). "The written description
requirement does not require the applicant 'to describe exactly the subject
matter claimed, [rather] the description must clearly allow persons of
ordinary skill in the art to recognize [the applicant] invented what is
claimed."' Union Oil Co. of California v. Atlantic Richfield Co., 208 F .3d
989, 997 (Fed. Cir. 2000) (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed.
Cir. 1989)).
2 We note the Examiner's Answer does not respond to Appellants' argument
concerning written description support for the "computer readable non-
transitory storage medium" claim requirement.
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We agree with, and adopt, Appellants' rationale as to why the
Specification as filed provides written description support for the disputed
claim requirements. See App. Br. 4--5; Ans. 2--4. We specifically agree the
as-filed Specification's disclosure of individually highlighting data objects
and then individually assigning a particular highlighted object based on a
user's pressing of a key demonstrates Appellants were "in possession of'
claim 57's "such that only the currently highlighted data object is assigned
and no other data objects are assigned by said using at least one second input
key" requirement. We disagree with the Examiner's interpretation of this
claim requirement, which would preclude subsequent use of the "second
input key" for subsequent assignments. We accordingly do not sustain the
Examiner's rejections under 35 U.S.C. § 112, i-f 1.
35 U.S.C. §103(a)Rejections
In rejecting claim 57, the Examiner finds Lemmons teaches the
disputed requirement because "by assigning a red color to the movie
'Casablanca' based on the movie's name, the movie 'Casablanca' is
individually assigned to the red group" Final Act. 12 (citing Lemmons Figs.
5, 6, 9, 10 and col. 7, 1. 33 to col. 9, 1. 20). Appellants argue the Examiner
errs because
Lemmons does not teach or suggest individually assigning a
particular, highlighted, single data object to a group, as
Lemmons only describes assigning one or more data objects
having a particular attribute to [a] group. The fact that it is
possible that only one data object may be in the group does not
describe structure or steps that function to individually assign
single highlighted data objects as claimed.
App. Br. 6.
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The Examiner answers that in Lemmons "[t]here is only one
Casablanca. Multiple showings of 'Casablanca' are all showings of the same
'Casablanca.' ... Thus the assigning of 'Casablanca' in Lemmons teaches
the assigning present in the claim language of the instant application." Ans.
23. The Examiner also explains that, by "assigning a data object having a
particular attribute to a color group, the data object is assigned to a group."
Ans. 25. The Examiner further finds "Anderson teaches the entirety of the
claim limitation at issue in this appeal." Ans. 28 (citing Anderson Fig. 4 and
col. 4, 1. 38 to col. 5, 1. 67); see also Final Act. 14.
Appellants do not persuade us Lemmons fails to teach the disputed
requirement because Lemmons' teaching of assigning an object having an
attribute to a group teaches assigning the object to the group. Additionally,
Appellants' argument that "[i]t is unclear how Anderson could be considered
to describe" the disputed requirement because Anderson teaches grouping
images and performing operations such as assignments for the group (Reply
7 (citing Anderson col. 5, 11. 39--45)) does not persuade us of error.
Appellants do not explain why one of ordinary skill would not understand
that Anderson's teaching can apply to a group consisting of a single image.
We agree with, and adopt, the Examiner's findings and reasons as to
how combining Lemmons and Anderson teaches the requirements of claim
57. See Final Act. 9-15; Ans. 10-29. We accordingly sustain the rejection
of claim 57, as well as the rejection of claims 58, 62, 63, and 66-91, for
which Appellants provide no separate arguments. See App. Br. 5-8.
DECISION
For the reasons above, we affirm the Examiner's rejection of claims
57, 58, 62, 63, and 66-91.
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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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