Ex Parte Janik et al

Patent Trial and Appeal Board

Aug 24, 2016

13286476 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/286,476 11/01/2011 Craig M. Janik
23524 7590 08/26/2016
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
088245-8301 2705
EXAMINER
LEWIS, JONATHAN V
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG M. JANIK, NICK KALA YJIAN, BRUCE EDWARDS,
and JOSH FERGUSON
Appeal2015-004945
Application 13/286,4761
Technology Center 2400
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. MCMILLIN, Administrative Patent Judges.
MCMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the Examiner's Final
Rejection of claims 1-13, 15, 16, 18-23, 25-27, and 30-34.2 App. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Viviana Research LLC
(App. Br. 2).
2 Claims 14, 17, 24, 28, and 29 are cancelled (App. Br. 4).
Appeal2015-004945
Application 13/286,476
REJECTIONS ON APPEAL
Claims 1-5, 7, 10-13, 21-23, 25, 27, 30, and 34 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Wallenius (US 7,139,813 Bl,
published Nov. 21, 2006) and Mankovich et al. (US 2003/0097338 Al,
published May 22, 2003). App. Br. 9.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallenius, Mankovich et al., and Thompson (US
6,065,880, published May 23, 2000). App. Br. 9.
Claims 8, 9, and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallenius, Mankovich et al., and Du Val (US 6,832,388
Bl, published Dec. 14, 2004). App. Br. 9.
Claims 15, 16, and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wallenius, Mankovich et al., and Thompson. App.
Br. 9.
Claims 31-33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallenius, Mankovich et al., and Zuliani et al. (US
6,356,539 Bl, published Mar. 12, 2002). App. Br. 9.
THE CLAIMED INVENTION
According to the application, the present invention relates generally to
the playback of digital content, and more specifically to allowing "a user to
access all of the digital content and information services without being
forced to sit at a PC." Spec. i-fi-13, 10. Independent claims 1 and 7 are
directed to methods; independent claim 15 is directed to a system; and
independent claims 21 and 25 are directed to computer-readable storage
devices. App. Br. 28, 30, 31.
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Appeal2015-004945
Application 13/286,476
Claim 1 recites:
1. A method comprising:
receiving data at an adapter module of a portable
electronic device and from a computer system via wireless
transmission; and
rendering the data on the portable electronic device during
a time period in which primary streamed content is being
rendered on an audiovisual device, wherein the primary streamed
content being rendered on the audiovisual device is received
from the computer system, wherein the data includes an ancillary
content link related to the primary streamed content, and wherein
the audiovisual device is different from the portable electronic
device.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections in the Final Action, and the Examiner's response to
Appellants' arguments in the Examiner's Answer. On the record before us,
we are persuaded the Examiner has erred in finding the combination of
Wallenius and Mankovich teaches or suggests "receiving data at ... a
portable electronic device ... and rendering the data on the portable
electronic device during a time period in which primary streamed content is
being rendered on an audiovisual device ... wherein the data includes an
ancillary content link related to the primary streamed content, and wherein
the audiovisual device is different from the portable electronic device," as
recited in claim 1.
Appellants argue the cited art fails to teach or suggest that an
"'ancillary content link' is received at 'a portable electronic device,' while
the 'primary streamed content' is 'rendered on [an] audiovisual device"' and
further "that 'the audiovisual device is different from the portable electronic
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Appeal2015-004945
Application 13/286,476
device,"' as recited in claim 1. App. Br. 13-14. The Examiner responds
that Mankovich teaches that the audiovisual device and portable device are
different because Mankovich's content receiver 100 and portable device 200
can both receive video and data; and that Wallenius' s hyperlinks in a video
clearly teach or suggest ancillary data content link related to primary
streamed content. Ans. 15, 17.
Wallenius discloses "the video content itself may contain information
indicating visually to a user the existence of a hyperlink." Wallenius, Col. 5,
11. 31-34. Mankovich discloses "a content receiver 100 and a portable
device 200," where the content provider's "content access device 110
provides bi-directional communications with a content provider 10 for
receiving content material 11 from the content provider 1 O" and the portable
device's "broadcast receiver 210 receives content material." Mankovich i-fi-1
17, 24.
In other words, Wallenius teaches streaming video and a link together,
while Mankovich teaches an audiovisual device and a portable electronic
device separately receiving content material. Contrary to the Examiner's
findings, Mankovich is silent as to whether the stream goes to the content
receiver and portable device at the same time. As such, the combination of
of W allenius' s streaming of a video with a link and Mankovich' s separate
devices that are capable of streaming content, does not teach or suggest
"receiving data at ... a portable electronic device ... and rendering the data
on the portable electronic device during a time period in which primary
streamed content is being rendered on an audiovisual device .. . wherein the
data includes an ancillary content link related to the primary streamed
content, and wherein the audiovisual device is different from the portable
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Appeal2015-004945
Application 13/286,476
electronic device," as recited in claim 1 (emphasis added). Therefore, we do
not sustain the Examiner's rejection of claim 1.
Independent claims 7, 15, 21, and 25 are commensurate in scope with
independent claim 1, and claims 2---6, 8-13, 16, 18-20, 22, 23, 26, 27, and
30-34 are dependent on the independent claims. We do not sustain the
rejections of these claims for the reasons stated above with regard to claim 1.
DECISION
The rejections of claims 1-13, 15, 16, 18-23, 25-27, and 30-34 are
reversed.
REVERSED
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