Ex Parte Karaoguz et al

Patent Trials and Appeals Board

Mar 29, 2016

12851036 - (D) (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/851,036
16378 7590
EGL/Broadcom
P.O. Box 10395
Chicago, IL 60610
FILING DATE FIRST NAMED INVENTOR
08/05/2010 Jeyhan Karaoguz
03/30/2016
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.
14528.00057 1975
EXAMINER
HOSSAIN, FARZANA E
ART UNIT PAPER NUMBER
2482
MAILDATE DELIVERY MODE
03/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEYHAN KARAOGUZ and NAMBIRAJAN SESHADRI
Appeal2014-005328
Application 12/851,0361
Technology Center 2400
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-30. (Appeal Br. 2.) We have jurisdiction under 35
U.S.C. § 6(b)(l).
We affirm-in-part.
Invention
Appellants' invention relates to user selection of objects in a
television program. (Abstract.) When a user desires to select a user-
selectable object in a television program presented at a first speed, the
television program is presented at a slower second speed. The user's
1 Appellants identify Broadcom Corporation as the real party in interest.
(Appeal Br. 1.)
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Application 12/851,036
selection of a user-selectable object is then received. (Spec. i-fi-141--43; Fig.
2; Claims 1, 30.)
Exemplary Claims
Claims 1, 5, 6~ and 9, reproduced below with key limitations
emphasized, are exemplary:
1. A method comprising:
in a television system, at least:
determining that a user desires to select a user-
selectable object in a television program being presented
at a first speed; and
in response to said determining:
presenting the television program at a
second speed prior to user-selection of the
user-selectable object, the second speed
being slower than the first speed; and
interacting with the user regarding
the user-selectable object in the television
program being presented at the second
speed, wherein the interaction comprises
receiving the user-selection of the user-
selectable object.
5. The method of claim 1, wherein said interacting
with the user regarding user-selectable objects in the
television program comprises outputting a visible
indication identifying a user-selectable object in the
television program as being user-selectable.
6. The method of claim 5, wherein said interacting
with the user regarding user-selectable objects in the
television program comprises outputting said visible
indication on the television program being presented at
the second speed, where said visible indication is not
output on the television program being presented at the
first speed.
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9. The method of claim 1, wherein:
the television program being presented at a first
speed is being presented on a first screen;
said presenting the television program at a second
speed comprises presenting the television program on a
second screen; and
said interacting with the user comprises
interacting with the user on the second screen.
Rejections
The Examiner rejects claims 1-5, 7, 8, 11, 15-19, 21, 22, 25, and 30
under 35 U.S.C. § 103(a) as unpatentable over Wistendahl et al. (US 2002/
0056136 Al; May 9, 2002) ("Wistendahl") and Chang (US 5,543,851; Aug.
6, 1996). (Final Act. 3-7.)
The Examiner rejects claims 6 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Wistendahl, Chang, and Barton et al. (US 2007 /0300263
Al; Dec. 27, 2007). (Final Act. 8.)
The Examiner rejects claims 9 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Wistendahl, Chang, Lortz (US 6,349,410 Bl; Feb. 19,
2002), and Allport (US 6,097,441; Aug 1, 2000). (Final Act. 9-10.)
The Examiner rejects claims 10 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Wistendahl, Chang, and Lortz. (Final Act. 10.)
The Examiner rejects claims 12, 13, 26, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Wistendahl, Chang, and Daniels (US 2006/
0037044 Al; Feb. 16, 2006). (Final Act. 11-12.)
The Examiner rejects claims 14 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Wistendahl, Chang, Daniels, and Scott, III et al. (US
2005/0251835 Al; Nov. 10, 2005) ("Scott"). (Final Act. 12-13.)
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Application 12/851,036
The Examiner rejects claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Wistendahl, Chang, and McMaster (US 2009/0083815
Al; Mar. 26, 2009) ("McMaster"). (Final Act. 13-14.)
Issues
Did the Examiner err in finding that the combination of Wistendahl
and Chang teaches or suggests the limitations of "determining that a user
desires to select a user-selectable object in a television program being
presented at a first speed," and "in response to said determining ...
interacting with the user regarding the user-selectable object in the television
program being presented at the second speed, wherein the interaction
comprises receiving the user-selection of the user-selectable object" as
recited in claim 1?
Did the Examiner err in finding that the combination of Wistendahl,
Chang, and Barton teaches or suggests the limitation of "outputting said
visible indication on the television program being presented at the second
speed, where said visible indication is not output on the television program
being presented at the first speed," as recited in claim 6?
Did the Examiner err in finding that the combination of Wistendahl,
Chang, Lortz, and Allport teaches or suggests the limitation that the
presentation of the television program at a first speed is on first screen, that
the presentation of the television program at a second speed is on the second
screen, and that the user interaction occurs on the second screen, as per
claim 9?
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ANALYSIS
"determining that a user desires to select a user-selectable object"
and "in response to said determining ... receiving
the user-selection of the user-selectable object"
Appellants argue that the Examiner's findings conflate the step of
determining that a user desires to select a user-selectable object and the step
of interacting with the user comprising receiving the user selection. (Appeal
Br. 6-7; Reply Br. 6-8.) Specifically, Appellants argue that Wistendahl
does not disclose the recited determination, and that the portion of
Wistendahl cited by the Examiner, "simply states that the location at which a
pointer is pointing is detected upon [a] clicking of the pointer." (Appeal Br.
6.) Wistendahl teaches that a program for interactive TV systems allows a
user to point a remote control at an object on the screen during, e.g., the
presentation of a movie, and to click on the desired object in order to trigger
a display of additional content, such as trivia or graphics. (Wistendahl
Abstract, i-fi-1 42--43.) The movie is paused or slowed in order to allow the
user time to absorb the additional content. (Id. at i144.) We agree with
Appellants Wistendahl's teaching "would only correspond to a single step,"
and not multiple steps, and that it would not on its own support both the step
of determining that a user desires to select a user-selectable object, and the
step of user selection. (Appeal Br. 6.)
However, the Examiner cites the teaching of the user making a
selection in Wistendahl as teaching the recited determination of the user's
desire to select a user-selectable object, followed by pausing or slowing of
content and a subsequent user interaction. (Answer 3; Final Act. 4.) We
agree with the Appellants that the interaction taught in Wistendahl is one-
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way; the user selects an object and receives and views information on the
screen. (Wistendahl i-fi-142--43.) But the Examiner finds Chang teaches or
suggests both the step of determining that a user desires to select an object
and the subsequent selection step. (Answer at 3--4; Final Act. 4.)
Wistendahl shows a determination of user desire, Chang is used for the
interaction which "comprises receiving the user-selection of the user
selectable object." (Answer 4; Final Act. 4.)
In Chang, a caption being displayed with a television signal is
displayed on a screen, and a user may freeze the display to indicate a desire
to select a portion of the text to define or translate. (Chang Abstract, 5:25-
58, 6:16-58.) With respect to Chang, Appellants argue that Chang's
teaching of a pause command is "fundamentally different than the
'determining that a user desires to select a user-selectable object in a
television program' as provided in the claim" because no affirmative step of
interacting with the user occurs in response to the pause command. (Appeal
Br. 7; Reply Br. 6.) However, as noted by the Examiner (Answer 3--4) the
Appellants' Specification notes that a determination that a user desires to
select a user-selectable object may comprise an explicit command, including
a pause command, as well as non-command activity (such as determining
that the user is pointing at or near a user-selectable object). (Spec. i-fi-138-
40.) We disagree with the Appellants contention that "the system [of
Chang] continues to operate in the same manner whether paused or not."
(Appeal Br. 7; Reply Br. 6.) Chang teaches that a pause causes text in a
caption to be frozen so the user may select words for definition or
translation. (Chang 6:24--27.) We agree with the Examiner that "Chang
discloses a desire to select caption via a pause command and in response to
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the pause/determining, presenting the program in the paused state prior to
the selecting of the objects." (Advisory Action of June 7, 2013 p. 2.) Thus,
we agree with the Examiner's findings and conclusions on this point.
We are not persuaded of error in the Examiner's determination that a
combination of the cited portions of Wistendahl and Chang teaches or
suggests the two steps of determining that a user desires to select a user-
selectable object and, separately, receiving the user selection of the user-
selectable object, as in the disputed limitations of claim 1. Accordingly, we
sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 1, and the
rejections of claims 2-5, 7, 8, and 11, not separately argued with specificity.
Additionally we sustain the Examiner's 35 U.S.C. § 103(a) rejections of
claims 10, 12-19, 21, 22, and 24--29, argued on substantially the same basis.
With respect to commensurate limitations of Claim 30, Appellants
argue that; "[t]he examiner has not identified what action in either
Wistendahl or Chang is specifically an indication that the user desires to
select the user-selectable object in a television program." (Appeal Br. 8.)
As we have discussed above, we agree with the Examiner that, "Chang
discloses presenting the program, pausing the program, [and] selection of
user selectable objects during the paused program. (Answer 5.) We agree
with the Examiner's findings and conclusions with respect to claim 30 and
sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 30.
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"outputting said visible indication on the television program being
presented at the second speed, where said visible indication is not output on
the television program being presented at the first speed"
With respect to claim 6, Appellants argue that the combination of
Wistendahl, Chang, and Barton do not teach the limitation that the user
interaction includes "outputting said visible indication on the television
program being presented at the second speed, where said visible indication is
not output on the television program being presented at the first speed" and
that Barton's menu does not indicate that an object in the television program
is user-selectable. (Appeal Br. 9.) Appellants are arguing the references
individually when the Examiner is relying on the combination of references
as teaching the recited limitation. See In re Merck & Co., Inc., 800 F .2d
1091, 1097(Fed. Cir. 1986) (one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references.) The Examiner explains that Barton is used for the disclosure of
a visible indication regarding user selectable objects being presented at the
second presentation speed (pause) and not for a disclosure of selectable
objects at the first speed. (Final Act. 8; Answer 6.) We are not persuaded of
error in this finding of the Examiner, and sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of claim 6, and of claim 20, argued on the same basis.
"said presenting the television program at a second speed comprises
presenting the television program on a second screen" and "said interacting
with the user comprises interacting with the user on the second screen"
With respect to claim 9, Appellants argue that the cited combination
of prior art does not teach or suggest that presentation on a second screen at
a second speed and interactions on a second screen occur in response to a
determination that the user desires to select a user-selectable object. (Appeal
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Br. 9-10; Reply Br. 10-12.) The Examiner cites Lortz as teaching
presentation at a first speed and second speed, and as teaching interactions
with a user on the second screen. (Final Act. 9.) However, the Examiner
finds that the combination of Wistendahl, Chang, and Lortz does not teach
or suggest presenting the program at the second speed on a second screen.
(Id.) For this, the Examiner cites Allport's disclosure that a system with two
displays may provide a user with the ability to request that the system swap
the programs shown on each display, so the images shown on one is shown
on the second and vice versa. (Id. at 10, citing Allport 7:4--7, 8:3--4, 23-24.)
Appellants argue that neither Lortz nor Allport provide interaction
with the television program presented on the second screen. (Answer 10;
Reply 11.) We agree. The claim requires that the television program be
presented at a second speed on a second screen and that the user interaction
occur on that second screen. Allport's swapping presents a program on
either of two alternate screens with no indication that this occurs in response
to a determination of user desire for interaction through selection of a user-
selectable object, or at a different speed on the second screen. The
Examiner's rationale for including Allport in the combination is "to be
certain the user can swap displays so that previously watched program can
still be displayed to the user," (id. at 10) however, this is inconsistent with
the claim, in which the programming is presented on a second screen for
interaction. Allport' s second screen and the use of that screen for viewing
does not provide enough to teach or suggest the claimed presentation on two
screens at different speeds and with user interaction on a second screen.
Thus, we disagree with the Examiner that the combination of
Wistendahl, Chang, Lortz, and Allport teaches or suggests the disputed
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limitations. Accordingly, we will not sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of claims 9 and 23.
DECISION
We affirm the Examiner's decision rejecting claims 1-8, 10-22, and
24--30.
We reverse the Examiner's decision rejecting claims 9 and 23.
Pursuant to 37 C.F.R. § 1.136(a)(l )(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED-IN-PART
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