Ex Parte Khalsa

Patent Trial and Appeal Board

Feb 6, 2017

13958873 (P.T.A.B. Feb. 6, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/958,873 08/05/2013 Jagjeet Singh KHALSA PU130081 6239
24498 7590 02/08/2017
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
EXAMINER
SAINT CYR, JEAN D
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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):
uspto@technicolor.com
pat. verlangieri @ technicolor.com
russell. smith @ technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMSON LICENSING1
Appeal 2016-001874
Application 13/958,873
Technology Center 2400
Before BRUCE R. WINSOR, JON M. JURGOVAN, 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 1—4, 6—12, 14—16, and 18—22, which are all the claims pending in this
appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Jagjeet Singh KHALSA is named as the inventor.
Appeal 2016-001874
Application 13/958,873
Introduction
Appellants’ claimed invention relates to user interfaces and in
particular to “providing a permissive auxiliary information user interface.”
Spec. 1. Claim 1 is illustrative:
1. A method, comprising:
providing for selection by a user at least one type of media asset
auxiliary information to be displayed during a trick mode operation of
a media asset;
receiving the type of media asset auxiliary information selected
by the user;
storing the selected type of media asset auxiliary information in
a memory device; and
providing for display media asset auxiliary information
corresponding to the selected type of media asset auxiliary
information, the media asset auxiliary information provided based on
invoking the trick mode operation.
App. Br. 33 (Claims App’x).
References and Rejections
Claims 1—4, 7—12, 15, 16, 18, and 20-22 stand rejected under 35
U.S.C. § 103(a) as obvious over Fitzsimmons (US 2012/0106920 Al; May
3, 2012) and Min (US 2009/0319479 Al; Dec. 24, 2009). Final Act. 2.
Claims 6, 14, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Fitzsimmons, Min, and Roenning (US 2011/0307527 Al; Dec.
15,2011). Final Act. 9.
APPELLANTS’ CONTENTIONS
Appellants contend the Examiner errs by:
(1) finding Min teaches or suggests “providing for selection by
a user at least one type of media asset auxiliary information to
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be displayed during a trick mode operation of a media asset,” as
recited by claim 1 (App. Br. 18—19);
(2) finding Fitzsimmons teaches or suggests “providing for
display media asset auxiliary information corresponding to the
selected type of media asset auxiliary information, the media
asset auxiliary information provided based on invoking the trick
mode operation,” as recited by claim 1 (id.);
(3) concluding it was obvious to combine the teachings of Min
and Fitzsimmons, because (a) there are no “factual findings
with regard to why there would be a probability of a successful
combination of the references,” (id. at 20), (b) they address
different problems using different technologies (id. at 21—23),
and (c) “Fitzsimmons teaches away from the combination” (id.
at 24);
(4) finding Fitzsimmons teaches “wherein the type of media
asset auxiliary information comprises at least one selected from
a group of. . as recited in claim 3 (id. at 25—28);
(5) finding Fitzsimmons teaches “wherein the media asset
auxiliary information is synchronized to the media asset,” as
recited in claim 4 (id. at 28—30); and
(6) finding Fitzsimmons teaches “the user interface permitting
the user to perform at least some trick mode operations on the
media asset auxiliary information currently displayed on the
user interface,” as recited in claim 8 (id. at 31).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions of error. We disagree with Appellants’ conclusions. We adopt
the Examiner’s findings and reasons as set forth in the Final Rejection from
which this appeal is taken and as set forth in the Answer. We provide the
following discussion for emphasis.
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Claim 1
In rejecting claim 1, the Examiner finds Fitzsimmons teaches all
requirements except for the step of “providing for selection by a user at least
one type of media asset auxiliary information to be displayed during a trick
mode operation of a media asset.” Final Act. 2—A (citing Fitzsimmons ]Hf 15,
27-28, 36-37, 40-A2, 4AA5, 47-A9, Fig. 7); see also Ans. 13-14. The
Examiner then finds Min’s disclosure of a method for user selection of
auxiliary information teaches this step. Final Act. 4 (citing Min H 21, 33—
34, 54, 60, Figs. 7A—B); see also Ans. 13—14 (additionally citing Min | 59).
Appellants argue that neither Fitzsimmons nor Min teaches “providing
for selection the type of media asset auxiliary information.” App. Br. 19.
We find this unpersuasive. Min’s disclosure of allowing user selection of
media asset auxiliary information teaches “providing for selection by a user
at least one type of media asset auxiliary information,” as recited, because,
as the Examiner explains, and we agree, any particular media asset auxiliary
information necessarily has a type. Ans. 13.
One of ordinary skill would understand claim 1 to encompass the
plain meaning of the claim language. While Appellants’ Specification
teaches embodiments in which a user designates types of auxiliary
information to display separately from selection of media assets (see Spec.
3:7—13), it would be unreasonable to limit the claim to those embodiments,
because that would be inconsistent with the plain meaning of the claim
language. See, e.g., E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369
(Fed. Cir. 2003) (properties of preferred embodiments described in the
specification not recited in a claim do not limit the reasonable scope of the
claim); see also In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)
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(“The invention disclosed . . . may be outstanding in its field, but the name
of the game is the claim.”).
Appellants also argue “Min fails to discuss displaying the auxiliary
information during a trick mode operation.” App. Br. 19. This also does
not persuade us. Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
“It is the combination of Fitzsimmons and Min which teaches the claim
limitations in question.” Ans. 13.
Fitzsimmons teaches that media asset auxiliary information can be
displayed “together with” the media asset when “the user enters a rewind
command.” (147). Appellants disclose rewinding as an example type of a
trick mode operation (Spec. 3:28—29). Appellants do not persuade us the
Examiner errs in finding Fitzsimmons teaches displaying the auxiliary
information “based on invoking the trick mode of operation,” as recited. See
Final Act 3^4. The Examiner also finds, and we agree, that, in view of
Fitzsimmons, Min’s disclosure of user selection of auxiliary information
teaches the requirement for selecting information that is “to be displayed
during a trick mode,” as recited in the “providing for selection” step. See
Ans. 13—14. We also agree with the finding that, for the “providing for
display” step, Fitzsimmons’ disclosure of displaying auxiliary information
during a trick mode, in view of Min, teaches the limitation that the auxiliary
information “correspond[s] to the selected type of media asset auxiliary
information” as recited. Id.
In response to Appellants’ argument the Examiner does not provide a
proper factual basis to combine Min and Fitzsimmons (App. Br. 20), the
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Examiner finds “[o]ne would have been motivated to make the combination
as it adds flexibility to the selection of auxiliary data being presented. The
user’s viewing experience would have been improved because of the
personalized auxiliary data displayed.” Ans. 14. Appellants reply that this
“essentially argues that such a combination would be common sense, but
fails to provide any support for such an argument.” Reply Br. 7 (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We disagree.
A reason to combine teachings from the prior art “may be found in
explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved.” IVMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed.
Cir. 1998)). “[A]n analysis of obviousness . . . may include recourse to
logic, judgment, and common sense available to the person of ordinary skill
that do not necessarily require explication in any reference or expert
opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009).
The Examiner has provided sufficient “reasoning with some rational
underpinning to support the legal conclusion of obviousness” {Kahn, 441
F.3d at 988) for combining Fitzsimmons’ teachings, which make it “more
likely that the auxiliary data has value to the user [to increase] the value of
the time-shifted data to the content owner, the content provider and
advertisers” (Fitzsimmons Abstract), and Min’s teachings for user selection
of auxiliary information, by which “the user’s feeling of satisfaction about
watching or listening to the content can be enriched through an auxiliary
component” (Min | 65). We note both Fitzsimmons and Min address issues
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related providing auxiliary information of interest to a user in the field of “a
permissive auxiliary information user interface” as disclosed by Appellants
(Spec. 1:10-23).
We also disagree with Appellants’ arguments that Fitzsimmons and
Min are in completely different fields and that Fitzsimmons teaches away
from the combination with Min. App. Br. 21—25. As discussed above, the
technologies of both Fitzsimmons and Min are related to the same field as
the technology disclosed and claimed by Appellants. As for teaching away,
“that two inventions were designed to resolve different problems ... is
insufficient to demonstrate that one invention teaches away from another.”
Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed.
Cir. 2004). A teaching away requires a reference to actually criticize,
discredit, or otherwise discourage the claimed solution. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants’ contention that because
Fitzsimmons paragraph 45 states a preference to automatically acquire and
display auxiliary data “without any user intervention” does not persuade
us. See App. Br. 24. This does not amount to a teaching away. That same
paragraph immediately continues, “[t]hat being said, a user may be able to
program ...” and describes a variety of options that involve user input.
Accordingly, we sustain the rejection of claim 1, and along with it the
rejection of claims 2, 6, 7, 9, 10, 14, 15, and 18—22, for which Appellants
provide no separate arguments.
Claim 3
In rejecting claim 3, which depends from claim 1, the Examiner finds
Fitzsimmons teaches the recited requirement for the media asset auxiliary
information to be selected from group of specific types of information
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related to the media asset including “merchandise information relating to a
theme of the media asset.” Final Act. 5 (citing Fitzsimmons 11—12, 29,
31, 47-48). Appellants argue the Examiner errs in this finding because
“[a]ll that Fitzsimmons discusses is specific types of auxiliary data that are
not linked to the features of the claims.” App. Br. 26.
The Examiner answers that “[rjelated to is a broad term” and finds the
Pepsi™ logo of Fitzsimmons paragraph 47 is an example of a product (the
claimed “merchandise information”) related to the theme of a sitcom (the
claimed “media asset”) because both “are generally regarded as ‘fun’ things,
with‘fun’being the theme.” Ans. 15. Appellants argue the Examiner in
essence reads “relating to” out of the claim, that there is “nothing in
Fitzsimmons about ‘fun’ things or a ‘fun’ theme,” and the Examiner’s
interpretation “goes well beyond the scope of Fitzsimmons.” Reply Br. 9—
10.
Appellants do not persuade us. The Examiner’s finding on the
thematic relationship between the example of a sitcom as the media asset
and the Pepsi™ logo as the auxiliary information is reasonable. We further
note Fitzsimmons also discloses that auxiliary information may be a
commercial (134), which ordinarily skilled artisans understand often include
products related to the theme of a program (e.g., a sporting event, which is
one of the media asset examples of 111), which is another example of how
Fitzsimmons teaches or suggests media asset auxiliary information that
includes “merchandise information relating to a theme of the media asset,”
as recited.
Accordingly, we sustain the rejection of claim 3. We also sustain the
rejection of claim 11, which Appellants argue together with claim 3.
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Claim 4
In rejecting claim 4, which depends from claim 1, the Examiner finds
Fitzsimmons teaches the recited requirement that “wherein the media asset
auxiliary information is synchronized to the media asset.” Final Act. 5
(citing Fitzsimmons ]Hf 9, 44). Appellants argue the Examiner errs in this
finding because “all that Fitzsimmons discusses (including the sections
recited by the Examiner) is tailoring auxiliary data to a specific date, time or
a user.” App. Br. 29.
The Examiner answers by finding “[t]he common meaning of
synchronized is that things happen at the same time” and that Fitzsimmons
paragraph 33’s disclosure of displaying the auxiliary data using a picture-in-
a-picture technique teaches the claimed synchronization. Ans. 15.
Appellants reply that there is no support for the Examiner’s interpretation of
synchronized and argue it “ignores the definition of synchronized in the
[Specification].” Reply Br. 10-11 (citing Spec. 12:3—30).
Appellants do not persuade us. Appellants’ Specification discusses
explicit synchronization and implicit synchronization, but does not define or
limit the meaning of the term synchronization itself. Ordinary meanings of
“synchronize” (the verb form of synchronization) are “to happen at the same
time” and “to represent or arrange (events) to indicate coincidence or
coexistence” (see Merriam-Webster’s Collegiate Dictionary 1196 (10th ed.
1999); accord www.meniam-webster.com/dictionary/synchronize, last
accessed January 31, 2017). These ordinary meanings are consistent with
Appellants’ use of the term in the Specification and Claims. We also note
Fitzsimmons’ disclosure that auxiliary information such as commercials that
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may be played, paused, or rewound “together with” the media asset (| 47)
teaches they are synchronized, as recited by claim 4.
Accordingly, we sustain the rejection of claim 4. We also sustain the
rejection of claim 12, which Appellants argue together with claim 4.
Claim 8
In rejecting claim 8, which depends from claim 1, the Examiner finds
Fitzsimmons teaches the recited requirement for “wherein the media asset
auxiliary information is provided on a user interface on the display screen,
the user interface permitting the user to perform at least some trick mode
operations on the media asset auxiliary information currently displayed on
the user interface.” Final Act. 6 (citing Fitzsimmons 127, Fig. 7).
Appellants argue the Examiner errs in this finding because “all that
Fitzsimmons discusses (including the sections recited by the Examiner) is
recording, pausing or rewinding media asset content.” App. Br. 31.
The Examiner answers by finding Fitzsimmons “discuss[es] that the
auxiliary data is played together in reverse or forward with the program
when trick mode is executed. Thus trick mode is performed on the media
asset auxiliary information itself.” Ans. 16 (citing Fitzsimmons 47-48).
Appellants reply that all the cited paragraphs “discuss is that a logo is
displayed during rewind or fast forward operations'1'’ (Reply Br. 13) and that
“[tjhere is nothing in Fitzsimmons, about permitting a user to perform a
trick mode operation on the media asset auxiliary information” {id. at
14).
Appellants again do not persuade us. Fitzsimmons discusses more
than simply display of a logo during rewind or fast forward. Fitzsimmons
uses the Pepsi™ logo as an example, mentioning “different auxiliary data”
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(147) (e.g., as discussed supra, a commercial (134)), and also discusses
pausing, rewinding, and fast-forwarding “both sets of data” (i.e., both the
auxiliary data and the program) (see ]Hf 47-48 (explaining the logo is an
example of auxiliary data which “does not change during playback,” which
plainly implies other types of auxiliary data will change)). Appellants do not
persuade us the Examiner errs in finding that, by teaching user-initiated
rewind and fast-forward of both the media asset and the auxiliary
information (which we note teaches they are synchronized to each other),
Fitzsimmons teaches permitting the user to perform a trick mode operation
on the displayed auxiliary information, as recited by claim 8.
Accordingly, we sustain the rejection of claim 8. We also sustain the
rejection of claim 16, which Appellants argue together with claim 8.
DECISION
For the above reasons, we affirm the rejection of claims 1—4, 6—12,
14—16, and 18—22. 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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