Ex Parte Kirsche

Patent Trial and Appeal Board

Dec 9, 2014

11561535 (P.T.A.B. Dec. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD KIRSCHE
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Appeal 2012-004909
Application 11/561,535
Technology Center 2400
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Before JEAN R. HOMERE, JEFFREY S. SMITH, and
LINZY T. McCARTNEY, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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STATEMENT OF THE CASE
On September 2, 2014, we issued a decision (1) affirming the
Examiner’s rejection of claims 1–17, 21, 23, and 24; (2) reversing the
Examiner’s rejection of claims 25–27; and (3) entering a new ground of
rejection for claims 25–27 for lack of written description. (Decision on
Appeal 7.) Appellant requests rehearing so we may reconsider our decision
to enter a new ground of rejection for claims 25–27. (Req. for Reh’g 2–4.)
DISCUSSION
Claim 25 recites “selecting and playing audio associated with the
content showing in one of the first and second display portions as a function
of the type of content showing in each of the first and second display
portions.” (App. Br. 16 (emphases added).) Claim 25 depends from claim
1, which recites a method that “display[s] content . . . on the first portion of
the display and simultaneously display[s] content . . . on the second portion
of the display.” (Id. at 12. (emphases added).) Claims 26 and 27 depend
from claim 25. (Id. at 16.)
We construed claim 25 to require “selecting and playing audio . . . as a
function of the type of content showing in [both] of the first and second
display portions.” (See Decision on Appeal 6.) Under this construction, we
found Appellant’s specification lacks written description support for claim
25 because the specification “does not disclose selecting and playing audio
as a function of the content showing in each of (i.e., both)” the first and
second portions of a display. (Id. at 6–7.)
Appellant does not contest our construction of claim 25. However,
Appellant contends our new ground of rejection is erroneous because, in
Appellant’s view, the following sentence from Appellant’s specification
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provides written description support for our interpretation of claim 25:
The audio control may also include preventing audio from one
or more of the display portions, such as but not limited to as a
function of the remote control or user identity (one user may be
dominate [sic] relative to another user, etc.) and/or as a function
of content (sporting events, for example, may be controlled to
be silent relative television viewing).
(Spec. 7:12–16 (emphases added); see Req. for Reh’g 2–4.) Appellant
acknowledges this sentence does not provide verbatim support for claim 25,
but Appellant argues the sentence describes selecting audio by considering
the content of two portions of a display and therefore provides adequate
written description support for claim 25. (See Req. for Reh’g 3.)
We disagree. To satisfy the written description requirement, “the
disclosure of the application relied upon [must] reasonably convey[] to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). Put differently, “the description must
clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.” (Id. (internal quotation marks omitted
and alteration in original).) For the reasons discussed below, Appellant’s
disclosure falls well short of this standard.
First, the single sentence cited by Appellant does not explain how the
“audio control . . . prevent[s] audio” as function of content, and contrary to
Appellant’s arguments, the word “relative” does not make clear the
invention considers content shown in first and second portions of a display
when doing so, (see Req. for Reh’g 3). Any number of methods that do not
involve considering content in both portions of a display could “prevent[]
audio” as a function of content in a manner that renders a “sporting event . . .
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silent relative television viewing.” For example, the invention could always
mute sporting events, mute sporting events only when the display has more
than one portion, or mute the entire display whenever sporting events are
shown in a portion of the display. In each example, the content of one
portion of the display—the portion showing the sporting event—determines
whether, in the words of the cited sentence, the “audio control . . . include[s]
preventing audio . . . as a function of content.” Therefore, merely stating
that the invention “may . . . prevent[] audio” as a function of content such
that a “sporting event . . . may be controlled to be silent relative television
viewing” would not have reasonably conveyed Appellant possessed a
method that “select[s] and play[s] audio . . . as a function of the type of
content showing in [both] of the first and second display portions” as recited
in claim 25.
Second, Appellant assumes one of skill in the art would have
understood “television viewing” as a type of the claimed “content.” But
Appellant’s specification indicates “content” concerns information,
particularly information conveyed by a display device. (See Spec. 1, 4; App.
Br. 15.) The term “television viewing” generally refers to an act of watching
television, not information transmitted by a display device.1 Accordingly,
even if one of skill in the art would have understood the word “relative” to
require considering both “sporting events” and “television viewing,” that

1 (See, e.g., Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/viewing (defining “viewing” as “an act of seeing,
watching, or taking a look; especially : an instance or the practice of
watching television”).)
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comparison would involve comparing a sporting event to an act not to
“content.”2
Third, the cited sentence fails to describe the subject matter recited in
claim 25 because the result described by the sentence is the opposite of the
result achieved by the claimed method. Instead of “selecting and playing
audio” as recited in claim 25, the cited sentence describes only “preventing
audio.” Although Appellant equates preventing audio from a display portion
with selecting audio from another display portion, Appellant’s position
assumes audio exists for another display portion. Nothing in the cited
sentence describes this.3
Fourth, perhaps recognizing the cited sentence’s deficiencies,
Appellant contends that one of skill in the art would have understood
Appellant possessed the claimed subject matter because the technology at
issue was “mature and predictable . . . and the level of skill of an ordinary
practitioner in the art [was] high.” (Req. for Reh’g 4.) But Appellant has
offered no evidence to support Appellant’s characterization of the

2 Appellant’s use of the adjective “relative” instead of the prepositional
construct “relative to” in the clause “sporting events . . . may be controlled to
be silent relative television viewing” makes it less than clear the sentence
describes comparing “sporting events” and “television viewing.” Appellant
has not modified the sentence to clarify its meaning, nor has Appellant
asserted Appellant mistakenly used the word “relative.” Given this, and
Appellant’s use of “relative to” in an earlier clause in the same sentence, it
appears Appellant intended to use “relative” in this manner.
3 In the Decision on Appeal, we mistakenly recited the claim language when
describing this sentence. (See Decision on Appeal 6 (stating the sentence at
issue “essentially describes selecting and playing audio as a function of
content generally”).) We now clarify that, as stated in the specification, the
sentence describes “preventing audio . . . as a function of the content.” (See
Spec. 7:12–16.)
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technology or the level of skill in the art. To the extent Appellant suggests
the sentence, in light of the alleged technological state and level of skill in
the art, would have made the claimed subject matter obvious to one of skill
in the art, “a description that merely renders the invention obvious does not
satisfy the [written description] requirement.” Ariad, 598 F.3d at 1352.
In sum, to find Appellant possessed the method of “selecting and
playing audio” recited in claim 25, one of skill in the art would have had to
(1) conclude “selecting and playing audio” is the same as “preventing
audio”; (2) ignore the commonly understood meaning of “television
viewing”; and (3) divine the claimed method from a single sentence that
describes a different result—namely, “preventing audio”—without
explaining how to achieve that result. A disclosure that requires such
contortions and guesswork does not “reasonably convey[] to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date.” Id. at 1351.
DECISION
For the reasons set forth above, we grant Appellant’s request to the
extent we have reconsidered our decision, but we deny Appellant’s request
to make changes to the decision. Our decision on Appellant’s Request for
Rehearing is final for the purposes of judicial review. See 37 C.F.R.
§ 41.52(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED
kis