Ex Parte McCoy et al

Patent Trials and Appeals Board

Apr 30, 2019

13077969 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/077,969 03/31/2011
37123 7590 04/30/2019
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Charles McCoy
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.
9212-92457
[201003709.01]
EXAMINER
6489
CHIUSANO, ANDREW TSUTOMU
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
04/30/2019 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 CHARLES MCCOY, LEO PEDLOW, LING JUN WONG, and
TRUE XIONG
Appeal2018-004550
Application 13/077,969
Technology Center 2100
Before HUNG H. BUI, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-5, 7, 8, 10-15, 17, 18, and 20-24, which constitute all pending
claims. See Final Act. l; App. Br., Claims App'x 1-9. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Sony Corporation and Sony Network Entertainment
International LLC as the real parties in interest. App. Br. 3.
Appeal2018-004550
Application 13/077,969
Introduction
Appellants describe the invention as relating to displayed menus.
Spec. 1 :23-24. Appellants describe embodiments "for use in allowing
system menus for different consumer electronic (CE) devices to be
customized and distributed ... to the CE devices after the CE devices are
manufactured and shipped. Id. at 2: 13-16.
Claim 1 is illustrative:
1. A method of distributing system menus, the
method comprising:
receiving a request, from over a distributed network, to
communicate a system menu to a requesting consumer
electronic (CE) device;
identifying the CE device;
identifying a user interface corresponding to the CE
device;
identifying a system menu intended to be utilized by the
CE device, wherein the system menu comprises a plurality of
menu items wherein each menu item of the system menu
corresponds with a different function that is configured to be
activated in response to an interaction by an end user with the
menu item when the system menu is displayed by the CE
device, and wherein the identifying the system menu intended
to be utilized by the CE device comprises identifying that the
CE device is associated with a first registered organization of
multiple different previously registered and separate
organizations with each having multiple different CE devices
associated with one of the multiple organizations and wherein
the association with the first registered organization is not
dependent on the capabilities of the CE device and not
dependent on the communication connection, and identifying
the system menu corresponding to the first registered
organization and the system menu previously defined and
exclusively corresponding to the first registered organization;
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wherein the system menu is defined according to a base
cell where each of the menu items of the system menu has
dimensions that are a whole number multiple of the base cell,
and wherein the system menu layout and each of the menu
items of the system menu layout are defined as whole number
multiples of the base cell such that each of the menu items of
the system menu are not smaller than the width and height of a
single base cell; and
communicating the identified system menu to the CE
device.
App. Br., Claims App'x 1-2.
Re} ections and References
Claims 1, 5, 7, 15, and 20-24 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Bailey (US 2007/0038727 Al; Feb. 15, 2007) and
Morris (US 2008/0072252 Al; Mar. 20, 2008). Final Act. 3-7.
Claims 3, 4, 17, and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bailey, Morris, and Angwin (US 6,477,576 B2; Nov. 5,
2002). Final Act. 7-8.
Claims 8, 10-12, and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Lee (US 2007/0277105 Al; Nov. 29, 2007), Morris, and
Bailey. Final Act. 9-12.
Claims 3, 4, 17, and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Lee, Morris, Bailey, and Kobayashi (US 2007 /0061757
Al; Mar. 15, 2007). Final Act. 12-13.
ANALYSIS
We have reviewed the rejections in light of Appellants' contentions.
Appellants waive unmade arguments. 37 C.F.R. § 4I.37(c)(l)(iv); see also
Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ( cited
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Application 13/077,969
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)). We
disagree with Appellants' conclusions. Instead, as consistent with our
discussion below, we adopt the Examiner's findings and reasons as set forth
in the Final Office Action from which this appeal is taken and as set forth in
the Answer. We concur with the Examiner's conclusions. We highlight the
following for emphasis.
Independent Claims 1 and 15
Appellants argue claims 1 and 15 together as a group, from which we
select claim 1 as representative. Br. 12-22; 37 C.F.R. 4I.37(c)(l)(iv). We
address Appellants' arguments seriatim.
1. Identifying the CE Device
Appellants contend the Examiner errs in finding Bailey teaches
"identifying the CE device," as recited. Br. 12-13. In particular, Appellants
argue Bailey teaches identifying hotel rooms that are assigned IP addresses,
"and the 'room' is not a CE device and does not identify a CE device." Id.
at 12. The Examiner responds that "[a] person having ordinary skill in the
art would recognize that identifying a computer as being in a particular room
or belonging to a particular user, using the IP address information from the
network request, would constitute 'identifying the CE device' as claimed."
Ans. 3; see also id. at 2 (citing Bailey ,r,r 67---68, 81, and Fig. 4).
Appellants' arguments are not persuasive. Bailey teaches placing an
electronic tracking "cookie" on a user's computer ( CE device) to identify
requests originating from that device. Bailey ,r 67. Bailey also teaches
using the IP address associated with a room to identify requests from a
particular CE device. Id. at 68. Appellants' Specification does not limit the
method of "identifying the CE device" beyond the ordinary meaning of the
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terms as would have been understood by an ordinarily skilled artisan. See
Spec. 18:18-32 (cited at Ans. 2 (explaining, e.g., a CE device may be
identified "through other methods")). Under the broadest reasonable
interpretation (BRI) of the terms, "identifying the CE device" reads on
Bailey's identifying of computers based on cookies or IP addresses.
2. Identifying a Corresponding User Interface
Appellants contend the Examiner errs in finding Bailey teaches
"identifying a user interface corresponding to the CE device," as recited. Br.
14--15. In particular, Appellants argue the Examiner errs by relying on
Bailey's disclosure that "simply describes in generic terms a 'room service
user interface' menu that is to be displayed." Id. at 14 (citing Bailey ,r 86);
see also id. at 15 (further arguing "the cited room service menu does not
'correspond to' the identified CE device").
This argument is unpersuasive. In identifying Specification disclosure
for "identifying a user interface corresponding to the CE device," Appellants
point to step 920 of Figure 9. App. Br. 4. In this step, "a user interface (UI)
type of the CE device is identified." Spec. 20:30-31. The disputed
limitation, however, does not require identifying a type ofUI for the CE
device; instead, the disputed limitation broadly requires identifying a UI that
corresponds to the CE device.
It is well settled that, during examination, the PTO must interpret
terms in a claim using "the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
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1997). However, "[a]bsent claim language carrying a narrow meaning, the
PTO should only limit the claim based on the specification or prosecution
history when those sources expressly disclaim the broader definition." In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Thus, "while it is true that
claims are to be interpreted in light of the specification and with a view to
ascertaining the invention, it does not follow that limitations from the
specification may be read into the claims." Sjolund v. Musland, 847 F.2d
1573, 1581 (Fed. Cir. 1988). As the court explained in In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989), the rationale for this approach to claim
interpretation is that "during patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed."
Here, under the BRI, Appellants do not persuade us the Examiner errs
in finding that "identifying a user interface corresponding to the CE device"
reads on Bailey's disclosure of identifying a particular UI for CE devices
that are at a particular hotel. See Final Act. 3; Ans. 3 (both citing Baily ,r 86
(teaching hotel-specific Uis so that a CE device identified as being at a
particular location will be provided with a corresponding particular user
interface).
3. Identifying an Associated First Registered Organization
Appellants contend the Examiner errs in finding Bailey teaches
"identifying that the CE device is associated with a first registered
organization of multiple different previously registered and separate
organizations," as recited. Br. 16-17. In particular, Appellants contend the
Bailey's teaching of providing different content for devices at different
hotels does not constitute "is not 'identifying the CE device', and is not
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identifying the CE device is associated with a registered organization." Id.
(citing Bailey ,r,r 47--49, 50, 57, and Figs. 3--4 (originally cited by the
Examiner at Final Act. 3)). This argument is unpersuasive.
Appellants construe Bailey too narrowly. "A reference must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect." EWP
Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985)
( emphasis omitted). As discussed above, Bailey paragraphs 67---68 disclose
identifying that an Internet request from a device associated with a particular
hotel room, which teaches "identifying the CE device," as recited. As also
discussed above, Bailey paragraph 86 teaches identifying that a request from
a CE device is associated with a particular hotel. Bailey also teaches
identifying a particular CE device is a regular visitor of a particular hotel or
a chain of hotels, and allows for tracking of particular user patterns or
requests. Bailey ,r 67. Bailey further teaches using of a centralized data
server that provides CE devices with hotel specific services. See id. Fig. 3,
,r,r 4 7--49.
Bailey specifically teaches tracking user (CE) device associations with
particular hotels and/ or a chain of hotels based on stored cookies or stored
ID and password. Bailey ,r 67. The teaching of determining a CE device's
stored association with a particular hotel is within the scope "identifying that
the CE device is associated with a first registered organization," as recited.
The disclosure of providing this functionality from a centralized server for
multiple hotels teaches that the particular hotel is "a first registered
organization of multiple different previously registered and separate
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organizations," as recited. Thus, Appellants do not persuade us the
Examiner errs in determining Bailey teaches this disputed limitation.
4. System Menu Defined according to a Base Cell
Appellants contend the Examiner errs in finding Morris teaches
wherein the system menu is defined according to a base
cell where each of the menu items of the system menu has
dimensions that are a whole number multiple of the base cell,
and wherein the system menu layout and each of the menu
items of the system menu layout are defined as whole number
multiples of the base cell such that each of the menu items of
the system menu are not smaller than the width and height of a
single base cell,
as recited. Br. 17-19. In particular, Appellants argue
Morris does not describe a system menu having menu items and
that each menu item of the system menu corresponds with a
different function and that each of the menu items has
dimensions that are a whole number multiple of the base cell.
To the contrary, Morris specifically describes and shows that
menu items do not have dimensions that are a whole number
multiple of a base cell. Morris instead defines a grid that is
used to specify where elements are to be displayed. Nothing
in Morris states that displayed elements are a whole number
multiple of any grid or grid element.
Br. 18. This argument is unpersuasive.
Morris's teaching is broader than what Appellants describe. For
example, Appellants' statement that Morris "specifically describes and
shows that menu items do not have dimensions that are a whole number
multiple of a base cell" (Br. 18) is inconsistent with Morris's disclosure that
items "can be positioned within the modular grid 102 by specifying one or a
group of the grid elements in which to display the media content." Morris
,r 19 ( specifically disclosing that "menu text" is a type of item for such
positioning). Ordinarily skilled artisans would have understood the display
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grid illustrated in Figure 1 of Morris shows a "grid of display elements"
(i1 18) in which a single element corresponds to a "base cell," and that each
of the illustrated items are positioned within a whole number of these grid
elements (base cells). Thus, Appellants do not persuade us the Examiner
errs in finding Morris teaches this disputed limitation.
5. Inherency and Hindsight
Appellants contend that in relying on Morris to teach the disputed
limitation just discussed, "the Examiner appears to be relying on inherency."
Br. 20. As the Examiner responds, however, and we agree, the rejection
does not rely on inherency. Ans. 4 (pointing out the § 103 rejection takes
into account both a reference's teachings and "the inferences which one
skilled in the art would reasonably be expected to draw therefrom" ( quoting
In re Preda, 401 F.2d 825, 826 (CCPA 1968))).
Appellants also contend the Examiner engages in "impermissible
hindsight." Br. 20. That argument, however, is unpersuasive when the
Examiner provides articulated reasoning with rational underpinning for the
proposed combination, and the Examiner's articulated reasoning is not
disputed. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016)
(Appellant's hindsight argument is of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references).
Moreover, "[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
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In KSR, the Supreme Court stated that "[a] factfinder should be aware,
of course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning." KSR Int'! v. Teleflex, Inc., 550
U.S. 398,421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)).
Nevertheless, the Court also qualified the issue of hindsight by stating that
"[r]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it."
Id. Furthermore, Appellants have not provided any objective evidence of
secondary considerations, which our reviewing court guides "operates as a
beneficial check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese
and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Here, the Examiner determines an ordinarily skilled artisan would
have been motivated to modify Bailey's system menu "to include the grid
layout of Morris because it allows an interface to adapt to different aspect
ratios of different display devices." Final Act. 4 (citing Morris ,r 5).
Appellants do not explain how or why the Examiner errs in making this
determination. On this record, and by the preponderance of evidence, we
find the Examiner set forth sufficient "articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
Accordingly, we sustain the§ 103 rejection of claims 1 and 15.
Independent Claim 8
Appellants contend the Examiner errs in the rejection of claim 8 by
relying on Bailey to teach
associating the system menu with a first group of CE
devices associated exclusively with a first registered
organization of multiple different previously registered and
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separate organizations with each organization having multiple
different CE devices associated with one of the multiple
organizations, wherein the association of the system menu with
the first group of CE devices associated with the first registered
organization is not dependent on the capabilities of the CE
devices of the first group and not dependent on the
communication connections of the first group of CE devices,
as recited. Br. 24--26. In particular, Appellants argue "Bailey fails to
describe 'associating' the system menu with the CE device," as recited. Id.
at 26.
This argument is unpersuasive. As the Examiner finds, and we agree,
Bailey teaches the disputed association by its disclosure of a central server
that provides hotel-specific menus to CE devices within the hotels. See
Final Act. 10; Ans. 5. Bailey teaches that a central server provides multiple
hotels with individualized menus (Bailey ,r 57) and, under the BRI of
"associated," as recited, each such menu is associated with multiple devices
within the hotel ( as discussed above).
Appellant further contends the Examiner errs by finding the cited art,
teaches or suggests "identifying, in response to the instructions to modify the
dimensions of the first menu item, a first plurality of a base cell to merge in
defining modified dimensions of the first menu item," as recited. App. Br.
26. Appellants do not persuade us of Examiner error.
The Examiner finds Morris teaches this disputed limitation by its
disclosure, inter alia, of positioning menu text "within the modular grid 103
by specifying one or a group of the grid elements 108 in which to display the
media content." Final Act. 9 (citing Morris ,r 19). In view of Morris
paragraphs 18-19, an ordinarily skilled artisan would have understood that
the group of grid elements in which menu text 114 is grouped, as shown in
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Fig. 1, constitutes a merged plurality of base cells defining a menu item.
When a display with menu items is modified based on a particular display' s
aspect ratio, each menu item is appropriately scaled to maintain the overall
display contents, as also illustrated in Morris Fig. 1. Each menu item is
identified for display when adapting the display contents for a particular
screen. In response to this adaptation to a particular screen, all grid elements
will be merged into the display on that screen, which, under the BRI, defines
modified dimensions of any menu items on that display. Thus, Appellants
do not persuade us the Examiner errs in finding the disputed limitation reads
on Morris's disclosure.
Accordingly, we sustain the § 103 rejection of claim 8.
Dependent Claim 24
Appellants contend the Examiner errs in rejecting claim 24 by finding
Bailey teaches or suggests the recited limitation for "identifying the system
menu customized for and corresponding to the first sub-group registered as
corresponding to the first registered organization, wherein the system menu
is one of multiple different system menus that are each customized for and
each corresponding to a different one of the multiple different sub-groups."
App. Br. 23-24. In particular, Appellants argue that, although Bailey
teaches a "'Print Hotel Map' button" and an embodiment that provides this
feature "only through the lobby terminal" (Bailey ,r 81 ), Bailey "does not
describe or suggest 'identifying the system menu customized for ... the first
sub-group' as recited." App. Br. 23. Appellants argue "Bailey describes
that the printing 'only' by the lobby terminal is not because of a specific
system menu was 'identified' for a first sub-group, but instead that the lobby
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terminal is the only device mapped to and capable of using the 'printer
220. '" Id. at 24.
Appellants' argument is unpersuasive. Appellants construe Bailey too
narrowly. We agree with the Examiner's finding that an artisan of ordinary
skill would understand that providing a particular function via a particular
user-interface element only for a particular computer teaches or suggests
providing a different user interface for only that computer (i.e., only the
lobby computer will have a menu containing the print hotel map button).
Thus, Appellants do not persuade us the Examiner errs in finding Bailey
teaches, or at least suggests, "identifying the system menu customized for
... the first sub group," as recited.
Accordingly, we sustain the rejection of claim 24.
The Remaining Dependent Claims
Appellants present no substantive arguments for dependent claims 3-
5, 7, 10-14, 17, 18, and 20-23 separate from the arguments for their parent
independent claims. See Br. 22-27. Accordingly, for the reasons discussed
above, we sustain the rejections of those claims.
DECISION
We affirm the Examiner's 35 U.S.C. § 103 rejection of claims 1, 3-5,
7, 8, 10-15, 17, 18, and 20-24.
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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