Ex Parte McCoy et al

Patent Trial and Appeal Board

Apr 27, 2017

12982419 (P.T.A.B. Apr. 27, 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.
12/982,419 12/30/2010 Charles McCoy 201003475.02 8332
51518 7590 05/01/2017
MAYF.R Rr WTT T TAMS PC"
EXAMINER
928 Mountain Avenue HALEY, JOSEPH R
Second Floor
Mountainside, NJ 07092 ART UNIT PAPER NUMBER
2695
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
docket @ mwpatentlaw. com
mwolf @ mwpatentlaw.com
kwilliams@mwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES MCCOY, LING JUN WONG, and
TRUE XIONG
Appeal 2017-002394
Application 12/982,419
Technology Center 2600
Before LARRY J. HUME, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2017-002394
Application 12/982,419
STATEMENT OF THE CASE
The present patent application concerns “[sjystems and methods for
creating and employing software to handle the playback of media ... in
browsers that, in addition to or instead of playing the media in the browser,
may use the second display protocols to instruct a separate device to play the
media.” Spec., Abstract. Claims 1, 13, 21, and 25 are independent. Claim 1
illustrates the claimed subject matter:
1. A method of playing a content item on a content playback
device using a second display, comprising:
i. establishing a browsing session between the second
display and a source of content;
ii. instantiating a plug-in or helper application on the
second display;
iii. playing back at least a portion of a content item in the
plug-in or helper application on the second display, the playing
back occurring by, in the second display, arranging presentation
of an authentication credential of a content playback device to
the source of content; and
iv. causing the content item to playback in the content
playback device, wherein the causing includes using the second
display to request the content item, the request using an
authentication credential of the content playback device.
REJECTIONS
Clams 1—9 and 11—25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang et al. (US 7,886,318 B2; Feb. 8, 2011) and Pliska et
al. (US 2010/0279766 Al; Nov. 4, 2010).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wang, Pliska, and Ma et al. (US 2005/0278737 Al; Dec. 15, 2005).
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Appeal 2017-002394
Application 12/982,419
ANALYSIS
Appellants contend the Examiner has not provided sufficient reason to
combine the teachings of the cited art in the fashion recited in the
independent claims. See App. Br. 9-10, 13—15; Reply Br. 3. In particular,
Appellants assert “the entirety of the reasoning supplied by the Examiner is
that a preview functionality would work in the apparatus of Wang and that
the same would provide predictable results.” App. Br. 10. Appellants argue
“there must be . . . articulated reasoning with some rational underpinning to
support the legal conclusion of obvious, and such is lacking here.” Id.
We find Appellants’ argument persuasive. With respect to
independent claims 1, 13,21, and 25, the Examiner found it would have
been obvious to combine Wang’s and Pliska’s teachings “because the
preview of [Pliska]. . . would work equally well in the apparatus of Wang
. . . as it does separately and would provide predictable results.” Final Act.
3^4. The Examiner also found Wang and Pliska “are from a similar problem
solving area and have many common features” and that combining their
respective teachings “would be well within the skill of someone in the art,”
“would not change the principle [of] operation of Wang[,] and would not
have any negative or unpredictable effect.” Ans. 3.
As an initial matter, these statements lack any supporting reasoning or
evidence. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[Rejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”). But even if
the Examiner had provided adequate supporting reasoning or evidence for
these statements, at best these statements establish that one of ordinary skill
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Appeal 2017-002394
Application 12/982,419
in the art could have combined the cited art. But the mere fact that one of
ordinary skill in the art could have combined the prior art does not establish
that one of ordinary skill in the art would have had a reason to do so. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining that an
obviousness analysis must “determine whether there was an apparent reason
to combine the known elements in the fashion claimed by the patent at
issue”); Malico, Inc. v. Cooler Master USA Inc., 594 F. App’x 621, 628
(Fed. Cir. 2014) (non-precedential) (explaining that the ability to perform a
particular action “without any reason to do so does not establish
obviousness”).
On the record before us, we agree with Appellants that the Examiner
failed to provide an adequate reason to combine the cited art in the proposed
manner. Accordingly, we do not sustain the Examiner’s rejections of the
pending claims. We express no opinion on the Examiner’s other findings
concerning the prior art.
DECISION
We reverse the rejections of claims 1—25.
REVERSED
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