Ex Parte Michel

Patent Trial and Appeal Board

Mar 23, 2018

11880677 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111880,677 07/23/2007
63649 7590 03/27/2018
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Kenneth Michel
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.
0260126 7743
EXAMINER
SALCE, JASON P
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH MICHEL
Appeal 2017-011111
Application 11/880,677
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, 7-14, 16-20, 23, and 24, which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies Disney Enterprises, Inc. as the real party in interest
(App. Br. 2).
Appeal 2017-011111
Application 11/880,677
THE INVENTION
Appellant's claimed invention is directed to "providing a broadcast
program and Web content associated with the broadcast program" in which
"the Web content is synchronized with the broadcast program based on a
program schedule" (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for use by a system having a processing
device for providing broadcast programs from a plurality
of broadcast channels, and said system having a channel
link module for providing Web contents associated with
said plurality of broadcast channels for display, said
system being in communication with a channel link server
over a network, said channel link server linking each of
said plurality of broadcast channels with a different
corresponding one of a plurality of Web sites hosted by
said channel link server, said method comprising:
selecting a broadcast channel by said system;
determining an address for a Web site associated
with said broadcast channel, wherein said Web site is one
said plurality of Web sites;
providing, by said channel link module, said
address for said Web site associated with said broadcast
channel to said channel link server over said network in
response to said selecting;
receiving, in response to said providing said address
for said Web site associated with said broadcast channel
to said channel link server, a Web content, including an
audio and video content, by said system from said Web
site associated with said broadcast channel, by said
channel link server over said network, said Web site
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Application 11/880,677
hosted by said channel link server being updated with said
Web content from a Web content server based on a
program schedule stored in said Web content server, said
program schedule being different than the Web content
and including a list of program titles and corresponding
viewing times for each of said program titles; and
providing said Web content from said Web site and
said broadcast program to an output display
contemporaneously.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Wu et al.
("Wu")
Ulrich et al.
("Ulrich")
Kunkel et al.
("Kunkel")
Barton et al.
("Barton")
US 6,326,982 B 1
US 6,344,794 Bl
US 6,477,579 Bl
US 2003/0095791 Al
REJECTIONS
Dec. 4, 2001
Feb. 5,2002
Nov. 5, 2002
May 22, 2003
The Examiner made the following rejections:
Claims 1-5, 7-14, 16-20, 23, and 24 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 5.
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Appeal 2017-011111
Application 11/880,677
Claims 1-5, 7-14, 16-20, 23, and 24 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 6. 2
Claims 1, 3-5, 7-11, 13, 14, 16-20, 23, and 24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Wu, Kunkel, and Barton.
Final Act. 7.
Claims 2 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wu, Kunkel, Barton, and Ulrich. Final Act. 12-13.
ISSUES
The issues are whether the Examiner erred in finding:
1. lack of written description for the limitation of
providing, by said channel link module, said address for
said Web site associated with said broadcast channel to said
channel link server over said network in response to said
selecting,
as recited in independent claim 1, and similarly recited in independent claim
11 ·
'
2. independent claims 1 and 11 indefinite because of the claimed
"providing, by said channel link module"; and
3. that the combination of Wu, Kunkel, and Barton teaches or suggests both
the claimed "Web content, including an audio and video content" and the
claimed "program schedule being different than the Web content," both
limitations appearing in the "receiving" limitation of independent claim
1, and similarly recited in independent claim 11.
2 Although the heading of the rejection omits claim 5, Appellant interprets
the Final Action as intending to include claim 5 in the rejection. See App.
Br. 10. We agree and find this oversight is a harmless error.
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Application 11/880,677
Written Description
ANALYSIS
Appellant argues the Examiner erred, because "there is an inherent
support in the written specification" (Reply Br. 3; see also App. Br. 8-9,
quoting Spec. 6: 6-13, 7:23-8:11 ). Regarding the quoted portions of the
Specification, the Examiner finds, and we agree, that the
CLM (channel link module) located at the client device uses
the address for a Web site to retrieve the actual Web content.
All of the processing performed to determine how to retrieve
the actual Web content is performed by the client device that
contain[ s] the CLM, which includes the user application and
network module,
and further that "there is no teaching of the actual address originating
from the CLM" (Ans. 4; see also Spec. 6:6-13, 7:23-8:11 and Fig. 1).
Appellant does not explain how one of ordinary in the art would find the
support is "inherently disclosed" in the Specification (App. Br. 9-10; see
also Reply Br. 3); nor does Appellant address and challenge the Examiner's
findings, but instead offers a proposed claim amendment. See Reply Br. 3.
Accordingly, we affirm the Examiner's written description rejection
for independent claim 1 and independent claim 11 commensurate in scope,
as well as dependent claims 2-5, 7-10, 12-14, 16-20, 23, and 24 not argued
separately. See App. Br. 10.
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Appeal 2017-011111
Application 11/880,677
Indefiniteness
Regarding the "providing, by said channel link module" limitation of
claim 1, the Examiner finds that the "teachings in the specification in the
instant application fail[] to distinctly teach this feature" (Final Act. 7).
Appellant argues that "[i]f a description or the enabling disclosure of a
specification is not commensurate in scope with the subject matter
encompassed by a claim," then "that fact alone" does not render the claim
indefinite. App. Br. 11, citing In re Borkowski, 422 F.2d 904, 909 (CCPA
1970). We agree with Appellant, as here the language of the claim is not
indefinite. The Examiner identifies a problem in what the Specification
teaches, which is separate from whether the claim is indefinite.
Accordingly, we reverse the Examiner's indefiniteness rejection of
claims 1-5, 7-14, 16-20, 23, and 24.
Obviousness
Regarding the "receiving, in response to said providing said address
for said Web site" limitation of claim 1, Appellant argues that "in Barton,
the program schedule information is obtained from the program database to
create the Web page, which is not any different than the program guide
information" and Barton thus "fails to disclose, teach or suggest" the
claimed "'program schedule being different than the Web content"' (Reply
Br. 2). Appellant further contends that Wu's teaching of audio/video content
"merely recites the end result, and not the specific limitations of independent
claim 1 that reach the end result" (Reply Br. 3).
The Examiner finds, and we agree, that "Barton teaches updating web
content from a web content server (web server 200 and program database
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Application 11/880,677
210 within personal TV service center 130) based on a program schedule
stored in said web content server" (Final Act. 10, citing Barton i-f 35), and
that Wu discloses "the Web content itself includes audio and video content"
(Ans. 6, citing Wu 7:53-54).
The combination of the teachings of Wu and Barton leads to the
combination of Barton's program schedule information with Wu's display
on a television screen of Web pages that "include streaming audio and video
animation graphics" (Wu 7:53-54), in which Barton's program schedule
information would be different from Wu's audio/video content, and thus
meeting the claim's requirements (1) of "Web content, including an audio
and video content" and (2) that the "program schedule being different than
the Web content." Appellant's argument regarding Wu's teaching of audio
and video content attacks Wu individually, and fails to address the combined
teachings of Wu and Barton. "[O]ne cannot show non-obviousness by
attacking references individually where ... the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Accordingly, we affirm the Examiner's rejection of independent claim
1 and independent claim 11 commensurate in scope and not separately
argued (see App. Br. 16-17), as well as dependent claims 3-5, 7-10, 13, 14,
16-20, and 23, and 24 not separately argued (see App. Br. 16-17), and
dependent claims 2 and 12 not separately argued with particularity (see App.
Br. 17).
CONCLUSION
The Examiner did not err in finding lack of written description for the
limitation of
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Application 11/880,677
providing, by said channel link module, said address for
said Web site associated with said broadcast channel to said
channel link server over said network in response to said
selecting,
as recited in independent claim 1, and similarly recited in independent claim
11.
The Examiner erred in finding independent claims 1 and 11 indefinite
because of the claimed "providing, by said channel link module."
The Examiner did not err in finding that the combination of Wu,
Kunkel, and Barton teaches or suggests both the claimed "Web content,
including an audio and video content" and the claimed "program schedule
being different than the Web content," both limitations appearing in the
"receiving" limitation of independent claim 1, and similarly recited in
independent claim 11.
DECISION
The Examiner's decision rejecting claims 1-5, 7-14, 16-20, 23, and
24 under 35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner's decision rejecting claims 1-5, 7-14, 16-20, 23, and
24 under 35 U.S.C. § 112, second paragraph, is reversed.
The Examiner's decision rejecting claims 1-5, 7-14, 16-20, 23, and
24 under 35 U.S.C. § 103(a) is affirmed.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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