Ex Parte NishikawaDownload PDFPatent Trial and Appeal BoardSep 26, 201613043831 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/043,831 03/09/2011 Yuko Nishikawa 36738 7590 09/28/2016 ROGITZ & AS SOCIA TES 750B STREET SUITE 3120 SAN DIEGO, CA 92101 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. 201003671.01 9604 EXAMINER HUERTAS TORRES, AYESHAE ART UNIT PAPER NUMBER 2172 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): Noelle@rogitz.com eofficeaction@appcoll.com J ohn@rogitz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUKO NISHIKAWA Appeal2015-005704 Application 13/043,831 Technology Center 2100 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and JON M. JURGOV AN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Sony Corp. (App. Br. 2). Appeal2015-005704 Application 13/043,831 STATEMENT OF THE CASE Appellant's invention relates to using images of viewers to establish an emotion ranking for a video being viewed by the imaged viewers (Spec. 1: 1-3). Exemplary claim 1 under appeal reads as follows: 1. System comprising: a processor configured for communicating with a viewer video display and configured for communicating with a camera; a computer readable storage medium including program instructions which when executed by the processor configure the processor to: receive an image of a viewer from the camera; provide the image to a ranking mechanism, receive back from the ranking mechanism plural emoticons derived from respective images of other viewers and pertaining to respective emotions associated with a video presented on the display, present the plural emoticons, receive a user selection of at least one of the emoticons, overlay the at least one of the emoticons onto the video, automatically post the at least one of the emoticons on a website in response to the user's selection of the at least one of the emoticons, the at least one of the emoticons emulating the viewer's face and/or descriptive words that correspond to the at least one of the emoticons. REFERENCES and REJECTIONS Claim 7 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite (see Final Act. 3--4). 2 Appeal2015-005704 Application 13/043,831 Claims 1--4 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Seo (US 2008/0101660 Al; publ. May 1, 2008), McKee et al. (US 2009/0293079 Al; publ. Nov. 26, 2009), Harrison et al. (US 2008/0215975 Al; publ. Sept. 4, 2008), and Brown (US 2009/0012988 Al; publ. Jan. 8, 2009) (see Final Act. 4--12). Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Seo, McKee, Harrison, Brown, and Baudisch et al. (US 2009/0150203 Al; publ. June 11, 2009) (see Final Act. 17-22). Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Seo, McKee, and Harrison (see Final Act. 12-17). Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Seo, McKee, Harrison, and Baudisch (see Final Act. 22- 26). Claims 13-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Seo, McKee, and Baudisch (see Final Act. 26-42). ANALYSIS Rejection under 35 U.S. C. § 112, Second Paragraph The Examiner finds claim 7 is indefinite because it is unclear whether "the image is generated with the video display device or if the claims refers to the image that is generated is from a user (viewer) of an audio display device" (Ans. 2). We are persuaded of error in the rejection by Appellant's contention that it is clear the camera of the audio video display device, not a 3 Appeal2015-005704 Application 13/043,831 user, generates the image of the viewer (Reply Br. 1-2).2 Accordingly, we do not sustain the Examiner's rejection of claim 7 under 35 U.S.C. § 112, second paragraph, as being indefinite. Rejections under 35 U.S.C. § 103(a) Independent Claim 1 Appellant contends a skilled artisan would be led away from the Examiner's proposed combination of Seo, McKee, and Harrison, because sharing the emotions of other users, as taught by McKee and Harrison, would influence a viewer and frustrate Seo' s purpose of collecting an objective indication of viewer emotion (App. Br. 5---6; Reply Br. 2-3). We are unpersuaded of Examiner error in the rejection. Teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). "We will not read into a reference a teaching away from a process where no such language exists.'' DyStar TextUfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellant has offered no persuasive evidence that Seo discourages the combination with McKee and Harrison, as attorney argument alone is not evidence. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We agree with the Examiner's finding that the combination of Seo' s determining emotions from a viewer image (Final Act. 4--8; Ans. 2-5 (citing Seo i-fi-136-39)), Harrison's projecting a user's emotion 2 Claim 7 appears to have the typographical error "an image of a viewer [of] an audio video display device." In case of further prosecution of this application, the Examiner and Appellant are invited to correct the claim language. 4 Appeal2015-005704 Application 13/043,831 onto an animated avatar (id. (citing Harrison i-fi-145--46)), and McKee's overlaying user images and emoticons onto a video (id. (citing McKee i-fi-149, 51)) teaches or suggests the system of claim 1. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Appellant further contends the Examiner relies on impermissible hindsight to combine Brown with Seo, McKee, and Harrison, because neither Brown's teaching of posting an emoticon on a social networking website to affect personal behavior and obtain group support, nor the Examiner's rationale for the combination of sharing a reaction to content through social media, is related to Seo, McKee, and Harrison (App. Br. 6; Reply Br. 4). Appellant however has not provided sufficient evidence that the Examiner's rejection is based on knowledge gleaned only from Appellant;s disclosure, or based on knowledge which was beyond the level of ordinary skill in the art at the time. See In re McLaughlin, 443 F.2d 1392, 13 9 5 ( CCP A 1971). We agree with the Examiner's finding that determining an emoticon from a viewer emotion, as taught by Seo, McKee, and Harrison per the discussion supra, and posting the emoticon on a social media website, as taught by Brown (Final Act. 8; Ans. 4--5 (citing Brown i132)), is a combination of familiar elements according to known methods with predicable results. See KSR, 550 U.S. at 416. Further, we find the Examiner has provided a rational underpinning to support the conclusion of obviousness based on knowledge within the level of ordinary skill in the art, specifically to provide a user with the additional functionality of sharing 5 Appeal2015-005704 Application 13/043,831 their reaction to video content with others via social media (Ans. 4--5). See KSR, 550 U.S. at 417--418. Independent Claim 7 Appellant contends claim 7 requires overlaying an emotion rank onto the video presented on the audio video display device (AVDD), and none of the Seo, McKee, and Harrison teaching imaging a viewer, sending that image somewhere, and receiving back at the same A VDD the image plus an emotion rank. Appellant's contention does not persuade us of Examiner error because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with the Examiner's finding that the combination of Seo, McKee, and Harrison teaches receiving at the A VDD the viewer's image (Ans. 5-7 (image taken per Seo ,-r 36 and overlaid on video per McKee ,-r 49)) and an emotion rank (id. (McKee i-f 51, emoticons overlaid on the video). Further, Appellant's contention that the A VDD displaying the overlaid video must be the same A VDD is not persuasive because it is not commensurate with the scope of claim 7, which does not require receiving at "the same A VDD." See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that limitations not appearing in the claims cannot be relied upon for patentability). Under the broadest reasonable interpretation consistent with Appellant's disclosure, we find claim 7 does not preclude the A VDD from being a network of display devices. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004): "[T]he PTO is obligated to give claims their broadest reasonable interpretation during examination."). Thus, 6 Appeal2015-005704 Application 13/043,831 we agree with the Examiner's finding that the combination of Seo, McKee, and Harrison teaches or suggests overlaying the emotion rank and viewer image on the video played on the networked AVDD device (Ans. 5-7 (citing McKee if 51 )). Independent Claim 13 Appellant contends the combination of Seo, McKee, and Baudisch does not teach enabling a viewer to rank multiple images of friend's faces, because McKee fails to teach any ranking of the emoticons, and Baudisch's voting for a single image fails to teach the claimed ranking (App. Br. 8-9; Reply Br. 5---6). We are unpersuaded of error in the rejection, because Appellant is arguing the references individually where the rejection is based on the combination. See Keller, supra. We agree with the Examiner's finding that, under the broadest reasonable interpretation consistent with Appellant's disclosure, Baudisch' s voting or rating system that provides user preferences among a choice of images teaches "ranking'' multiple images (Ans. 8 (citing Baudisch iii! 3, 5, and 50; see also if 47, rating on a graduated scale of 1-10)), and the combination of Baudisch with Seo and McKee teaches or suggests ranking images of friend's faces (Final Act. 26-29; Ans. 8). Dependent Claims 2 and 8 Appellant contends McKee does not teach enabling a viewer to select one or more items, the items being an image of the user's face and emotion rank, because McKee's avatar is not an image of the user's face (App. Br. 7- 8; Reply Br. 4--5). We are not persuaded of error in the rejection of claims 2 and 8, as the claim limitations are met by selecting only one of an image and an emotion rank. Thus, we agree with the Examiner's finding that the 7 Appeal2015-005704 Application 13/043,831 combination of Seo, McKee, and Harrison teaches or suggests enabling a viewer to select an emotion rank (i.e., an emoticon emulating the viewer's face (Spec. 5:20-22)) because McKee allows a user to select the desired emoticon (Final Act. 4-8; Ans. 2-5 (citing McKee if 51)), which is derived from a viewer's face as taught by Seo and Harrison (see discussion for claim 1, supra). Remaining Claims No separate arguments are presented for the remaining dependent claims, therefore we sustain their rejections for the reasons stated with respect to independent claims 1, 7, and 13. DECISION3 We reverse the Examiner's rejection of claim 7 under 35 U.S.C. § 112, second paragraph. We affirm the Examiner;s rejections of claims 1-'20 under 35 U.S.C. § 103(a). 3 We have decided the appeal on the record before us. In the event of further prosecution, we leave it to the Examiner to consider whether at least claims 1 and 13, which recite a computer readable storage rnedium, should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Appellant's Specification does not define "computer readable storage medium" to exclude transitory media. Consequently, the claimed storage medium encompasses transitory media, which is not patent eligible. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed., Rev. 07.2015, Nov. 2015). 8 Appeal2015-005704 Application 13/043,831 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 9 Copy with citationCopy as parenthetical citation