Ex Parte Shintani et al

Patent Trial and Appeal Board

Feb 27, 2018

13654657 (P.T.A.B. Feb. 27, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/654,657 10/18/2012 Peter Shintani 201003713.02 5616
36738 7590 03/01/2018
ROrTTT7 fr ASSOPTATRS
EXAMINER
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER SHINTANI, ARAN LONDON SADJA, and
LUDOVIC ETIENNE DOUILLET
Appeal 2016-008083
Application 13/654,657
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 38, 40^18 and 50-53. Claims 1-37, 39, and 49 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Invention
The disclosed and claimed invention on appeal relates to “tracking the
details of activation of a licensable component of a consumer electronic
(CE) device to improve efficiency of the activation process.” (Spec. 1).
Appeal 2016-008083
Application 13/654,657
Representative Claim
38. Device comprising:
at least one computer readable storage medium that is not
a transitory wave and that comprises instructions executable by
at least one processor to:
control one of more licensable components, at least one
of which requires a license code to enable, the license code not
being available to the processor at a point of sale (POS) of the
device;
transmit to a license entity a request for a license for a
licensable component;
transmit, pursuant to the request, a model number of the
device for license activation correlation purposes; and
send pursuant to the request, demographic information
pertaining to a user of the device.
(Contested limitation is emphasized in italics and bold).
Rejection
Claims 38, 40^18, and 50-53 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
Houng et. al (“Houng,” US 2011/0166968 Al, published July 7, 2011) and
of Besehanic et al. (“Besehanic,” US 2010/0151816 Al, published
June 17, 2010).
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Grouping of Claims
Based on Appellants’ arguments in the principal Brief: we decide the
appeal of rejected claims 38 and 48 on the basis of independent claim 38
(App. Br. 5); we decide the appeal of rejected claims 40 and 47 on the basis
of independent claim 47 (App. Br. 6-7); we decide the appeal of rejected
dependent claims 46 and 53 on the basis of representative claim 46 (App.
Br. 8-9). See 37 C.F.R. § 41.37(c)(l)(iv). To the extent Appellants have not
advanced separate, substantive arguments for the remaining claims on
appeal, such arguments are waived. See id.
Based on Appellants’ arguments, we reverse the Examiner’s rejection
of dependent claims 45 and 52, infra.
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. For essentially the same reasons argued by Appellants (App. Br.
7-8), we reverse the Examiner’s rejection of dependent claims 45 and 52.
For the reasons discussed infra, we affirm the Examiner’s rejection of the
remaining claims on appeal We highlight and address specific findings and
arguments for emphasis in our analysis below.
Rejection of Independent Claim 38 under 35 U.S.C. § 103(a)
Regarding independent claim 38, Appellants contest the limitation
“send, pursuant to the request, demographic information pertaining to the
user of the device.” (App. Br. 5-6) (emphasis added). Appellants
specifically contend the claim term “demographic information” is not taught
in either of the cited references. (App. Br. 5). Therefore, we decide the
following principal issue on appeal:
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Application 13/654,657
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Houng and Besehanic teaches or suggests the contested
limitation “send, pursuant to the request, demographic information
pertaining to the user of the device,” within the meaning of independent
device claim 38? 1
Claim Construction
We begin our analysis with claim construction. We look to the
support in Appellants’ Specification for context'. See Spec. p. 3, ^ 3: “some
implementations may use demographics and/or geographic locations of
requested licenses to tailor marketing efforts and content.” (emphasis
added). Given this supporting description in Appellants’ Specification (id.),
we are not persuaded the Examiner’s claim interpretation is overly broad,
unreasonable, or inconsistent with the Specification. See n. 1, infra.2
We are not persuaded by Appellants’ arguments, because we conclude
the scope of contested claim term “demographic information” broadly but
reasonably encompasses geographic locations in association with other
information, which pertains to the types of end users, as described in Houng,
153:
Other information may be provided that may aid in learning
about activities or uses of the display device 14 by the end user
18. Such other information may include the input to the display
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
2 The Examiner finds: “Houng describes types of users for marketing
purposes within a geographic area which is equivalent to the claimed
demographic information pertaining to a user of the device.” Ans. 2 (citing
Houng 53).
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Application 13/654,657
device (e.g. antenna or coaxial cable), other settings of the
display device 14, the timing of activation relative to the time
of purchase of the display device 14, and/or different activation
patterns for different geographic locations and/or types of end
users. This other information may be used for example by
display device manufacturers, for example for marketing
purposes.
(emphasis added). See also Ans. 2.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s finding that Houng’s other information (which
includes information on geographic locations and associated information on
the types of end users) teaches, or at least suggests, the contested limitation
of “demographic information pertaining to a user of the device,” as recited in
independent claim 38. (Ans. 2, citing Houng 53).
Further, we note the secondary Besehanic reference, also relied upon
by the Examiner, describes the use of an IP address, and we find the
demographic profile information associated with the IP address teaches
“demographic information.” (Ans. 2, Besehanic ^ 77). See also Besehanic’s
Title: “METHODS AND APPARATUS FOR ASSOCIATING MEDIA
DEVICES WITH A DEMOGRAPHIC COMPOSITION OF A
GEOGRAPHIC AREA.” (emphasis added).
For at least these reasons, we find the contested claim term
“demographic information” of independent claim 38, is taught or suggested
by the cited combination of Houng and Besehanic.3
3 We note the claimed “demographic information pertaining to a user of
the device” is data, which is non-functional descriptive material that does
not further limit the structure of an apparatus (i.e., “Device comprising”
claim 1). See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential) (“[T]he nature of the information being manipulated does not
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Nevertheless, Appellants additionally urge that Houng’s other
information is provided from Houng’s activation service, not the “device,”
as recited in claim 38. (App. Br. 6). In support, Appellants contend (id.):
Just how the activation service comes by the “other
information” is not detailed in the relied upon subject matter of
Houng. Silence is neither a teaching nor a suggestion. The
addition of Besehanic is no help because it, like Houng, is silent
as to the claimed connection and the claimed individual user
demographic provision.
In response, we conclude there is no indication within the scope of
claim 38 that reveals just how the claimed “device” obtains the demographic
information pertaining to a user of the device. Nor does claim 38 limit who
or what is the intended destination of the sent “demographic information.”
We find at least some of the “other information” described in Houng
fl[ 53) originates from the display device: e.g., “Such other information may
include the input to the display device (e.g. antenna or coaxial cable), [and]
other settings of the display device 14. (Id.). As noted above, the Examiner
additionally relies upon Besehanic ^ 77 in the Answer (2-3):
Alternatively Besehanic discloses the claimed limitation as
shown in the rejection. For example Besehanic teaches at
lend patentability to an otherwise unpatentable computer-implemented
product or process.”
Here, we conclude the claimed “demographic information,” after
being sent pursuant to the request, is not positively recited as actually being
used wi thin the scope of claim 38 to affect or change any
function. The Manual of Patent Examining Procedure
further guidance: “where the claim as a whole is directed to conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists.” MPEP
§ 2111.05 (III.) (9th Ed., Rev. 08.2017, Last Revised Jan. 2018).
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[0077], discloses that "The address resolver 206 transmits the
IP address information including the media device
identification, the most used IP address, the associated
demographic profile, the associated geographic location,
and/or media device usage information to the media device
demographic database 226." From the above, it is clear that the
demographic profile of the user and user device is transmitted
to the activation device and for this reason the claim limitation
is met and the rejection should be sustained.
(emphasis added).
Appellants respond in the Reply Brief (2): “The Answer’s alternative
resort to Besehanic, paragraph 77 for sending demographic information
pursuant to ‘the request’ has been dealt with the Appeal Brief [(5-6)], so
Appellant need not belabor the error in it further in this Reply Brief.”
As emphasized above, we find there is no indication within the scope
of claim 3 8 that reveals or otherwise limits how the claimed “device”
obtains demographic information pertaining to a user of the device.
Houng (]f 50) describes that the display device has an IP address and
is connected to a network: “Direct transmission of the activation code or
key, or other activation signal, to the display device is particularly likely for
‘connected’ display devices (such as IPTVs ), i.e. for devices that are
connected to a wired network, wireless network, or telecommunications
network.”
Besehanic (][ 73) reveals that the geographic location of the device
(which we find may be used to infer demographic information pertaining to
the user of the device) is determined from the IP address of the media
device: “By determining the geographic location of a most used IP
address of a media device, the address resolver 206 then associates a
demographic profile (e.g., composition) with the media device.”
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We note the Examiner’s rejection is based upon the combined
teachings and suggestions of Houng and Besehanic. Although we have
reviewed Appellants’ response in the Appeal Brief (5-6) regarding
Besehanic, e.g., urging that “the request” of claim 38 “does not depend on
associating devices with demographics,” we note claim 38 is silent regarding
the argued negative limitation. Appellants’ arguments are not persuasive
because they are arguing limitations not recited in the claim.
Appellants also argue the limitation “pursuant to the request” is not
taught by the cited references. (App. Br. 6). However, we find Houng’s end
user making a request to the activation service teaches or at least suggests
the disputed term “pursuant to the request.” (Final Act. 6, Houng 68, 69,
Fig. 4, steps 101 and 108, Fig. 5).
For at least the aforementioned reasons, and on this record, we are not
persuaded by Appellants’ arguments alleging the proffered combination of
references does not teach or suggest the contested limitation, within the
meaning of representative claim 38.
We find a preponderance of the evidence supports the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness.
(Final Act. 6-8, Ans. 2-3). Grouped claim 48 falls with representative claim
38. See Grouping of Claims, supra.
Rejection of Independent Claim 47 under 35 U.S.C. § 103(a)
Regarding independent claim 47, Appellants advance arguments
similar to those presented above regarding independent claim 38. (App.
Br. 6-7). For the same reasons discussed above regarding claim 38, we find
a preponderance of the evidence supports the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness. (Final
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Application 13/654,657
Act. 5-8, Ans. 3). Grouped claim 40 falls with representative claim 47. See
Grouping of Claims, supra.
Rejection of Dependent Claims 45 and 52 under 35 U.S.C. § 103(a)
Regarding dependent claim 45, Appellants contend that Houng’s
paragraph 68 and Houng’s Figure 7 say “nothing about an EPG.” (App.
Br. 7-8).
The Examiner notes that EPGs (Electronic Program Guides) are
menu-based systems. The Examiner finds that Houng’s request for an
activation code for a tuner teaches the disputed limitation “responsive to
input indicating a command to automatically scan a broadcast spectrum to
detect channels, transmit to the license entity the request [from a] license for
a terrestrial broadcast electronic program guide (EPG).” (Ans. 4).
However, we find the Examiner has not fully developed the record to
show that the request for a license for a terrestrial broadcast electronic
program guide (EPG) is taught by the cited sections of Houng.
As recently emphasized by our reviewing court:
Even when giving claim terms their broadest reasonable
interpretation, the Board cannot construe the claims “so broadly
that its constructions are unreasonable under general claim
construction principles.” Microsoft Corp. v. Proxy conn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015). “[T]he protocol of giving
claims their broadest reasonable interpretation . . . does not
include giving claims a legally incorrect interpretation”
“divorced from the specification and the record evidence.” Id.
(citations and internal quotation marks omitted); see PPC
Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815
F.3d 747, 751-53 (Fed. Cir. 2016).
In re Smith Intern!, Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017).
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Applying our reviewing court's guidance here, we broadly but
reasonably interpret the disputed claim language in a manner consistent with
Appellants’ Specification. We find the plain language of the claim
precludes the Examiner’s interpretation because the cited sections of the
references are silent regarding a “request for a license for a terrestrial
broadcast electronic program guide (EPG),” as claimed.
Therefore, we find a preponderance of the evidence supports
Appellants’ contention that the Examiner has failed to show the license
being requested is for an EPG, (App. Br. 8), Thus, we agree with
Appellants that the Examiner fails to establish a prima facie case of
obviousness for dependent claim 45.
Because Appellants have us the -bxammer we reverse
rejection of dependent claim 45. For the same reasons, we also reverse
the rejection of dependent claim 52, which recites the identical contested
limitation.
Rejection of Dependent Claims 46 and 53 under 35 U.S.C. § 103(a)
Regarding dependent claim 46, Appellants argue “These portions of
Houng nowhere mention anything close to Internet receivers and instead
relate to receivers such as ATSC tuners and set-top boxes.” (App. Br. 9).
The Examiner finds Houng’s receivers teach or at least suggest
Internet receivers. (Ans. 5).
We are not persuaded the Examiner erred, because we find Houng’s
activation service, which includes a variety of suitable activation methods,
such as Internet communication by way of a browser, teaches or at least
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Application 13/654,657
suggests 4 the disputed limitation “Internet receiver.” (Houng 68). See also
(Final Act. 11-12, Ans. 4-5).
Because we find a preponderance of the evidence supports the
Examiner’s ultimate legal conclusion of obviousness, we sustain the
Examiner’s rejection of dependent claim 46. Grouped claim 53 falls with
representative dependent claim 46. See Grouping of Claims, supra.
Remaining Claims 41, 42, 43, 44, 50, and 51
Appellants do not advance separate, substantive arguments regarding
the remaining claims on appeal. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(l)(iv). Therefore, we sustain the Examiner’s rejection
of the remaining claims 41, 42, 43, 44, 50, and 51 on appeal.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief, or are not responsive to arguments raised in the Examiner’s Answer,
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
4 Our reviewing court guides: “‘[T]he question under [35 U.S.C. § 103] is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989); see also MPEP § 2123.
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DECISION
We reverse the Examiner’s rejection of claims 45 and 52 under pre-
AIA 35 U.S.C. § 103(a).
We affirm the Examiner’s rejection of claims 38, 40^14, 46—48, 50,
51, and 53 under pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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