Ex Parte Wingert

Patent Trial and Appeal Board

Jun 26, 2017

13252855 (P.T.A.B. Jun. 26, 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.
13/252,855 10/04/2011 Christopher R. Wingert 110685 1660
23696 7590 06/28/2017
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
HUYNH, AN SON PHI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER R. WINGERT
Appeal 2017-004715
Application 13/252,8551
Technology Center 2400
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—34, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellant is Qualcomm, Inc. App.
Br. 2.
Appeal 2017-004715
Application 13/252,855
STATEMENT OF THE CASE
Introduction
Appellant’s described and claimed invention relates generally to
generating an image that displays a portion of a scene from a video that is
being displayed on a first device, the image having at least one selectable
item, and displaying the selectable item on a second device. See Abstract.2
Claim 1 is representative and reads as follows (with the disputed
limitation emphasized)'.
1. A method comprising:
providing an image that displays a portion of a scene in a
video that is being displayed on a first device, the image having
at least one selectable object that is displayed within the image
on a second device, the selectable object is one of an individual
and a physical object in the scene in the video, the at least one
selectable object is selectable by a first user on the second device;
in a case where the at least one selectable object is
selected, displaying a menu that allows the first user to receive
more information about the at least one selectable object; and
displaying the image with the menu on the second device
that is viewable by the first user.
Amd. App. Br. 16 (Claims App’x).
2 Our Decision refers to the Final Office Action mailed Nov. 20, 2014
(“Final Act.”), Appellant’s Appeal Brief filed Apr. 14, 2015 (“App. Br.”),
Amended Appeal Brief filed July 17, 2015 (“Amd. App. Br.”) and Reply
Brief filed Feb. 1, 2017 (“Reply Br.”), the Examiner’s Answer mailed Sept.
24, 2015 (“Ans.”), Second Examiner’s Answer mailed Oct. 20, 2015 (“Sec.
Ans.”) and Subsequent Examiner’s Answer mailed Dec. 5, 2016 (“Sub.
Ans.”), and the original Specification filed Oct. 4, 2011 (“Spec.”).
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Appeal 2017-004715
Application 13/252,855
Rejection on Appeal
Claims 1—34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Issa et al. (US 8,307,395 B2; issued Nov. 6, 2012) (“Issa”)
in view of Roberts et al. (US 2012/0120296 Al; published May 17, 2012)
(“Roberts”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (see App. Br. 9—15), Amended Appeal Brief
(see Amd. App. Br. 2—21), and Reply Brief (see Reply Br. 2—9), and are not
persuaded the Examiner has erred. Unless otherwise noted, we adopt as our
own the findings and reasons set forth by the Examiner in the Office Action
from which this appeal is taken (Final Act. 2—18), and in the Subsequent
Examiner’s Answer (Sub. Ans. 2—22), and we concur with the conclusions
reached by the Examiner. For emphasis, we consider and highlight specific
arguments as presented in the Briefs.
Appellant argues the combination of Issa and Roberts fails to teach or
suggest “providing an image that displays a portion of a scene in a video that
is being displayed on a first device, the image having at least one selectable
object that is displayed within the image on a second device, the selectable
object is one of an individual and a physical object in the scene in the
video,” as recited in independent claim 1, and similarly recited in
independent claims 12 and 19. See App. Br. 10; see also Reply Br. 2. More
specifically, as argued by Appellant, a key frame disclosed in Issa is a
scaled-down frame of a video content item that represents a segment of
video content, and is not an object in a scene of the video content itself. See
3
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Application 13/252,855
App. Br. 10-11; see also Reply Br. 4. Further, as also argued by Appellant,
Issa’s key frame is not a person or a physical object. See App. Br. 11; see
also Reply Br. 4. Regarding Roberts, Appellant argues the display elements
disclosed in Roberts are displayed on a display screen of a mobile device in
conjunction with a displayed view of a media content instance being
displayed on a display device, but the display elements do not exist in the
media content instance being displayed on the display device. See App.
Br. 11—12; see also Reply Br. 4. Further, as argued by Appellant, Roberts’
display elements include text, images, videos and hyperlinks, but are not
individuals or physical objects in a scene of a video.3,4,5 See App. Br. 12; see
also Reply Br. 4—5.
3 Appellant also argues Lemmons (US 7,444,659 B2; issued Oct. 28, 2008)
(“Lemmons”) and Kitsukawa et al. (US 6,282,713 Bl; issued Aug. 28, 2001)
(“Kitsukawa”), cited by the Examiner in a telephonic interview conducted
on January 22, 2015, fail to cure the deficiencies of Issa and Roberts. See
App. Br. 12; see also Reply Br. 8. However, we have not considered this
argument, as the references were not applied in the Examiner’s final
rejection. See Am,. 21.
4 Appellant also argues the patentability of claim 7, arguing that neither
Issa’s key frame, nor Roberts’ display element, teaches that “the physical
object is an item in the environmental setting of the scene in the video,” as
recited in claim 7. See App. Br. 14; see also Reply Br. 8. This argument
amounts to a general allegation that the claim defines a patentable invention
without specifically pointing out how the language of the claim patentably
distinguishes the claim from the cited references. Thus, we have not
considered this argument. See 37 C.F.R. § 41.37(c)( 1 )(vii) (noting that an
argument that merely points out what a claim recites is unpersuasive); see
also In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
5 Appellant also argues the patentability of claim 18 in Appellant’s Reply
Brief. See Reply Br. 8. However, Appellant failed to separately argue the
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Application 13/252,855
We are not persuaded that the Examiner erred. We agree with the
Examiner that Issa teaches the claimed “selectable object [that] is one of an
individual and a physical object in the scene in the video” because Issa
discloses a selectable key frame, where the key frame is a representative
portion of a video content displayed to another user on another device. See
Ans. 19—20 (citing Issa 3:44—59; 7:7—21). As Issa discloses that the
selectable key frame can include an individual or physical object contained
within the portion of the video content (see, e.g., Issa Fig. 4), Issa teaches or
suggests a selectable object that “is one of an individual and a physical
object in the scene in the video.”
We further agree with the Examiner that Roberts also teaches the
claimed “selectable object [that] is one of an individual and a physical object
in the scene in the video.” See Ans. 20. Roberts discloses a display device
presenting a media content instance, where the media content instance
includes a video attribute, such as an individual or an object. See Roberts
17, 62. Roberts further discloses displaying a view of the media content
instance along with dynamically generated display elements (i.e., “enhanced
content”) within a display screen of a mobile device. See Roberts H 15, 31,
62, 64, 65. As the view of the media content instance includes the video
attribute (i.e., the individual or object), Roberts also teaches the claimed
“selectable object [that] is one of an individual and a physical object in the
patentability of claim 18 in Appellant’s Appeal Brief. See, e.g., App. Br. 14.
Thus, we have not considered this argument. See 37 C.F.R. § 41.41(b)(2)
(“Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.”).
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Application 13/252,855
scene in the video.” Although Appellant argues that Roberts’ display
element does not teach or suggest this limitation (see App. Br. 11—12), this
argument is not persuasive because the Examiner did not rely on the display
element. Instead, the Examiner relied upon the view of the media content
instance, as disclosed by Roberts, as teaching or suggesting the disputed
limitation. See Ans. 6, 20 (citing Roberts Tflf 17, 62, 65, 66).
Thus, we are not persuaded the Examiner erred in finding the
combination of Issa and Roberts teaches or suggests all of the limitations of
claims 1,12, and 19. Accordingly, we sustain the rejection of claims 1,12,
and 19 under 35 U.S.C. § 103(a), as well as dependent claims 2—11, 13—18,
and 20-34, not argued separately.
DECISION
We affirm the Examiner’s rejection of claims 1—34 under
35 U.S.C. § 103(a).
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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