Ex Parte Young et al

Patent Trial and Appeal Board

Apr 26, 2018

15139642 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/139,642 04/27/2016
36738 7590 04/30/2018
ROGITZ & AS SOCIA TES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
FIRST NAMED INVENTOR
David Andrew Young
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.
201305209.02 3261
EXAMINER
SHEPARD, JUSTINE
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
04/30/2018 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):
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
Exparte
DAVID ANDREW YOUNG, LIVIU BURCIU, LOUIS LE, and
STEVEN MARTIN RICHMAN 1
Appeal2017-010812
Application 15/139,642
Technology Center 2400
Before ST. JOHN COURTENAY III, JOHN P. PINKERTON, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants' appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 13-30, which are all the claims pending in this application. Claims
1-12 are cancelled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b). We Affirm.
1 The real party in interest is Sony Corp.
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Application 15/139,642
STATEMENT OF THE CASE
Introduction
Appellants' invention "relates generally to controlling a large screen
display using a wireless portable computer such as a tablet or laptop
computer interfacing with a display controller such as a game console."
(Spec. ii 1 ).
Representative Claim
13. Method comprising:
receiving plural video contents at a display device for
simultaneous presentation thereof on the display device;
receiving plural audio streams at the display device for
presentation of a user-selected one of the audio streams from a
list of audio streams on the display device, the audio streams
corresponding to respective ones of the video contents;
receiving a list of audio selectors at a monitoring device,
each audio selector corresponding to a respective one of the
audio streams, a selector being selectable for selection of one of
the respective one of the audio streams for play on the
monitoring device, such that a user of the monitoring device
can view the display device and listen to a first audio stream on
the monitoring device while viewing a respective first video
content on the display device with the display device playing a
second audio stream associated with a second video content,
wherein audio selectors are presented on a user interface (UI),
each audio selector corresponding to a respective video content
different from the video content represented by other selectors
on the list, wherein selecting an audio selector commands a
controller to switch audio play to audio represented by a
selected audio selector; and
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[L] receiving the list responsive to imaging a bar code disposed
on or near the display device and correlating the bar code to a
network address and downloading the list from the network
address.
(Emphasis added regarding contested limitation L ).
Objection under 3 7 C.F.R. § 1. 7 5 for Claims 19-21
The Examiner objects to claims 19-21under37 C.F.R. § 1.75 as
being a substantial duplicate of claim 18. (Final Act. 3).
Appellants respond: "The allegation that the devices positively
recited in dependent claims 19- 21 are 'duplicates' of 'Claim 18' is
incorrect." (App. Br. 5).
The Examiner conflates the objection with a statutory double
patenting rejection. (Final Act. 3, i-fi-12-3). Because claims 19-21 are
objected to and are not rejected, these claims are not before us on appeal as
a statutory double patenting rejection, as discussed further below. 2 The
objection by the Examiner is a petitionable matter not within the jurisdiction
of the Board.
The proper procedure under MPEP § 1002.02(c)(4) is to file a petition
with the Technology Center Director under 37 C.F.R. § 1.113(a) regarding
an objection made by the Examiner ("Petition may be taken to the Director
in the case of objections or requirements not involved in the rejection of any
claim."). Accordingly, because the Examiner's objection to claims 19-21 is
a petitionable, rather than appealable matter, this issue is not before us and
we express no opinion as to its propriety. See 37 C.F.R § 1.181.
2 See paragraphs one and two under the "Double Patenting" heading on
page 3 of the Final Action, discussing statutory double patenting.
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Application 15/139,642
To the extent the Examiner's response includes a heading for
"Statutory Double Patenting Rejections" in the Answer (see Ans. 10, i-f 1 ),
we find such rejection was never actually made in the Final Office Action,
such as a provisional statutory double patenting (SDP) rejection if the claims
are directed to the same invention as found in another co-pending
application. In the alternative, a non-provisional SDP rejection is made only
for statutory double patenting of the same invention claimed in an earlier
patent. In both cases, the "scope" of the inventions claimed must be
identical. 3
Therefore, we find the Examiner's statement in error that "[t]he
double patenting rejection is based on claim 18 in the current application
15/139,642." (Ans. 10, i-f 1 (emphasis added)). The Examiner finds
"[c]laim 18 contains a processor (line 3), a display device (line 4), and a
monitoring device (line 9); and therefore claims 19, 20 and 21 which depend
from claim 18 and contain these limitations are considered duplicate claims
in view of the independent claim." (Id.) (emphasis added).
However, we note the claims in the current application are not being
compared by the Examiner to another co-pending application having
3 In a statutory double patenting rejection under 35 U.S.C. § 101, the issue is
whether the same invention is being claimed twice. The "same invention"
means identical subject matter. Miller v. Eagle Mfg. Co., 151 U.S. 186, 197
(1894). As expressed by the court in In re Vogel, 422 F.2d 438, 441 (CCPA
1970), "[a] good test, and probably the only objective test, for 'same
invention,' is whether one of the claims could be literally infringed without
literally infringing the other. If it could be, the claims do not define
identically the same invention." See MPEP § 804.
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Application 15/139,642
identical claims, or to an earlier patent having identical claims. Therefore, a
statutory double patenting rejection is inapplicable.
The Examiner finally clarifies in the last sentence of the same
paragraph (Ans. 10, i-f 1) that "[a]s stated in the office action, this is an
objection to the claims and not a rejection." (Emphasis added).
Appellants acknowledge in the Reply Brief ( 1) that the statutory
double patenting issue that was cast in terms of a rejection in the Final
Action (3) is an objection. Accordingly, based upon our review of the
record, we find there is no statutory double patenting rejection before us on
appeal to review.
Rejections
The following rejections A-Dare before us on appeal:
A. Claims 13-30 are rejected on the ground of non-statutory
obviousness-type double patenting (OTDP) as being unpatentable
over claim 13 of U.S. Patent No. 9,348,495.
B. Claims 13, 15, 17-21, 23, 25, 26, 28, and 30 are rejected under AIA
35 U.S.C. § 103 as being obvious over the combined teachings and
suggestions ofBoudville (US 2013/0313313 Al; Nov. 28, 2013) in
view of Briant (US 2015/0081207 Al; Mar. 19, 2015).
C. Claims 14, 22, and 27 are rejected under AIA 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of
Boudville, Briant, and Morsy et al. (US 2014/0098715 Al; Apr. 10,
2014) (hereinafter "Morsy").
D. Claims 16, 24, and 29 are rejected under AIA 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of
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Application 15/139,642
Boudville, Briant, and Kandangath et al. (US 2015/0106012 Al; Apr.
16, 2015) (hereinafter "Kandangath").
Issue on Appeal
Did the Examiner err in rejecting claims 13-30 as being obvious over
the cited combinations of references, under AIA 35 U.S.C. § 103?
ANALYSIS
We have considered all of Appellants' argument and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
Non-statutory OTDP Rejection A
Appellants contend that the Examiner's OTDP rejection is "legally
inadequate." (App. Br. 5). However, in support, Appellants incorrectly
interpret the guidance of the MPEP, and argue that a Graham type analysis
is required:
A non-statutory double patenting rejection is analogous
to an art-based obviousness rejection, MPEP §804(II)(B)(2),
meaning that differences between claims cannot simply be
dismissed on a bare legal conclusion that they fail to confer
patentability. A Graham type analysis is required. This has
not been undertaken in the rejection. This in tum means that no
prima facie case of obviousness-type double patenting exists.
The rejection merits reversal.
(App. Br. 5---6) (emphases added).
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We are not persuaded by Appellants' assertion that the OTDP
rejection should be reversed because the Examiner failed to expressly
conduct a full Graham analysis in concluding that claims 13-30 are
an obvious variant of claim 13 of US patent 9,348,495. (Final Act. 5; see
also Ans. 10-11 ).
Contrary to Appellants' contention, our reviewing court "has endorsed
an obviousness determination similar to, but not necessarily the same as, that
undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection
for double patenting." In re Braat, 937 F.2d 589, 592-93 (Fed. Cir. 1991).
Therefore, we find no basis for reversing the OTDP rejection of
claims 13-30 merely because the Examiner failed to expressly set forth each
of the Graham factors in the analysis. See also In re Bas ell Poliolefine Italia
SP.A., 547 F.3d 1371, 1379 (Fed. Cir. 2008) (citing Braat, 937 F.2d at 592-
93).
Accordingly, because the premise of Appellants' contention is
incorrect, and based upon a preponderance of the evidence (the close
similarity of claim 13 of US patent 9,348,495; see Final Act. 5; Ans. 10-11),
we sustain the Examiner's non-statutory OTDP rejection A of claims 13-30.
Rejection B of Independent Claims 13, 18, and 26 under§ 103
Issue: Under AIA 35 U.S.C. § 103, did the Examiner err by finding
that Boudville and Briant would have collectively taught or suggested
contested limitation L:
[L] receiving the list responsive to imaging a bar code disposed
on or near the display device and correlating the bar code to a
network address and downloading the list from the network
address[,]
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within the meaning of representative independent claim 13? 4 (Emphasis
added).
Appellants contest limitation L of independent claim 13, contending
inter alia:
the first error in the rejection is reliance on a combination of
references that nowhere teach receiving a list of audio selectors
responsive to imaging a bar code disposed on or near the
display device, much less correlating the bar code to a network
address and downloading the list from the network address.
The rejection merits reversal.
The examiner responds by again admitting that
"Boudville is silent as to a list", explaining that "Briant is
brought in to teach a web site (paragraph 62) which will bring
up a list of selectable audio feeds (paragraph 75)." But
proposing to combine a web site in a vacuum that is not
accessed with a bar code does nothing more than find a list
somewhere unrelated to the primary reference that cannot
suggest a combination to do what no reference suggests,
namely, use a bar code scan to bring up a list.
(App. Br. 6 (emphases added)).
The Examiner disagrees, and further explains the basis for the
rejection in the Answer (12): "While Boudville does disclose a website
where the user can select from multiple audio streams (paragraphs 81 and
95), it does not specifically state that the options are presented in list form."
The Examiner finds the proffered combination of Boudville and Briant is not
substituting one list for another, it is substituting one webpage for another,
one with lists and one without." (Ans. 13) (emphasis added).
4 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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The Examiner further finds: "Boudville discloses a system where a
barcode is used to look up a webpage with selectable audio streams, and
Briant is brought in to teach where that webpage of selectable audio streams
could present them as a list." (Ans. 14) (emphasis added).
Our reviewing court guides that "[t]he test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (emphasis added).
This reasoning is applicable here. Therefore, on this record, we find
the Examiner's findings regarding contested limitation L (Ans. 13-14) are
supported by a preponderance of the evidence, based upon the combined
teachings and suggestions of Boudville and Briant. 5 Accordingly, we find
Appellants' arguments unavailing regarding contested limitation L. See
App. Br. 6-7.
Comb inability of the References under § 103
Nevertheless, Appellants advance a second purported reason for
reversal, and contend the Examiner has improperly combined Boudville and
Briant because:
the only reason to modify Boudville to do what neither
Boudville nor Briant teaches, namely, download a list of audio
selectors responsive to scanning a bar code, is "a list is a well-
known way of selecting items on a web page". But all this
motivates is use of a list, which Boudville already provides. It
5 Our reviewing court guides: "'the question under 35 USC 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) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis
added); see also MPEP § 2123.
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Application 15/139,642
fails to motivate the specific feature in the claims of receiving a
list of audio selectors responsive to imaging a bar code
disposed on or near the display device.
(App. Br. 7).
We disagree, and find the Examiner (Final Act. 7) sets forth sufficient
"articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
as follows:
At the time of the filing, it would have been obvious for one of
ordinary skill in the art to add the list of audio selectors taught
by Briant to the audio selection presentation disclosed by
Boudville. The motivation would have been that a list is a well-
known way of selecting items on a web-page.
(Final Act. 7).
Appellants have not substantively contested the Examiner's finding
that "a list is a well-known way of selecting items on a web-page."
We find the claim language "correlating the bar code to a network
address and downloading the list from the network address" is taught as
found by the Examiner by Boudville (at i-fi-f 110, 112, 114, and 116), as
further buttressed by the description in i158: "Currently, it is the state of the
art that if a barcode encodes an URL, the decoding software recognises
[(Brit. sp.)] the standard URL prefixes (like http:// or https://) as indicating
that the decoded string is in the format of an URL." A URL represents a
network Internet Protocol address.
Regarding the downloaded list, Briant's Figure 16, depicted below,
illustrates that users A, B, C, and D (1602) have each posted one audio
message (1603). See also i175. Thus, we find Briant (id.) supports the
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Examiner's finding that a list is a well-known way of selecting items on a
web-page.
Briant's Figure 16 is reproduced below
1600
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